UNIT I

1. What is a patent? Explain the fundamental principles governing registration of patent. 10

2. Discuss the concept of infringement of patent. What are the remedies available for such
infringement? 10 or Note on remedy for infringement of patterns. 6 or note on
infringement of patents. 6
3. Short note on ‘compulsory license of patent’. 6
4. Note on ‘patentable inventions.’ 6 (2)
5. What is intellectual property? Explain the various kinds of intellectual properties and laws
relating to those properties in India. 10 (2)
6. What is intellectual property right? Examine the different forms of intellectual property
rights. 10 (2)
7. Define patent. Examine the rights and obligations of patentee. 10 or Note on Rights of
patentee. 6 (2)
8. Note on ‘government use of patented inventions’. 6
9. Define patent and explain the procedure of obtaining patent. 10 (2)
10. What is patent? Explain legal requisites for patenting. 10
11. Note on specification. 6
12. ‘Z’ a person has invented an antivirus software for the protection of computers and wants
to obtain a patent for it. Advise him. 6
13. Examine the concept of intellectual property rights and the historical background of the
development of intellectual property rights. 10
14. Examine the importance and types of specification under the patent law. 10
15. ‘X’ has an invention relating to atomic energy and wants to obtain patent for it. Advice
him. 6
16. Define patent. Explain the principles underlying the patent law in India. 10
17. An employee working for a firm comes out with an invention after much efforts in the
laboratory. But after the invention, the employer obtains patent in the name of firm on the
invention. Which of the theory supports employees position?
18. ‘the protection of intellectual/Industrial property is necessity than a compulsion’.
Elucidate. 10
19. The controller of patent in India rejects an application being submitted by the applicant to
seek patent relating to a method and device for accessing information sources and
services on the web holding it as non-patentable. The applicant challenges it before the
High Court. Decide. 6
20. Note on patent agent. 6
21. What are the factors responsible for the growth of patent law? Explain. 10
22. A practitioner challenges section 126 of the patent act as unconstitutional on the ground
that it goes against article 19(1)(g) of the constitution of India as the set section does not
permit Advocate to carry out patent practice. Decide. 6
23. What is specification? Explain its kind along with legal requisite for its submission. 10
24. Note on Surrender of patent. 6

UNIT II

1. “one of the grounds for rejecting an application for registration of trademark is the lack of
distinctiveness”- explain. 10
2. Explain the procedure of registration of trademark under the Trademark Act of 1999. 10
(2)
3. Not on ‘deceptive similarity’ of trademarks. 6 or note on deceptively similar trademarks.
6 (2)
4. A proprietor started a new shop to sell meat products under a trademark “Hubballli
chickens” can he register trademark? Advice. 6
5. Explain the grounds for refusal of registration of a trademark. 10 (3)
6. Explain the salient features of Trade Mark Act of 1999. 10 (3)
7. Note on certification marks. 6 (2)
8. Note on effects of registration of trademark. 6
9. Examine the powers and function of registrar of trademarks. 10
10. Note on domain name. 6 (2)
11. What are the essential features of a trademark? Enumerate the trademarks that are
registerable and not registerable. 10
12. What is passing off action? How it is different from infringement. 10 or examine the
difference between infringement and passing off. 6
13. ‘X’ is a registered user of a trademark ‘Nirma’. Now ‘Y’ wants to apply the trademark
‘Nima’ fir his products. Advice him. 6
14. Examine the essential features of a trademark and the different types of trademarks. 10 or
explain kind of trademark. 10
15. The plaintiff hold trademark on Andalsnuff. The defendant begins to use trademark as
Ambalsnuff. The plantiff challenges it. Decide. 6
16. Define trademark. Explain functions of trademark. 10
17. The plaintiff company which is assigned with all rights, title, and interests along with
trademark existing in the personality of the artist, a famous pop star, challenges
unauthored use of artist reputation in selling miniature dolls of the artist by the defendant
company before the court. Decide. 6
18. Defenses available to the defendant against infringement of trademark. 6
19. Define mark. Explain essentials of trademark. 10
20. The defendant company assigns its trademark ‘Maaza’ to the plaintiff company with all
intellectual property rights and it’s Goodwill in India concerning mango fruit drink.
Afterwards, the defendant company starts exporting fruit drink under the name of Maaza
to Turkey. The plaintiff company seeks legal action against the defendant company.
Decide. 6
21. Note on collective mark. 6

UNIT III

1. What are problems encountered while protecting intellectual property rights(IPR) in cyber
space? Explain. 10
2. What do you mean by ‘domain name’? Explain the procedure of registration of domain
names in India. 10
3. Note on Digital signature. 6
4. What are cyber crimes? Explain different kinds of cyber crimes. 10 (2)
5. Note on cyber crimes. 6 (3)
6. Explain the salient features of information technology act, 2000. 10 (4) or explain the
objectives and salient features of IT Act,2000. 10
7. Note on e-commerce. 6
8. What are the essential of E-contract? 10 or Note on E-contracts. 6 (2)
9. Note on protection of computer software. 6
10. Explain E-governance and electronic signature certificate. 10
11. Note on Internet domain names. 6 (2)
12. Examine the development and importance of e-commerce. 10
13. Note on data protection in cyberspace. 6 (2)
14. What are cyber crimes? Classify computer related crimes enumerated in information
technology act, 2000. 10
15. Note on certifying authority. 6
16. Discuss emergence of cyber crimes. 10
17. Note on Internet service provider. 6
18. Note Software patent. 6
19. Explain Internet policy of government of India. 10
20. Note on Copyright in Micro software. 6
21.

UNIT IV

1. Explain the protection available for geographical indications in India. 10

2. Define geographical indications. Explain the conditions for registration of geographical
indications. 10 (2)
3. Discuss conditions for and procedure of registration of geographical indications. 10
4. Note on Basmati rice case. 6 (3)
5. Note on/state difference between geographical indications and trademarks. 6 (2) or 10
6. Explain the salient features of geographical indication act, 1999. 10 (3)
7. ‘M’ an authorized user holding a right in a registered geographical indication dies.On
whom does this right devolve? 6 (2)
8. Note on Infringement of geographical indications. 6 (3)
9. Explain the role and functions of registrar of geographical indications. 10
10. Note on rights of a registered geographical indication holders. 6
11. Explain the objects of geographical indications (registration and protection) Act, 1999. 10
12. Discuss the position of geographical indications and trade related to intellectual property
rights(TRIPs) agreement.
13. ‘X’ a person wants to obtain geographical indication registration for a variety of Chilly
grown in the region to the exclusion of other. Advise him. 6
14. Examine the procedure for the registration of geographical indications. 10 (2)
15. Note on the geographical indications registered in India. 6
16. Discuss the offences and penalties under geographical indication act, 1999. 10
17. Rama and Lakshman authorized users who have registered for identical or nearly
resembling geographical indication. Rama claims an exclusive right over it. Will he claim
it. 6
18. What is geographical indication? Explain it’s essential attributes. 10
19. The plaintiff challenges use of impugned name Darjeeling for the purpose of launge as it
strengthens the commercial activity of this persons were actually in the business of the
Darjeeling tea against the defendant before the court. Decide. 6
20. What are the prohibition imposed on the registration of geographical indication under the
geographical indications of goods act, 1999? 10
21. The petitioner challenges the grant of geographical indication to ‘Tirupati Laadus’ the
Tirumala Tirupati Devastanam, a single entity neglecting community interest of other
people living in Tirupati and further causing prejudice to article 25 of the constitution of
India. Decide. 6

UNIT V

1. Explain organs and function of world intellectual property organization(WIPO). 10(2)

2. Explain the functions of world intellectual property organization(WIPO). 10 (3)
3. Explain the important organs of world intellectual property organization(WIPO). 10
4. Not on world intellectual property organization(WIPO). 6
5. Discuss Salient features of Paris agreement. 10
6. Explain objects of Paris convention. 20
7. Examine/discuss the provisions of Paris convention, 1883. 10 (2) or note on provisions of
Paris convention. 6 (2)
8. Discuss briefly filing of application for international registration of marks under the
Madrid convention. 6
9. Note on patent co-operation treaty(P.C.T.). 6 (3)
10. Note on advantages of patent co-operation treaty(P.C.T.). 6
11. Explain the salient features of patent cooperation treaty. 10
12. Explain the objectives of patent co-operative treaty(PCT). 10
13. Note on principle of national treatment. 6
14. Explain the salient features of world intellectual property organization (WIPO). 10
15. Discuss the features of Madrid convention for the international registration of marks. 10
16. Discuss the salient features of Madrid convention. 10 (2)
17. note on Madrid convention. 6 (2)
18. Paris convention guarantees the protection of intellectual property. Discuss. 10
19. Note on convention countries. 6
20. Note on international bureau of WIPO. 6
21. Note on WIPO conference. 6
22. Note on International registration of Mark. 6
23. Note on Co-ordination committee of WIPO. 6
 UNIT I

1. What is patent? Explain legal requisites for patenting. 10 or Note on ‘patentable

inventions.’ 6 (2)

Ans) A patent is a statutory right granted by the government to an inventor or applicant for a
limited period, providing exclusive rights to make, use, sell, or distribute their invention. It is
a form of intellectual property protection aimed at encouraging innovation by rewarding
inventors with temporary monopoly rights in exchange for public disclosure of the invention.
The laws governing patents are framed to balance the inventor’s rights with the public’s
interest in accessing technological advancements.

In India, patents are governed by the Patents Act, 1970

I. Patent Definition

The Patents Act, 1970 (hereafter referred as 'the Act') of India specifies the provisions that
are used by the Indian Patent Office and the courts to determine whether a product or a
process is worthy of a patent in India. The Act, vide Section 2(1)(m), provides that a patent
may be granted for an "invention". Further, the definition of "invention" is provided under
Section 2(1)(j) of the Act as a new product or process involving an inventive step and
capable of industrial application.

II. Patentability and inventive step

The three terms 'new', 'inventive step' and 'industrial application', provide the three main
criteria for patentability.

Accordingly, before applying for a patent, applicants must ensure that their inventions, prima
facie, are novel, involve an inventive step, and can be used in or by the industry.

Additionally, the Act, under Section 3, also provides a list of inventions that are specifically
barred from being patentable even if they meet the aforementioned criteria and so, it is
important that the applicants also ensure that their inventions do not fall under Section 3.

Hence the requirements are:

a) Novel (New)

b) Non-Obvious (Inventive Step)

c) Useful (Industrial Application)

d) Must not be excluded from patentability under Sections 3 and 4

a) Novel (New)

Novelty is the first requirement of the patent.

Section 2(1)(l), Patents Act, 1970 provides the definition of the term "new in- vention" and
states:
(l) "new invention" means any invention or technology which has not been anticipated by
publication in any document or used in the country or elsewhere in the world before the date
of filing of patent application with complete specification i.e. the subject matter has not fallen
in public domain or that it does not form part of the state of the art;

Hence an invention is considered novel if it does not form a part of the global state of the art.
Information appearing in magazines, technical journals, books, newspapers, etc. constitutes
the state of art. An oral description of the invention in a seminar or conference can spoil
novelty. Novelty is assessed in a global context. An invention is not novel if it has been
disclosed in the public through any type of publication anywhere in the world before filing a
patent application. Prior use of the invention in the country of interest before the filing date
can also destroy the novelty. Novelty is determined through extensive literature and patent
searches.

In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, the Supreme Court
observed:

The fundamental principle of Patent Law is that a patent is granted only for an invention
which must be new and useful. That is to say, it must have novelty and utility. It is essential
for the validity of a patent that it must be the inventor's own discovery as opposed to mere
verification of what was already known before the date of the patent.

The Court further stated that whether an alleged invention involved novelty and an
"inventive step", was a mixed question of law and fact, depending largely on the
circumstances of the case. Although no absolute test that was uniformly applicable in all
circumstances could be devised, certain broad criteria could be indicated. Whether the
"manner of manufacture" patented, was publicly known, used and practised in the country
before or at the date of the patent? If the answer to this question was "yes", it would negative
novelty or "subject-matter". Prior public knowledge of the alleged invention which would
disqualify the grant of a patent could be by word of mouth or by publication through books or
other media. If the public once became possessed of an invention by any means whatsoever,
no subsequent patent for it could be granted either to the true or first inventor himself or any
other person as the public could not be deprived of the right to use the invention because it
was already possessing everything that the inventor or any other person could give it.

It is not enough that the subject matter is new or that there is a novelty in the application, but
there must be a novelty in the mode of application. To be new in the patent sense, the novelty
must show the invention. In other words, to be patentable, the new subject-matter must
involve 'invention' over what is old.

b) Non-Obvious (Inventive Step)

Section 2(1)(ja) defines inventive step as a feature of an invention that involves technical
advance as compared to the existing knowledge or having economic significance or both and
that makes the invention not obvious to a person skilled in the art.

As per the Act, the invention should not be obvious to the person skilled in the art. Hence an
invention is considered to involve an inventive step (or to be non-obvious) when, having
regard to the prior art, the invention is not obvious to a person skilled in the particular field of
the invention.
The obviousness is decided with regard to what was known or used prior to the date of filing
of the patent application or the priority date of the patent application. The justification behind
the determination of obviousness lies in the fact that the patentee should not claim monopoly
on obvious things and ordinary people including traders should not be prevented from doing
something which, at the date of filing patent, is obvious, i.e. very common.

Obviousness is tested with reference to the mental and developmental norm of a notional
uninventive person skilled in the art. When assessing the inventive step, combining the
teachings of different documents within the prior art is permissible, if it is obvious to do so at
the time of filing or priority date of patent application, to the person skilled in the art.
Inventive step is often determined by categorisation of the technical feature in the invention
which provides a solution to a problem not known before coming into picture of the
invention.

The question as to whether or not the invention "would have been obvious to a person having
ordinary skill in the art" is perhaps the most difficult of the standards to determine in the
examination as to substance. The expression "person having ordinary skill" is intended to
exclude the "best" expert that can be found. It is intended that the person be limited to one
having the average level of skill reached in the field in the country concerned.

In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, the Supreme Court
observed that word "obvious", had acquired special significance in the terminology of patent
law. The "obviousness" had to be strictly and objectively judged.

In Novartis v UOI the patent for a Drug which was not "inventive" or had an superior
"efficacy". Novartis filled an application to patent one of its drugs called "Gleevec" by
covering it under the word invention of the Patents Act, 1970. The Supreme Court rejected
their application by giving the following reasons: Firstly, there was no invention of a new
drug, as a mere discovery of an existing drug would not amount to invention. Secondly,
Supreme Court upheld the view that under Indian Patent Act for grant of pharmaceutical
patents apart from proving the traditional tests of novelty, inventive step and application,
there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes
to existing drugs which also Novartis's drug did not qualify. This became a landmark
judgment on inventive step or non- obviousness of inventions because the court looked
beyond the technicalities and considered the fact that the attempt of such companies to
"evergreen" their patents and making them inaccessible at nominal rates.

c) Useful (Industrial Application)

Section 2(1)(ac) of the Patents Act defines Industrial applicability as "the invention is
capable of being made or used in an industry". The term "industry" in this context can mean a
wide range of things, including agriculture.

An invention must be useful and must be capable of industrial application in order to be

patented. There must be some demonstrable utility or specific benefit from an invention. The
invention must have some practical utility in the form of immediate benefit to the public. The
utility requirement often has been interpreted to mean that an invention must have a real use
that can be demonstrated. It cannot be something that merely has a speculative use or a
possible future use.
Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, The fundamental
principle of Patent Law is that a patent is granted only for an invention which must be new
and useful. That is to say, it must have novelty and utility.

Novartis v UOI, It was viewed that efficiency and utility to be essential requirement of
patentability.

d) Non-patentable Inventions [Section 3 & 4]

For an invention to be patentable it must fulfill the three elements, i.e, Novelty;
Inventiveness; Usefulness, and industrial application. Therefore, any invention not fulfilling
any of the above-mentioned conditions is not a patentable invention. Apart from this, certain
inventions are expressly declared to be nonpatentable under Sections 3 & 4. The following
are non-patentable inventions:

1. An invention that is frivolous or useless or which involves mathematical formula,

etc. [Sections 3]

2. An invention relating to Atomic Energy [Section 4]

Conclusion

A patent represents a critical tool for fostering innovation by granting exclusive rights to
inventors while ensuring public access to technological advancements. For an invention to
qualify for patent protection under the Patents Act, 1970, it must satisfy the legal requisites
of novelty, non-obviousness (inventive step), and industrial applicability. Furthermore, it
must not fall under the non-patentable categories specified in Sections 3 and 4 of the Act,
such as frivolous inventions or those relating to atomic energy.

Section 3 What are not inventions:-

The following are not inventions within the meaning of this Act,—

(a) an invention which is frivolous or which claims anything obviously contrary to well
established natural laws;

(b) an invention the primary or intended use or commercial exploitation of which could be
contrary to public order or morality or which causes serious prejudice to human, animal or
plant life or health or to the environment;

(c) the mere discovery of a scientific principle or the formulation of an abstract theory or
discovery of any living thing or non-living substance occurring in nature;

(d) the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new
property or new use for a known substance or of the mere use of a known process, machine
or apparatus unless such known process results in a new product or employs at least one new
reactant.

Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other
derivatives of known substance shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy;

(e) a substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance;

(f) the mere arrangement or re-arrangement or duplication of known devices each

functioning independently of one another in a known way;

(h) a method of agriculture or horticulture;

(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or
other treatment of human beings or any process for a similar treatment of animals to render
them free of disease or to increase their economic value or that of their products.

(j) plants and animals in whole or any part thereof other than micro- organisms but including
seeds, varieties and species and essentially biological processes for production or propagation
of plants and animals;

(k) a mathematical or business method or a computer programme per se or algorithms;

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions;

(m) a mere scheme or rule or method of performing mental act or method of playing game;

(n) a presentation of information;

(o) topography of integrated circuits;

(p) an invention which in effect, is traditional knowledge or which is an aggregation or

duplication of known properties of traditionally known component or components.

2. What is a patent? Explain the fundamental principles governing registration of

patent. 10

Ans) A patent is a statutory right granted by the government to an inventor or applicant for a
limited period, providing exclusive rights to make, use, sell, or distribute their invention. It is
a form of intellectual property protection aimed at encouraging innovation by rewarding
inventors with temporary monopoly rights in exchange for public disclosure of the invention.
The laws governing patents are framed to balance the inventor’s rights with the public’s
interest in accessing technological advancements.

In India, patents are governed by the Patents Act, 1970

I. Patent Definition

The Patents Act, 1970 (hereafter referred as 'the Act') of India specifies the provisions that
are used by the Indian Patent Office and the courts to determine whether a product or a
process is worthy of a patent in India. The Act, vide Section 2(1)(m), provides that a patent
may be granted for an "invention". Further, the definition of "invention" is provided under
Section 2(1)(j) of the Act as a new product or process involving an inventive step and
capable of industrial application.

II. the fundamental principles governing registration of patent

a. Principle of Novelty (Newness)

A fundamental requirement for patent registration is that the invention must be novel.
Novelty implies that the invention has not been disclosed, published, or known to the public
before the patent application date. This principle ensures that patents are granted only for
original contributions to knowledge.

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, The fundamental

principle of Patent Law is that a patent is granted only for an invention which must be new
and useful. That is to say, it must have novelty and utility.

b. Principle of Inventive Step (Non-Obviousness)

An invention must involve an inventive step, meaning it should not be obvious to a person
skilled in the relevant field of technology. The inventive step distinguishes significant
innovations from mere extensions of existing knowledge.

In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, the Supreme Court
observed that word "obvious", had acquired special significance in the terminology of patent
law. The "obviousness" had to be strictly and objectively judged.

c. Principle of Industrial Applicability

For an invention to be patentable, it must be capable of being used in an industry or have

practical utility. The invention should offer a technical solution to a problem and must be
reproducible in industrial settings.

d. Principle of Full Disclosure

The applicant must disclose the invention fully and clearly in the patent application, enabling
a person skilled in the art to replicate it. This principle ensures transparency and advances
public knowledge after the patent term expires. Section 10(4) requires the complete
specification to describe the invention and its working method.

e. Patentable Subject Matter

Not all inventions are eligible for patent protection. Section 3 of the Patents Act specifies
exclusions, such as:

1. Frivolous inventions or those contrary to public morality.

2. Discoveries of natural principles.

3. Mere algorithms, business methods, or mathematical methods.

In Novartis AG v. Union of India , the Supreme Court held that new forms of known
substances must show enhanced efficacy to qualify as patentable subject matter.
f. Principle of Territoriality

A patent is territorial, meaning it is valid only within the jurisdiction where it is granted. For
protection in multiple countries, an applicant must file separate applications or utilize
international mechanisms like the Patent Cooperation Treaty (PCT).

g. Limited Duration of Protection

Patents are granted for a fixed term, usually 20 years from the filing date under Section 53 of
the Act. After this period, the invention enters the public domain, allowing unrestricted use.
This time-bound protection encourages innovation while ensuring eventual public access to
the invention.

h. Examination and Opposition

Before a patent is granted, it undergoes examination by the patent office to ensure

compliance with all criteria. The system also provides for pre-grant and post-grant opposition
to challenge the validity of the patent.

Sections 25(1) and 25(2) outline the procedures for opposition, ensuring that frivolous or
unworthy patents are not granted.

i. Prohibition Against Evergreening

The law prevents the practice of "evergreening," where minor modifications to existing
inventions are used to obtain extended patent protection.

In the Novartis case, the court clarified that patents should not be granted for incremental
innovations lacking significant improvement.

Conclusion

The registration of patents is governed by fundamental principles designed to protect genuine

innovations while preventing the misuse of intellectual property rights. These principles
ensure a balance between rewarding inventors and promoting societal benefits, fostering a
culture of innovation while safeguarding public access to new technologies. By adhering to
these principles, the patent system encourages advancements that contribute to economic
growth and public welfare.

3. Discuss the concept of infringement of patent. What are the remedies available for
such infringement? 10 or Note on remedy for infringement of patents. 6 or note on
infringement of patents. 6

Ans) Patent infringement occurs when a third party, without the authorization of the patent
holder, makes, uses, sells, distributes, or imports a patented invention within the territorial
limits where the patent is valid. This unauthorized activity violates the exclusive rights
granted to the patent holder under the law. Patent infringement is a significant issue in
intellectual property law because it undermines the incentives for innovation and the
economic rewards due to inventors.
The concept of patent infringement is governed by the Patents Act, 1970 in India, which
provides legal protection to the rights of patent holders while also outlining the remedies
available in case of infringement. Section 48 of the Patents Act grants the patentee exclusive
rights to prevent third parties from exploiting the patented invention without consent. These
rights are enforceable during the patent's term, which is typically 20 years from the date of
filing.

I. What Constitutes Patent Infringement?

The statute also does not define how one should deter- mine whether a patent has been
infringed or not. The dicta of the courts are the only guiding principles in this regard. To
determine whether patent infringement has occurred, it is essential to establish certain key
elements:

• Valid and Subsisting Patent:

A patent must be valid and in force at the time of the alleged infringement. Invalid
patents or those that have expired cannot be the basis for an infringement claim.

• Unauthorized Use:
The alleged infringer must have used the patented invention without obtaining
permission from the patent holder. This can include acts such as making, using,
selling, offering for sale, or importing the invention.

• Substantial Similarity:
The alleged infringing product or process must exhibit substantial similarity to the
patented invention. Courts often use the "doctrine of equivalents" to determine
whether the differences between the patented invention and the infringing product are
merely superficial.

• Jurisdiction:
Infringement must occur within the territorial limits where the patent is valid, as
patents are territorial in nature.

II. Forms of Patent Infringement

a) Direct Infringement:
Direct infringement occurs when a third party directly violates the patent holder’s rights
by making, using, selling, or importing the patented invention without authorization.

Example: A company manufacturing a product identical to a patented product without the

patentee’s consent commits direct infringement.

b) Indirect or Contributory Infringement:

Indirect infringement arises when a party knowingly aids or induces another party to
commit patent infringement. This includes supplying components specifically designed
for use in an infringing product or process.

Example: Selling a crucial component that can only be used in a patented process constitutes
contributory infringement if the seller is aware of the patent.
c) Literal Infringement:
Literal infringement occurs when the infringing product or process matches the patent
claims word for word. It leaves little room for interpretation, as the scope of the
infringement is identical to the patent description.

d) Infringement Under the Doctrine of Equivalents:

If the infringing invention does not precisely match the patent claims but performs the
same function in the same way to achieve the same result, it may still be considered
infringing under the doctrine of equivalents.

In F. Hoffmann-La Roche Ltd. v. Cipla Ltd., the Delhi High Court recognised the
concept of purposive construction of patent claims as applicable in the UK.

In Bajaj Auto Ltd. v. TVS Motor Company Ltd., the Madras High Court discussed the
doctrine of equivalents, which assesses whether the infringing product performs the same
function in substantially the same way to achieve the same result as the patented
invention.

III. Case Law related to infringement

In Dunlop Pneumatic Tyre Co. Ltd. v. Neal, it was held that the purchaser of a patented
article can carry out repairs to it; however, he cannot manufacture a new article and claim that
he had not infringed the patent because in the manufacture he had used an article derived
from a patented article sold by its patentee. It was contended that the defendants cannot
similarly claim, by process of "reverse engineering" that their products were new and
invented goods. They were clearly inspired by the plaintiff's products and after purchasing
them, copied the main elements; their effort was an act of infringement, which had to be
injuncted.

In Laxmi Dutt Roop Chand v. Nankau, the Allahabad High Court observed: [T]he question
of infringement of a patent is a mixed question of law and fact. The infringement of a patent
may be done in a number of ways, one of which is by using the patent or any colourable
imitation thereof in the manufacture of patented articles. It has also been observed in some of
these authorities that the infringement may not be of the complete whole of the process but it
may be only in part but in the latter case what is necessary is that the protection which is
sought for, for such part is material or is totally new.

IV. Jurisdiction [Section 104]

The Competent Court to decide any suit for a declaration under section 105 or any relief
under section 106 or infringement of a patent is District Court as Section 104 provides that
such suit shall not be filed in any court inferior to a district court having jurisdiction to try the
suit:

However, a question regarding the counter-claim for revocation of the patent is to be decided
by the High Court therefore, section 104(2) provides that where a counter-claim for
revocation of the patent is made by the defendant, then the suit, along with the counter-claim,
shall be transferred to the High Court for decision.

V. The burden of proof in case of suits concerning infringement [Section 104A]

In any suit for infringement of a patent process for obtaining a product, the court may direct
the defendant to prove that(a)the subject-matter of the patent is a process for obtaining a new
product; or (b) there is a substantial likelihood that the identical product is made by the
process, and the plaintiff (patentee or a person deriving title or interest in the patent from
him), has been unable through reasonable efforts to determine the process actually used:

However, the Plaintiff (the patentee or a person driving title or interest in the patent from
him) must prove first that the product is identical to the product directly obtained by the
patented process.

While proving the party shall not be required to disclose any manufacturing or commercial
secrets [Section 104A(2)]: It is important to note that while considering whether a party has
discharged the burden of proof imposed upon him, the court shall not require him to disclose
any manufacturing or commercial secrets if it appears to the court that it would be
unreasonable to do so.

V. Defences, etc., in suits for infringement [Section 107]

The ground of revocation is the ground of defence [Section 107(1)]: In any suit for
infringement of a patent, every ground on which it may be revoked under section 64 shall be
available as a ground for defence.

Making, using, importing or distributing is in accordance with any one or more of the
conditions specified in section 47 is a good defence [Section 107(2)]; In any suit for
infringement of a patent by making, using, or importation of any machine, apparatus or other
article or by the using of any process or, by the importation, use or distribution of any
medicine or drug, it shall be a ground for the defence that such making, using, importation or
distribution is in accordance with any one or more of the conditions specified in section 47.

Other defenses available against Infringement of Patents

• When a defendant proves that he has no intention of infringement.

• In case of res judicata and estoppels.

• When the plaintiff is not entitled or competent to sue for infringement.

• When the defendant has a license to use the patented product or process.

• When the patent is revoked on grounds of it being illegal.

• In the case of pharmaceutical drugs/medicines, the government can allow to

manufacture patented products for public good.

• In case the infringement is obvious in nature and not novel.

VI. Certain acts not to be considered as infringement [Section 107A]

Under IPRs law, fair use does not amount to infringement. Section 107A states that the
following acts constitute fair use and shall not be considered as an infringement of patent
rights:
(a) any act of making, constructing using, selling, or importing a patented invention solely for
uses reasonably relating to the development and submission of information required under
any law for the time being in force, in India, or in a country other than India, that regulates
the manufacture, construction, use, sale or import of any product;

(b) importation of patented products by any person from a person who is duly authorised
under the law to produce and sell or distribute the product is not to be considered as an
infringement of patent rights.

VII. Remedies for Infringement of Patents

Section 108(1) of the Patents Act provides for the remedies to the plaintiff in case his patent
rights have been infringed. In any suit for infringement, the court may grant reliefs such as
injunction and at the option of plaintiff, either damages or an account of profits. These
remedies are not cumulative but alternative.

In addition, the court may also order that the goods which are found to be infringing and
materials and implement, the predominant use of which is in the creation of infringing goods
shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the
case without payment of any compensation.

a) Injunc)on:

It is a preventive civil remedy. It is of two kinds:

• Temporary/interlocutory injunction: It is limited to a specific period(as the court

deems fit) or till the time the case is finally decided on merit. Relief by way of
interlocutory injunction is granted to mitigate the risk of injustice to the plaintiff during
the period before the uncertainty could be resolved. Its object is to protect the plaintiff
against injury by violation of his right for which he could not be adequately
compensated in damages recoverable in the action if the uncertainty were resolved in
his favor at the trial. An interlocutory injunction is invoked by the court at the initial
stages of the suit filed by the plaintiff. This is passed in order to prevent the defendant
from getting further profits by using other patented products. In order to invoke a
temporary injunction, it is important for the patentee to prove that the patent is valid by
all terms and has been infringed by the defendant. Also, the subsequent infringement of
his patent rights has caused irreparable loss to him.

In Bajaj Auto Lid. v. TVS Motor Company Ltd.," the Madras High Court stated:

Normally, in cases of interlocutory injunction, including any patent action, the principle is the
same, viz,

(i) the plaintiff must prove/show prima facie case that the patent is valid and infringed;

(ii) balance of convenience is in favour of plaintiff; and

(iii) irreparable loss that may be caused to the plaintiff by not granting an order of injunction.

The court further stated that "the general tendency regarding interlocutory injunctions in
patent cases has been that the onus in showing a prima facie case in justifying the grant of
injunction is heavy on the plaintiff and it is comparatively easy for the defendant to establish
a defence."

• Permanent injunction: A permanent injunction is invoked when the case is finally

decided by the court on merit. The interim injunction is transferred to a permanent
injunction if the defendant is found guilty of patent infringement rights and the
decision is on the side of plaintiff. But if the defendant is absolved from the liability
and proved to be innocent, then the interim injunction stands dissolved and is not
converted into a permanent injunction. It is limited to the duration of the patent.

b) Damages or account of profits:

The owner of a patent is entitled to either damages or an account of profits. He may either
obtain damages in respect of losses caused by infringing activities of the defendant or an
account of profits obtained by the infringer but he cannot seek both. When drafting
particulars of claim, the claimant will generally request these remedies as the alternative. It
will be granted in addition to the remedy of injunction. Where plaintiff chooses the remedy of
account of profits, he will be entitled to claim only that profit which was enjoyed by the
defendant by using the plaintiff's invention. It is unreasonable to give the profits of patentee
which were not earned by the use of his invention

In Novartis AG v. Cipla Ltd., the court highlighted the importance of compensating

patentees for the economic loss caused by infringement.

c) Seizure or forfeiture of infringing goods:

Apart from other reliefs which a court may grant, the court may also order that the goods
which are found to be infringing and materials which are predominantly used in the creation
of infringing. goods shall be seized, forfeited or destroyed, as the court deems fit under the
circumstances of the case without payment of any compensation.

In Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning

Corporation v. Unichem Laboratories," the Bombay High Court held that the plaintiff will
be entitled to the normal reliefs available in an infringement action, viz, an injunction, as well
as an order for the delivering up for destruction of all articles in the defendants' possession
made in infringement of the plaintiffs' patent.

It is noteworthy that the reliefs mentioned in section 108 are inclusive and not exhaustive.
The court is empowered to give any other remedy which has not been included in section 108
specifically.

Conclusion

Patent infringement is a critical issue in intellectual property law as it undermines the

incentives for innovation and denies patentees their rightful economic rewards. Indian courts,
guided by the Patents Act, 1970, have developed a robust framework to address infringement,
offering remedies such as injunctions, damages, and destruction of infringing goods. At the
same time, the law incorporates exceptions and defenses to balance patent rights with public
interest, particularly in sectors like healthcare.

4. Short note on ‘compulsory license of patent’. 6

Ans) In general Compulsory license is generally defined as " permitting a person to make,
use, or sell a patented invention without the patent owner's consent." This legal mechanism is
designed to balance the monopoly rights of patent holders with the broader public interest by
ensuring that essential inventions are available and affordable. While patents grant
exclusivity to inventors, compulsory licenses act as a check on abuse of these rights,
particularly in cases where public health, economic needs, or national emergencies are at
stake.

The Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Doha Declaration
provide for compulsory licensing in specified circumstances. Article 31 of TRIPS (which
pertains to use without authorization of the right holder) lays down the set of conditions that
govern the use of compulsory licensing by WTO members

Compulsory licensing under Indian law:

Under the Indian Patent law, Compulsory licenses have been dealt with under the Chapter
XVI of the Indian Patent Act, 1970. The act further mentions the prerequisites for the grant of
a compulsory license under Section 84-92 of the Indian Patent law.

I. Applying for grant of a compulsory license: section 84

Section 84 of the Indian Patent Act provides that an application to the Controller for the grant
of compulsory license may be made by any person interested including the license holder
after the expiration of a period of three years from the date of grant of a patent on fulfillment
of any of the following conditions:

(a) that the reasonable requirements of the public concerning the patented invention
have not been satisfied, or

(b) that the patented invention is not available to the public at a reasonably affordable
price, or

(c) that the patented invention is not worked/used in the territory of India.

Any interested person [Section 2(1)(t))]: "person interested" includes a person engaged in,
or in promoting, research in the same field as that to which the invention relates;

Statement by the interested person [Section 84(3)]: Every application for CL shall contain
a statement mentioning the nature of the applicant's interest together with prescribed
particulars and the facts upon which the application is based.

Granting of Compulsory Licence [Section 84(4)]: The Controller, if satisfied that the
reasonable requirements of the public with respect to the patented invention have not been
satisfied or that the patented invention is not worked in the territory of India or that the
patented invention is not available to the public at a reasonably affordable price, may grant a
licence upon such terms as he may deem fit.

Factors to be taken into account by the Controller [Section 84(6)]: In considering the CL
application filed under this section, the Controller shall take the following factors into
account:
(i) the nature of the invention, the time which has elapsed since the sealing of the patent, and
the measures already taken by the patentee or any licensee to make full use of the invention;

(ii) the ability of the applicant to work the invention to the public advantage;

(iii) the capacity of the applicant to undertake the risk in providing capital and working the
invention, if the application were granted;

(iv) as to whether the applicant has made an effort to obtain a licence from the patentee on
reasonable terms and conditions and such efforts have not been successful within a
reasonable period (not ordinarily exceeding six months) as the Controller may deem fit.
However, it shall not be applicable in case of national emergency or other circumstances of
extreme urgency or case of public non-commercial use or on the establishment of a ground of
anticompetitive practices adopted by the patentee. Significantly, The Controller shall not take
into account matters subsequent to the making of the application.

First Compulsory Licence, For Bayer Cancer Drug, 2014: The Apex Court of India, in Bayer
Corporation v Union of India & Ors., in December 2019 upheld upheld the decision of the
Intellectual Property Appellate Board and the Bombay High Court, sanctioning the grant of a
compulsory license for Bayer's anti-cancer drug 'Nexavar'to NATCO.

II. Terms and Conditions of Compulsory Licences Section 90

Section 90 of the Act mentions the Controller while settling the terms and conditions of a
licence under section 84 should seek to secure certain things.

• The royalty for the patentee or any person entitled to benefit from the patent is just
and fair.

• The compulsory license holder is to work the patented invention to the full extent and
with a reasonable profit.

• The public at large has access to the patented product at reasonable price.

• A non-exclusive licence is granted and the right of the licensee is non-assignable.

III. Compulsory licensing Upon Notification by Central Government: Section 92

In circumstances of “National emergency” or in circumstances of “Extreme urgency” or in

case of “Public non-commercial use” if the Central Government is satisfied that it is
necessary that compulsory licenses should be granted at any time after the sealing thereof to
work the invention, it may make a declaration to that effect, by notification in the Official
Gazette.

After the notification, the following provisions shall become applicable;

(i) The Controller shall on the application made at any time after the notification by any
person interested grant to the applicant a licence under the patent on such terms and
conditions as he thinks fit;
(ii) in settling the terms and conditions of a licence granted under this section, the Controller
shall endeavour to secure that the articles manufactured under the patent shall be available to
the public at the lowest prices consistent with the patentees deriving a reasonable advantage
from their patent rights.

IV. Compulsory License for exporting Patented pharmaceutical products: Section 92A

Section 92A of Indian Patent Act states that Compulsory license shall be available for
manufacture and export of patented pharmaceutical products to any country having
insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned
product to address public health problems, provided compulsory license has been granted by
such country or such country has allowed importation of the patented pharmaceutical
products from India.

Upon receipt of an application in the prescribed manner the Controller shall grant a
compulsory license solely for manufacture and export of the concerned pharmaceutical
product to such country under such terms and conditions as may be specified and published
by him.

V. Termination of compulsory license: Section 94

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

Conclusion

Compulsory licensing is a vital mechanism for ensuring that patents serve not only the
interests of inventors but also the broader needs of society. It reflects the fundamental
principle that intellectual property rights are not absolute and must be balanced against public
welfare. While the provision ensures access to essential inventions, particularly in the context
of public health and national emergencies, it also respects the rights of patentees by providing
reasonable compensation.

5. Note on ‘government use of patented inventions’. 6

Ans) Patent law grants exclusive rights to inventors to commercially exploit their inventions,
ensuring that they benefit from their creativity and investment. However, these rights are not
absolute and are subject to limitations in the interest of public welfare. One such limitation is
the provision for the government use of patented inventions, which allows the government to
use or authorize the use of a patent without the consent of the patent holder.

In India, the legal framework for government use of patented inventions is governed by
Section 100 and Section 47 of the Patents Act, 1970. These sections allow the government
to override the exclusivity granted to patentees and ensure that patented inventions can be
used for the benefit of the public.

Section 100 – Power of Central Government to Use Inventions for Public Purposes
According to section 100, at any time after an application for a patent has been filed or a
patent has been granted, the Central Government and any authorized person may use the
invention for the Government purposes.

Before the priority date of the relevant claim of the complete specification, where an
invention has been duly recorded in a document, tested or tried by or on behalf of the
government or a Government undertaking, otherwise than in consequence of the
communication of the invention directly or indirectly by the patentee or by a person from
whom he derives title, any use of the invention by the Central Government or any person
authorized in writing by it for the purposes of Government may be made free of any royalty
or other remuneration to the patentee.

As far as the invention that has not been so recorded or tried or tested as aforesaid is
concerned, if any use of the invention is made by the Central Government or any authorized
person for the Government purposes at any time after the grant of the patent or in
consequence of any such communication, it shall be made upon such terms as may be agreed
upon either before or after the use, between the Central Government or any authorized person
and the patentee, or as may in default of agreement be determined by the High Court on a
reference under section 103.

However, in case of any such use of patent, the patentee shall be paid not more than adequate
remuneration in the circumstances of each case, taking into account the economic value of
the use of the patent.

The authorization by the Central Government in respect of an invention may be made either
before or after the patent is granted and either before or after the acts in respect of which such
authorization is given or done, and may be given to any person, whether or not he is
authorized directly or indirectly by the applicant or the patentee to make, use, exercise or
vend the invention or import the machine, apparatus or other article or medicine or drug
covered by such patent.

Where an invention has been used by or with the authority of the Central Government for
Government purposes, then except in case of national emergency or other circumstances of
extreme urgency or for non-commercial use, the Government shall notify the patentee as soon
as practicable of the fact and furnish him with such information as to the extent of the use of
the invention as he may reasonably require from time to time and where the invention has
been used for the purposes of a Government undertaking, the Central Government may call
for such information as may be necessary for this purpose from such undertaking.

The right to make, use, exercise and vend an invention for the Government purposes is to
include the right to sell on non-commercial basis, the goods which have been made in
exercise of that right, and a purchaser of goods so sold, and a person claiming through him,
shall have the power to deal with the goods as if the Central Government or the authorized
person were the patentee of the invention.

Grant of patents to be subject to certain conditions [Section 47]

While granting the patent the Government, may impose any condition that the product or
process shall be used by the government only or used in experiments and research or used for
giving instructions to the students only, or in the case of drugs and medicines these shall be
used in Government hospitals only. Section 47 provides that the grant of a patent under this
Act shall be subject to the condition that:

(1) Patent product or product made by the patented process to be used by the Government:
any machine, apparatus, or another article in respect of which the patent is granted or any
article made by using a process in respect of which the patent is granted, may be imported or
made by or on behalf of the Government for the purpose merely of its own use;

(2) Patent process to be used by the Government: any process in respect of which the patent
is granted may be used by or on behalf of the Government for the purpose merely of its own
use;

(3) Patent product or product made by the patented process to be used by any person for a
research act.: any machine, apparatus, or other article in respect of which the patent is granted
or any article made by the use of the process in respect of which the patent is granted, may be
made or used, and any process in respect of which the patent is granted or may be used, by
any person, for the purpose merely of experiment or research including the imparting of
instructions to pupils; and

(4) Patented medicine or drug be used or imported by the Government for the purpose merely
of its own use or for distribution in any dispensary, hospital, or other medical institution: in
the case of a patent in respect of any medicine or drug, the medicine or drug may be imported
by the Government for the purpose merely of its own use or for distribution in any
dispensary, hospital or other medical institution maintained by or on behalf of the
Government or any other dispensary, hospital or other medical institution which the Central
Government may, having regard to the public service that such dispensary, hospital or
medical institution renders, specify in this behalf by notification in the Official Gazette.

Analysis of sections 47 and 100 :- Conclusion

Section 47 provides that the grant of a patent is subject certain conditions. This section states
that the government may import, or make or have made on its behalf, any patented product or
product made by a patented process for purposes 'merely of its own use. Section 100, on the
other hand, provides that the government, or any person authorised by it, is empowered to use
the patented invention 'for purposes of government'. The scope of section 47, therefore, is
narrower than government use under section 100 where it is explicitly stated that 'the
government, or any person authorised by it, is empowered to use the patented invention for
purposes of government".

6. Define patent and explain the procedure of obtaining patent. 10 (2)

Ans) A patent is a statutory right granted by the government to an inventor or applicant for a
limited period, providing exclusive rights to make, use, sell, or distribute their invention. It is
a form of intellectual property protection aimed at encouraging innovation by rewarding
inventors with temporary monopoly rights in exchange for public disclosure of the invention.
The laws governing patents are framed to balance the inventor’s rights with the public’s
interest in accessing technological advancements.

In India, patents are governed by the Patents Act, 1970

I. Patent Definition
The Patents Act, 1970 (hereafter referred as 'the Act') of India specifies the provisions that
are used by the Indian Patent Office and the courts to determine whether a product or a
process is worthy of a patent in India. The Act, vide Section 2(1)(m), provides that a patent
may be granted for an "invention". Further, the definition of "invention" is provided under
Section 2(1)(j) of the Act as a new product or process involving an inventive step and
capable of industrial application.

II. The procedure of obtaining patent

The procedure for obtaining a patent in India is governed by the Patents Act, 1970, and the
Patent Rules, 2003. The process involves a detailed scrutiny of the invention, ensuring that it
meets the stringent criteria of patentability, and provides several stages for the applicant to
fulfill statutory obligations.

Obtaining a patent involves a systematic process that includes filing, publication,

examination, opposition, and grant. Each stage ensures that the invention is scrutinized to
meet legal and technical requirements. The entire process requires compliance with specific
provisions of the Act, detailed in sections like Sections 6, 7, 10, 11A, 11B, 12, 13, 43, and
others.

A) Filing of Patent Application

The procedure begins with the filing of a patent application with the Indian Patent Office.
Section 6 of the Patents Act, 1970, identifies the eligible applicants for a patent. These
include:

1. The true and first inventor of the invention.

2. An assignee of the inventor (either natural or legal person).

3. A legal representative of a deceased inventor or assignee.

The application must be filed in the appropriate jurisdiction of the Patent Office, based on the
applicant's residence or place of business.

The content of the application is specified in Section 7 of the Act. The application must
include:

1. A Form 1, which is the request for the grant of a patent.

2. A specification that describes the invention:

o A provisional specification can be filed when the invention is not fully

developed but requires an early priority date. This is permitted under Section
9(1) of the Act.

o A complete specification, as required under Section 10, must follow within

12 months of the provisional filing. It should include a detailed description of
the invention, including its technical field, background, claims, and drawings
(if necessary).

3. Form 5, which is a declaration of inventorship, must accompany the application.

The application must clearly define the scope of the invention through claims in the complete
specification, as these determine the extent of the patentee's rights. The claims must be
supported by the description, ensuring they are specific, novel, and capable of industrial
application.

B) Publication of Patent Application

Under Section 11A, a patent application is published in the Official Journal of the Patent
Office after 18 months from the date of filing or priority date, whichever is earlier. This
allows public access to the application, enabling scrutiny by potential stakeholders.

The applicant may request early publication under Rule 24A of the Patent Rules, 2003, by
filing Form 9 and paying the prescribed fee. Early publication ensures that the application is
published within one month from the date of request. Once published, the application
becomes open to public inspection, except in cases where secrecy directions under Section 35
apply.

C) Request for Examination

A patent application does not proceed for examination automatically. A Request for
Examination (RFE) must be filed under Section 11B within 48 months of the filing date or
priority date. This can be done by the applicant or any interested party. The RFE is a crucial
step, as failure to file it results in the deemed withdrawal of the application.

Upon receiving the RFE, the application is assigned to a Patent Examiner, who scrutinizes the
invention for compliance with statutory requirements.

D) Examination and First Examination Report

The examination of the patent application is one of the most critical stages in the process.
Under Sections 12 and 13, the Examiner conducts a detailed analysis of the application to

Additionally, ensure that the invention meets the criteria of patentability:

1. Novelty under Section 2(1)(j): The invention must not be anticipated by prior art or
previously disclosed in any publication.

2. Inventive Step under Section 2(1)(ja): The invention must involve a technical
advance or an economic significance that is non-obvious to a person skilled in the
relevant field.

3. Industrial Applicability under Section 2(1)(ac): The invention must be capable of

being used in any industry.

Additionally, the Examiner verifies that the invention does not fall under the categories of
non-patentable subject matter as enumerated in Sections 3 and 4.

The Examiner issues a First Examination Report (FER), highlighting any objections or
deficiencies in the application. This report is communicated to the applicant, who must
respond within six months (extendable by three months) under Rule 24B.

E) Response to First Examination Report

The applicant must address the objections raised in the FER by amending the specification,
submitting additional documents, or providing technical or legal arguments. This stage allows
the applicant to clarify and strengthen their claims, ensuring that the invention meets
patentability requirements. If the applicant fails to respond within the stipulated time, the
application is deemed abandoned under Section 21.

F) Pre-Grant Opposition

Once the application has been examined and the objections resolved, it remains open to pre-
grant opposition under Section 25(1). Any person may oppose the grant of a patent by
submitting evidence on grounds such as lack of novelty, non-disclosure of essential
information, or prior publication of the invention. The Controller considers the opposition
and the applicant's rebuttal before deciding whether to grant or refuse the patent.

G) Grant of Patent

If the Controller is satisfied that the invention complies with the requirements of the Act and
all objections have been resolved, the patent is granted under Section 43. The details of the
granted patent are published in the Patent Office Journal, conferring enforceable rights on
the patentee. The patent remains valid for 20 years from the filing date, subject to the
payment of annual renewal fees under Section 53.

H) Post-Grant Opposition

After the grant, the patent is subject to post-grant opposition under Section 25(2). Any
interested party may file an opposition within 12 months of the grant, challenging the validity
of the patent on similar grounds as in the pre-grant stage. A post-grant opposition is decided
by the Opposition Board, which submits its findings to the Controller for a final decision.

Conclusion

The procedure for obtaining a patent under the Patents Act, 1970, is a rigorous process
designed to ensure that only genuine and innovative inventions receive protection. By
balancing the rights of inventors with the public interest, the process fosters innovation and
technological progress while ensuring transparency and fairness. The Indian patent system
reflects global standards, providing a robust framework for protecting intellectual property in
an increasingly knowledge-driven economy.

7. Note on patent agent. 6

Ans) Filing of patent application needs knowledge of Patent law and the inventor may or
may not have such knowledge. So there is a concept of a patent Agent. A patent agent as
defined under Section 2(n) of the India Patent Act, 1970 is a person who is registered under
the patent act as a patent agent. He performs important functions like filing the patent
application, taking care of the process involved in the preparation of a patent application, and
helping the investor in the preparation of the documents, including drafting, filing, and
prosecution of an application before the controller on behalf of any person who wishes to
obtain a patent.

I. Register of patent agents [Section 125]

As we know a patent, agent is a person who is registered under the Patent Act as a patent
agent. Regarding this Section 125(1) states that the Controller shall maintain a register to be
called the register of patent agents in which shall be entered the names, addresses, and other
relevant particulars, as may be prescribed, of all persons qualified to have their names so
entered under section 126.

II. Qualifications for registration as patent agents [Section 126]

Every person is not competent to be registered as a patent agent but must have some
qualifications. Section 126(1) provides that a person shall be qualified to be registered as a
patent agent if he fulfills the following conditions:

(a) he is a citizen of India;

(b) he has completed the age of 21 years;

(c) he has obtained a degree in science, engineering, or technology from any University
established under the law for the time being in force in the territory of India or possesses such
other equivalent qualifications as the Central Government may specify in this behalf, and,
also:

(i) has passed the qualifying examination prescribed for the purpose; or

(ii) has, for a total period of not less than ten years, functioned either as an examiner
or discharged the functions of the Controller under section 73 or both, but ceased to
hold any such capacity at the time of making the application for registration;

(d) he has paid the prescribed fee.

III. Rights of patent agents [Section 127]

According to section 127, Subject to the provisions contained in this Act and in any rules
made thereunder, every patent agent whose name is entered in the register shall be entitled-

(a) to practice before the Controller; and

(b) to prepare all documents, transact all business and discharge such other functions as may
be prescribed in connection with any proceeding before the Controller under this Act.

IV. Subscription and verification of certain documents by patent agents [Section 128]

Apart from the rights mentioned in section 127, all applications and communications to the
Controller under this Act may be signed by a patent agent authorised in writing on this behalf
by the person concerned.

V. Restrictions on practice as patent agents [Section 129]

No person either alone or in partnership with any other person, shall practise, describe or hold
himself out as a patent agent, or permit himself to be so described or held out, unless he is
registered as a patent agent or, as the case may be, unless he and all his partners are so
registered. No company or other body corporate shall practise, describe itself or hold itself
out as patent agents or permit itself to be so described or held out. The expression "practise as
a patent agent" includes any of the following acts, namely:

(i) applying for or obtaining patents in India or elsewhere;

(ii) preparing specifications or other documents for the purposes of this Act or of the patent
law of any other country;

(iii) giving advice other than of a scientific or technical nature as to the validity of patents or
their infringement.

8. Note on Surrender of patent. 6

Ans) A patent grants exclusive rights to its holder, allowing them to prevent others from
using, selling, or distributing the patented invention without consent. However, there may be
situations where the patentee no longer wishes to retain the patent or finds it unnecessary to
continue holding the rights. In such cases, the Patents Act, 1970, provides for the voluntary
surrender of a patent. The surrender of a patent involves relinquishing all rights and interests
in the patent before its term expires, effectively rendering the patent void.

The process of surrendering a patent is governed by Section 63 of the Patents Act, 1970,
along with relevant rules under the Patent Rules, 2003. This provision ensures that the
surrender is conducted in an orderly manner and allows for third-party interventions to
safeguard public interest.

The primary reasons for surrender may include:

• The patentee finds the patent commercially unviable.

• The invention is outdated or has been replaced by superior technology.

• The patentee wishes to reduce costs, as maintaining a patent involves paying annual
renewal fees under Section 53.

• Legal disputes or liabilities arising from the patent.

I. Surrender of patents [Section 63]

A patent is a right given by the state to the first and true inventor of the invention. A patentee
has the option to surrender his patent and the procedure is mentioned in Section 63.
Significantly, Section 63(1) states that a patentee may, at any time, offer to surrender his
patent by giving notice in the prescribed form (Form 14) to the Controller.

Publication of the offer [Section 63(2)]: Where such an offer is made, every interested
person must know about it before any decision is taken by the Controller. The moot question
is who is the interested person? It can be public using the invention or joint patentees or
assignees etc,. Therefore, Section 63(2) provides that the Controller shall publish the offer in
the prescribed manner, and also notify every person other than the patentee whose name
appears in the register as having an interest in the patent.
Notice of opposition by the interested person [Section 63(3)]: The main objective of
publication or informing the interested person is that he can make objections. Regarding this
Section 63(3) states that any person interested may, within the prescribed period after such
publication, give notice to the Controller of opposition to the surrender. And where any such
notice is given the Controller shall notify the patentee.

Revoking the patent [Section 63(4)]: If after hearing the patentee and any opponent, the
Controller is satisfied, that the patent may properly be surrendered, he may accept the offer to
revoke the patent.

Section 63 is one of those provisions of the Indian Patent Act, 1970 that is not much utilized.

II. Effect of Surrender

The surrender of a patent has the following legal consequences:

1. The patentee loses all exclusive rights granted under the patent.

2. The patent is no longer enforceable, and third parties are free to use the invention
without fear of infringement.

3. Any obligations arising from existing license agreements may still bind the patentee
unless the license agreements are explicitly terminated.

Conclusion

The surrender of a patent under Section 63 of the Patents Act, 1970, offers patentees the
flexibility to relinquish their rights when a patent is no longer commercially or legally viable.
The process is designed to protect the interests of all stakeholders, including licensees and
third parties, by incorporating procedural safeguards such as opposition proceedings.

Q. Revocation (Extra)

Revocation of a patent refers to the legal process by which a granted patent is annulled or
invalidated, thereby extinguishing the exclusive rights conferred upon the patentee. While a
patent grants the holder a monopoly over their invention for a limited period (usually 20
years), such rights are not absolute. Under the Patents Act, 1970, specific provisions govern
the revocation of patents to ensure that only valid and deserving patents are upheld.
Revocation safeguards public interest by removing patents that fail to meet statutory
requirements or that hinder innovation and fair competition.

The process and grounds for revocation are outlined primarily in Sections 64 to 66 of the
Patents Act, 1970, along with procedural rules under the Patent Rules, 2003.

I. Legal Framework for Revocation of Patents

The revocation of a patent may occur through various mechanisms, including judicial
proceedings, administrative processes, or government intervention. The circumstances under
which a patent can be revoked and the parties eligible to seek revocation vary depending on
the provision invoked.

a) Grounds for Revocation (Section 64)

Section 64 of the Patents Act, 1970, provides detailed grounds for revocation of a patent. It
allows any interested person, including competitors, licensees, or even the government, to file
a petition for revocation before the Intellectual Property Appellate Board (IPAB) (now
merged with High Courts) or as a counterclaim in a patent infringement suit. The grounds for
revocation under Section 64 include:

1. Lack of Novelty:
A patent can be revoked if the invention was anticipated by prior art, meaning it was
already published or publicly known before the filing date.

2. Lack of Inventive Step:

If the patented invention is obvious to a person skilled in the relevant field of
technology, it fails the requirement of an inventive step and can be revoked.

3. Non-Industrial Applicability:
A patent must be capable of being used in an industry. If an invention is purely
theoretical or impractical for industrial use, it is subject to revocation.

4. Non-Patentable Subject Matter:

Section 3 and Section 4 of the Act list categories of non-patentable inventions, such as
mathematical methods, algorithms, business methods, and atomic energy-related
inventions. A patent granted for such subject matter can be revoked.

5. Non-Disclosure or Misrepresentation:
If the patentee has failed to disclose material information or has provided false or
misleading information, the patent may be invalidated.

6. Failure to Disclose Best Method:

The patentee is required to disclose the best method of performing the invention in the
specification. Non-compliance with this requirement can lead to revocation.

7. Prior Use or Public Use:

If the invention was publicly used or commercially exploited in India before the filing
date, the patent can be challenged and revoked.

8. Contrary to Public Order or Morality:

A patent that promotes illegal or unethical activities may be revoked on this ground.

Section 64 also allows for a patent to be revoked as a counterclaim in a patent infringement

suit, which is a common mode of challenging patents in India.

In Roche Products v. Cipla (2008), Cipla raised a counterclaim for revocation in response to
Roche’s infringement suit, challenging the patent’s validity on the grounds of lack of
inventive step and public health concerns.

b) Revocation of Patents Relating to Atomic Energy (Section 65)

Section 65 specifically deals with the revocation of patents related to atomic energy. It
reflects India’s commitment to maintaining strict control over inventions that may impact
national security or public safety. This section empowers the Central Government to revoke a
patent if it is satisfied that the invention is related to atomic energy as defined under the
Atomic Energy Act, 1962.
Under Section 20(1) of the Atomic Energy Act, patents relating to materials or processes used
in the production of atomic energy cannot be granted. If a patent is inadvertently granted for
such an invention, the government can revoke it under Section 65. The primary objective of
this provision is to ensure that critical areas like atomic energy remain under state control and
are not subject to private monopolies.

c) Revocation for Non-Working of Patents (Section 85)

Section 85 provides for revocation in cases where a patented invention is not worked in India
to meet reasonable public demand. This provision ensures that patents are not exploited
solely for monopoly purposes but are actively used to benefit the public.

The Controller of Patents may revoke a patent after considering:

1. Whether the patented invention is being manufactured or used in India.

2. Whether reasonable public requirements are being met.

3. Whether the invention is available to the public at a reasonable price.

This provision aligns with India’s focus on promoting accessibility and preventing patent
hoarding.

d) Revocation in the Public Interest (Section 66)

Section 66 empowers the Central Government to revoke a patent if it is satisfied that the
invention is prejudicial to public interest. This section is rarely invoked but provides a
mechanism for addressing situations where patents pose significant risks to society, such as
those relating to environmental hazards or public health concerns.

For example, patents on life-saving drugs that are priced exorbitantly could be revoked under
Section 66 if they create barriers to access.

e) Administrative Revocation (Pre-Grant and Post-Grant Opposition)

The Indian patent system provides for opposition mechanisms that allow third parties to
challenge a patent’s validity either before or after its grant:

1. Pre-Grant Opposition (Section 25(1)):

Any person may file an opposition during the patent application process, raising
objections on grounds such as lack of novelty, non-patentable subject matter, or non-
disclosure of required information.

2. Post-Grant Opposition (Section 25(2)):

After the grant of a patent, any interested person may file a post-grant opposition
within 12 months of the grant. A post-grant opposition is adjudicated by the
Opposition Board, which considers the evidence and makes recommendations to the
Controller of Patents.

While not strictly a revocation proceeding, opposition mechanisms serve as preventive

measures to revoke undeserving patents at an early stage.
II. Case Law on Revocation of Patents

Novartis AG v. Union of India (2013): The Supreme Court upheld the rejection of Novartis’
patent for the cancer drug Glivec under Section 3(d), emphasizing the need to prevent
“evergreening” of patents and promote access to affordable medicines.

Enercon India Ltd. v. Aloys Wobben (2014): The Supreme Court emphasized that
revocation proceedings must adhere to procedural fairness and the principles of natural
justice. The case also clarified the scope of counterclaims in revocation matters.

Bajaj Auto Ltd. v. TVS Motor Company Ltd. (2009): In this case, the Madras High Court
dealt with issues of patent revocation concerning the inventive step and industrial
applicability of a patented motorcycle ignition system.

III. Impact of Revocation

The revocation of a patent has significant legal and commercial implications:

1. The patent is rendered null and void, extinguishing the patentee’s exclusive rights.

2. Third parties are free to use, manufacture, or sell the invention without fear of
infringement.

3. Any ongoing litigation or enforcement actions related to the revoked patent become
moot.

Revocation serves as a critical safeguard against the misuse of patent rights and ensures that
the patent system promotes genuine innovation and public welfare.

Conclusion

Revocation of patents under the Patents Act, 1970, is a vital mechanism to ensure that the
patent system maintains its integrity by upholding only valid and deserving patents. Through
provisions like Sections 64, 66, and 85, Indian patent law balances the rights of inventors
with the interests of the public and other stakeholders. By allowing judicial, administrative,
and government-initiated revocation, the law provides multiple avenues for addressing
invalid patents, ensuring that the system is not misused to stifle innovation or harm public
welfare.

9. Define patent. Examine the rights and obligations of patentee. 10 or Note on Rights
of patentee. 6 (2)

Ans) The Patents Act, 1970, confers certain rights and imposes corresponding obligations
on a patentee, reflecting the principle that intellectual property rights are granted not only to
reward inventors but also to promote public welfare. A patent grants the patentee exclusive
rights over their invention, enabling them to exploit it commercially. However, these rights
come with certain responsibilities to ensure that the invention benefits society and does not
merely serve as a tool for monopoly. The balance between rights and obligations is critical to
fostering innovation while addressing societal needs.

Under Indian patent law, the rights and obligations of a patentee are defined in various
sections of the Act, particularly Sections 48, 50, 53, 83, and 146.
Rights of the Patentee

The rights of a patentee are primarily governed by Section 48 of the Patents Act, 1970,
which defines the exclusive rights granted to the patentee upon the grant of a patent. These
rights are territorial in nature and apply only within the jurisdiction of India.

a) Exclusive Right to Exploit the Invention (Section 48):

A patent grants the patentee the exclusive right to prevent third parties from making,
using, selling, distributing, offering for sale, or importing the patented invention
without the patentee’s consent. The scope of this right depends on whether the patent
relates to a product or a process:

Product Patents: The patentee can prevent others from making, using, offering for sale, or
importing the patented product.

Process Patents: The patentee can prevent others from using the patented process or from
making, using, selling, or importing products obtained directly through that process.

These rights enable the patentee to commercialize the invention, secure market exclusivity,
and recover the costs of research and development.

b) Right to Assign or License the Patent (Section 70):

A patentee has the right to assign the patent or grant licenses to third parties.
Assignment involves the transfer of ownership of the patent, whereas licensing
permits the licensee to use the patent under agreed terms while ownership remains
with the patentee.

c) Right to Seek Remedies Against Infringement (Section 108):

The patentee has the right to enforce their patent rights by initiating legal proceedings
against infringers. Remedies available include injunctions (to stop infringing
activities), damages, and accounts of profits.

d) Right to Surrender the Patent (Section 63):

If a patent becomes commercially unviable or unnecessary, the patentee has the right
to voluntarily surrender it by filing a request with the Controller of Patents.

e) Right to Seek Relief Against Unlawful Use by the Government (Section 100):
If the government or an authorized entity uses the patented invention under Section
100, the patentee has the right to receive adequate compensation.

f) Right to Apply for Patent Term Extension (Section 53):

A patent is generally valid for 20 years from the filing date. The patentee has the right
to maintain this term by paying annual renewal fees. In certain circumstances, such as
delays caused by regulatory approval processes, extensions may be sought under
global practices.

Obligations of the Patentee

While the rights of a patentee aim to reward innovation, the Patents Act, 1970, imposes
several obligations to ensure that the patented invention benefits society and contributes to
public welfare. These obligations are particularly emphasized in provisions such as Sections
83 and 146.
 a) Working of the Patent in India (Section 83):
The Act mandates that the patent should be "worked" in India, meaning it must be
commercially exploited to meet public demand. This requirement ensures that patents
are not merely hoarded or used as a tool for monopoly. Section 83 outlines key
principles related to the working of patents, including:

o Patents should promote technological innovation and economic development.

o Patentees should not abuse their rights to unreasonably restrain trade or hinder
technology transfer.

b) Filing a Statement of Working (Section 146):

Section 146 requires patentees to file a statement of working (Form 27) with the
Patent Office, disclosing whether the patent has been worked in India and providing
details about its commercial exploitation. This obligation ensures transparency and
allows the government to monitor the utility of the patented invention.

c) Payment of Renewal Fees (Section 53):

To maintain a patent’s validity, the patentee must pay annual renewal fees. Failure to
pay these fees results in the lapse of the patent, rendering it open to public use.

d) Avoiding Anti-Competitive Practices (Section 140):

The Act prohibits certain restrictive conditions in patent licensing agreements, such as
requiring licensees to exclusively deal with the patentee or restricting licensees from
challenging the validity of the patent. This ensures that patentees do not exploit their
rights to stifle competition.

e) Duty to Disclose Material Information (Section 8):

Patentees are required to disclose information regarding foreign patent applications
filed for the same invention. Failure to comply with this requirement can lead to the
revocation of the patent under Section 64.

f) Compliance with Compulsory Licensing Provisions (Sections 84 and 92):

In situations where the patented invention is not adequately available to the public or
is priced excessively, the Controller may grant a compulsory license to third parties.
The patentee is obligated to comply with the terms of such licenses.

g) No Patents on Non-Patentable Subject Matter (Section 3):

The patentee must ensure that the invention does not fall within the categories of non-
patentable subject matter listed in Section 3, such as algorithms, business methods, or
inventions against public morality.

Judicial Interpretation of Patentee’s Rights and Obligations

Indian courts have played a significant role in interpreting the rights and obligations of
patentees. Notable cases include:

• Novartis AG v. Union of India : The Supreme Court held that patents should not be
granted to minor modifications or “evergreened” inventions under Section 3(d). This case
emphasized the balance between rewarding innovation and ensuring access to essential
medicines.
• Natco Pharma v. Bayer Corporation : In this case, a compulsory license was granted
for Bayer’s cancer drug Nexavar, as the drug was not being made available at a
reasonable price. The judgment highlighted the patentee’s obligation to work the patent in
India and ensure public accessibility.

• Roche v. Cipla : The Delhi High Court dealt with the issue of balancing patent rights
with public interest in the pharmaceutical sector. The court allowed Cipla to sell a generic
version of Roche’s patented drug on affordability grounds while recognizing Roche’s
right to seek damages.

Conclusion

The rights and obligations of a patentee under the Patents Act, 1970, reflect a balance
between incentivizing innovation and promoting public welfare. While the Act grants
patentees significant exclusive rights, these rights are accompanied by corresponding
responsibilities to ensure that the patented invention serves societal and economic objectives.

10. Note on specification. 6 or What is specification? Explain its kind along with legal
requisite for its submission. 10 or Examine the importance and types of specification
under the patent law. 10

Ans) A specification is one of the most critical components of a patent application. It is a

written description of the invention, detailing its technical aspects, functionality, and the
scope of the invention for which patent protection is sought. The specification forms the basis
of a patent grant, as it defines the subject matter of the invention and serves as evidence of
the patentee's claims. In essence, the specification is the document that discloses the
invention in a manner that enables those skilled in the field to understand, replicate, and use
the invention.

Under the Patents Act, 1970, the legal framework governing the filing and submission of
specifications is primarily set out in Sections 7, 9, and 10, supported by procedural rules
under the Patent Rules, 2003. An applicant must ensure that the specification complies with
the statutory requirements, as non-compliance can lead to rejection or invalidation of the
patent.

I. Importance of Specification

The specification is the foundation of a patent application, serving multiple legal and
practical purposes:

a) Defines the Scope of Protection:

The claims in the specification define the boundaries of the patentee’s rights. These
claims are critical for determining the extent of protection granted and are enforceable
against potential infringers.

b) Provides Full Disclosure of the Invention:

The specification ensures that the invention is disclosed in a manner that enables
others skilled in the field to replicate and use it. This promotes technological
advancement by adding to the public domain once the patent expires.
 c) Compliance with Patentability Criteria:
To be granted a patent, the invention must meet the statutory criteria of novelty,
inventive step, and industrial applicability. A detailed specification is essential to
demonstrate how the invention satisfies these requirements.

d) Establishes Priority Rights:

In the case of competing applications, the priority date is often determined by the date
of filing the specification. A provisional specification allows inventors to secure an
early priority date while refining their invention.

e) Basis for Examination and Opposition:

The specification is scrutinized by the patent examiner to assess the invention’s
compliance with legal requirements. It is also the document relied upon in opposition
or revocation proceedings to challenge the validity of a patent.

f) Facilitates Enforcement of Patent Rights:

In infringement cases, the specification, particularly the claims, is pivotal in
determining whether the alleged infringing activity falls within the scope of the
patent.

II. Types of Specification

Under the Patents Act, 1970, specifications are categorized into two types: Provisional
Specification and Complete Specification. These are governed by Sections 9 and 10 of the
Act.

A. Provisional Specification

A provisional specification is an optional preliminary document filed when the invention is

still in the development stage. Its purpose is to secure a priority date for the invention, which
is crucial in determining novelty in cases of competing applications. The provisional
specification need not include detailed claims but must disclose sufficient information about
the invention.

Legal Provisions for Provisional Specification:

Section 9(1): An applicant can file a provisional specification if they are not ready to submit
a complete specification. However, the provisional specification must describe the invention
in sufficient detail to demonstrate its novelty and industrial utility.

Time Limit for Filing Complete Specification: Under Section 9(1), the applicant must file
the complete specification within 12 months from the date of filing the provisional
specification. Failure to do so results in the application being deemed abandoned.

The description should include: (Section 10)

• The title of the invention.

• A general description of the invention and its potential applications.

• Supporting diagrams or sketches (if applicable) to aid understanding.

Provisional specifications are particularly useful for:

• Securing an early filing date.

• Allowing inventors additional time to refine and develop their invention before filing
the complete specification.

B. Complete Specification

A complete specification is a comprehensive and detailed document that is mandatory for a

patent grant. It must fully and particularly describe the invention, disclose the best method of
performing it, and include claims defining the scope of the patent protection sought. Once
filed, the complete specification becomes the basis for examining the patent application.

Legal Provisions for Complete Specification:

Section 10: A complete specification must satisfy specific statutory requirements, including:

• A full and precise description of the invention.

• Disclosure of the best method for performing the invention.

• Distinct and clear claims defining the scope of the patent.

• Drawings or diagrams (if necessary) to enhance understanding of the invention.

• The specification must ensure that the claims relate to a single invention or a group of
inventions linked by a common inventive concept (Section 10(5)).

The patentee is required to disclose the best method of performing the invention known at the
time of filing. This ensures that the public benefits from the patentee’s knowledge once the
patent expires.

The claims in the complete specification are crucial, as they delineate the boundaries of the
patentee’s rights. They must be clear, precise, and supported by the detailed description.

Contents of Complete Specification:

Section 10 of the Patents Act outlines the requirements for a complete specification. The
complete specification must include the following components:

• Title of the Invention: A clear and concise title indicating the field of the invention.

• Field of Invention: A brief description of the technical area to which the invention
belongs.

• Background of the Invention: A description of the prior art, identifying the problems
or limitations addressed by the invention.

• Summary of the Invention: A brief overview of the inventive concept and its
advantages.
 • Detailed Description: A comprehensive explanation of the invention, including its
technical aspects and practical applications.

• Best Method of Performing the Invention (Section 10(4)(b)):

The specification must disclose the best method of performing the invention known to
the applicant at the time of filing. This ensures that the invention is adequately
disclosed for public use once the patent expires.

• Claims: The most critical part of the specification, claims define the legal scope of
the patent protection sought. Each claim must be clear, concise, and supported by the
description.

• Drawings (if applicable): Diagrams, figures, or schematics illustrating the invention.

• Abstract: A summary of the invention for publication purposes.

III. Case laws

Novartis AG v. Union of India (2013): The Supreme Court held that the specification must
clearly distinguish the invention from prior art and meet the requirements of novelty and
inventive step. The court rejected Novartis’ patent application for its cancer drug Glivec,
citing insufficient demonstration of enhanced therapeutic efficacy under Section 3(d).

Bajaj Auto Ltd. v. TVS Motor Company Ltd. (2009): The Madras High Court highlighted
that the claims in the specification must be clear and supported by the detailed description.
Ambiguities in claims weaken the enforceability of the patent.

Conclusion

The specification is a fundamental component of the patent application process under the
Patents Act, 1970, serving both technical and legal purposes. The provisional specification
enables inventors to secure an early priority date while refining their invention, while the
complete specification provides the detailed disclosure required for the grant of a patent.
Compliance with statutory requirements under Sections 7, 9, and 10 ensures that the
specification adequately describes the invention, defines the patentee’s rights, and promotes
public access to knowledge.

11. What is intellectual property? Explain the various kinds of intellectual properties
and laws relating to those properties in India. 10 (2) or What is intellectual property
right? Examine the different forms of intellectual property rights. 10 (2)

Ans) Intellectual Property (IP) refers to the legal rights granted to individuals or entities over
creations of their mind, such as inventions, literary and artistic works, symbols, names,
images, and designs used in commerce. These rights allow the creators or owners to benefit
from their intellectual creations, ensuring that their efforts, ingenuity, and investments are
protected and rewarded. The underlying principle of IP law is to strike a balance between the
interests of innovators and the public by incentivizing creativity while ensuring societal
progress.

In the Indian context, intellectual property is governed by various statutes, rules, and
international agreements. The framework is designed to protect IP rights while adhering to
obligations under international treaties, such as the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS), the Paris Convention, and the Berne Convention.

Kinds of Intellectual Properties and Related Laws in India

a. Patents

A patent is an exclusive right granted for an invention, which may be a product or a process
that offers a new and inventive solution to a technical problem. It prevents others from
making, using, selling, or distributing the invention without the patentee’s permission for a
limited period, typically 20 years.

Laws Governing Patents in India:

• The Patents Act, 1970 (amended in 1999, 2002, and 2005): This Act lays down the
substantive and procedural framework for patent protection in India.

• Key Features:

o Patentable subject matter must be novel, involve an inventive step, and have
industrial applicability.

o Section 3 of the Act lists non-patentable inventions, such as mathematical

methods, business methods, and discoveries of natural principles.

o Provisions for compulsory licensing ensure that essential inventions,

particularly in the pharmaceutical sector, are accessible to the public.

Example: The landmark decision in Novartis AG v. Union of India (2013) upheld the
denial of a patent on the drug Glivec under Section 3(d), emphasizing the prevention of
“evergreening” of patents.

b. Copyright

Copyright protects original literary, artistic, musical, and dramatic works, as well as
cinematographic films and sound recordings. It grants the creator the exclusive right to
reproduce, distribute, perform, or display their work and prevents unauthorized use.

Laws Governing Copyright in India:

• The Copyright Act, 1957 (amended in 2012): This Act governs copyright protection,
recognizing both moral and economic rights of authors.

• Key Features:

o Copyright arises automatically upon the creation of an original work; no

registration is required.

o Protection extends to both published and unpublished works.

o The Act provides for fair use exceptions, allowing limited use of copyrighted
works for purposes like education and research.
Duration of Protection:

• For literary, dramatic, musical, and artistic works: Life of the author plus 60 years.

• For cinematographic films and sound recordings: 60 years from publication.

In Gramophone Company of India Ltd. v. Birendra Bahadur Pandey (1984), the

Supreme Court upheld the principle that unauthorized public performance of copyrighted
works constitutes infringement, underscoring the scope of protection under the Act..

c. Trademarks

A trademark is a distinctive sign, logo, or expression that identifies products or services of a

particular source from those of others. It serves as a tool for brand recognition and goodwill.

Laws Governing Trademarks in India:

• The Trademarks Act, 1999: This Act provides for the registration, protection, and
enforcement of trademarks in India.

• Key Features:

o Protects both registered and unregistered trademarks under the common law
principle of "passing off."

o Registration grants the owner exclusive rights to use the mark and seek
remedies for infringement.

o The term of protection is 10 years, renewable indefinitely.

Example: In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001), the Supreme
Court emphasized the need to avoid confusion between similar trademarks, particularly in
pharmaceutical products.

d. Industrial Designs

Industrial design refers to the ornamental or aesthetic aspects of an article, including its
shape, configuration, pattern, or color. Protection is granted to designs that are new and
original, ensuring that creators of visually appealing products are rewarded for their
innovation.

Laws Governing Industrial Designs in India:

• The Designs Act, 2000: This Act governs the registration and protection of industrial
designs in India.

• Key Features:

o A design must be novel, original, and not previously published to qualify for
registration.

o Protection is granted for 10 years, extendable by an additional 5 years.

Example: The registration of unique bottle designs, such as those by Coca-Cola, highlights
the importance of industrial design protection in building brand identity.

e. Geographical Indications (GIs)

A geographical indication identifies a product as originating from a specific geographical

region, where its quality, reputation, or characteristics are inherently linked to that region.
Examples include Darjeeling tea, Kanchipuram silk, and Mysore sandalwood.

Laws Governing GIs in India:

• The Geographical Indications of Goods (Registration and Protection) Act, 1999:

This Act provides for the registration and protection of GIs.

• Key Features:

o GIs are collective rights, protecting the interests of communities or producers.

o Registration is valid for 10 years and can be renewed indefinitely.

Example: The GI status of Darjeeling Tea ensures its authenticity and protects it from
misuse by producers in other regions.

f. Trade Secrets

Trade secrets include confidential business information, such as manufacturing processes,

formulas, or customer lists, which provide a competitive advantage to a business.

Laws Governing Trade Secrets in India:

• There is no specific statute for trade secrets in India; protection is derived from
common law principles of contract and equity.

• Non-disclosure agreements (NDAs) and confidentiality clauses are commonly used to

safeguard trade secrets.

g. Plant Varieties and Farmers’ Rights

The protection of new plant varieties is essential to encourage agricultural innovation and
ensure the rights of farmers and plant breeders.

Laws Governing Plant Varieties in India:

• The Protection of Plant Varieties and Farmers’ Rights Act, 2001: This Act
provides for the protection of plant varieties, recognizing the rights of both breeders
and farmers.

• Key Features:

o Farmers have the right to save, use, sow, and exchange seeds.

o Breeders are granted exclusive rights to produce and market new plant
varieties.
h. Semiconductor Integrated Circuits Layout-Designs

The protection of layout designs of semiconductor integrated circuits ensures that the creators
of such designs are rewarded for their efforts.

Laws Governing Semiconductor Designs in India:

• The Semiconductor Integrated Circuits Layout-Design Act, 2000: This Act

provides for the registration and protection of layout designs.

Conclusion

Intellectual property encompasses a wide array of rights that protect the creations of human
intellect, encouraging innovation and economic development. The various kinds of IP—
patents, copyrights, trademarks, designs, GIs, trade secrets, and plant varieties—are governed
by distinct laws in India, each tailored to address the unique characteristics of the protected
subject matter. Collectively, these laws create a robust framework that balances the rights of
creators with societal interests, ensuring that innovation thrives while public welfare is
safeguarded.

12. Examine the concept of intellectual property rights and the historical background of
the development of intellectual property rights. 10

Ans) Intellectual Property Rights (IPRs) are legal entitlements that grant creators and
inventors exclusive rights over their intellectual creations for a specified duration. These
rights cover a broad spectrum of creations, including inventions, literary works, artistic
expressions, symbols, and designs. The central objective of IPRs is to incentivize creativity
and innovation by ensuring that creators can benefit economically and morally from their
work, while also fostering societal progress through the dissemination of knowledge.

The Concept of Intellectual Property Rights

IPRs are based on the premise that intellectual creations, though intangible, hold significant
economic and cultural value. They protect a wide range of intellectual assets through various
categories, including patents, copyrights, trademarks, industrial designs, geographical
indications, trade secrets, and plant variety protections. Each of these categories addresses
specific types of intellectual property and is governed by distinct legal frameworks.

The legal foundation of IPR lies in both national legislation and international agreements. In
India, IPR is governed by statutes such as the Patents Act, 1970, the Copyright Act, 1957,
the Trademarks Act, 1999, and others. Internationally, IPRs are regulated by treaties like the
Paris Convention (1883), the Berne Convention (1886), and the TRIPS Agreement
(1995), which ensure global recognition and enforcement of intellectual property rights.

IPRs serve three primary purposes:

• Encouraging innovation and creativity by granting economic incentives to creators.

• Promoting public access to new technologies, knowledge, and cultural works.

• Protecting consumers from counterfeit products and ensuring fair trade practices.
Historical Background of the Development of Intellectual Property Rights

The development of intellectual property rights is a product of centuries of legal and societal
evolution. The concept of protecting intellectual creations dates back to ancient civilizations,
but its formalization into legal systems is a relatively recent phenomenon. The historical
background of IPR can be traced through distinct phases, reflecting changing societal and
economic needs.

Ancient and Medieval Origins

The origins of intellectual property protection can be found in ancient societies that valued
creativity and invention. For instance, ancient Greek city-states granted exclusive rights to
chefs for their unique recipes, while Roman law recognized certain rights over creative
works. However, these protections were informal and limited in scope.

During the medieval period, craft guilds in Europe played a significant role in protecting the
interests of artisans and tradesmen. These guilds regulated the quality of goods, safeguarded
trade secrets, and ensured that the knowledge of specific crafts remained within the guild.
This can be seen as a precursor to modern trade secrets and trademark laws.

The Renaissance and the Birth of Patents

The Renaissance period witnessed a resurgence of intellectual and artistic activity, creating a
need to protect the works of creators. The concept of patents emerged during this period, with
one of the earliest recorded patents granted in 1421 in the Republic of Florence to Filippo
Brunelleschi for his invention of a crane to transport marble.

The Venetian Patent Statute of 1474 is considered the first formal patent law. It granted
inventors exclusive rights to their inventions for ten years, establishing key principles such as
exclusivity and disclosure. This statute laid the groundwork for modern patent systems,
recognizing the value of innovation in economic and societal development.

The 17th and 18th Centuries: Expansion of IP Protections

The 17th and 18th centuries marked significant developments in the formalization of
intellectual property rights:

1. The Statute of Anne (1710): This was the first copyright law, enacted in England to
protect the rights of authors over their literary works. It recognized that creative works
were the property of their authors, not printers or publishers, and granted authors
exclusive rights for a fixed period. This statute is the foundation of modern copyright
law.

2. The Statute of Monopolies (1624): Passed in England, this statute curtailed the
abuse of monopolies granted by the Crown and laid the basis for granting patents only
for new and useful inventions. It established the idea that patents should promote
innovation rather than stifle competition.

The Industrial Revolution and the Growth of IP Systems

The Industrial Revolution (18th to 19th centuries) brought about transformative changes in
technology, manufacturing, and commerce. With the rise of mass production and international
trade, the need for robust intellectual property systems became more pronounced. New
technologies required legal protection to incentivize inventors and promote industrial growth.

During this period, many countries enacted patent and copyright laws to protect intellectual
creations. Trademarks also gained prominence as branding became essential for
distinguishing goods in competitive markets. The industrial era established the economic
rationale for IPR, linking it directly to innovation and economic development.

The 19th Century: International Cooperation

The growing importance of international trade in the 19th century highlighted the need for
cross-border protection of intellectual property. Two landmark treaties were established
during this period:

1. The Paris Convention for the Protection of Industrial Property (1883): This was
the first international treaty on intellectual property, establishing principles such as
national treatment, priority rights, and independence of patents.

2. The Berne Convention for the Protection of Literary and Artistic Works (1886):
This treaty ensured international recognition of copyrights, protecting authors' rights
across member countries.

These treaties laid the foundation for modern international IP systems, promoting global
cooperation and standardization.

The 20th Century: Globalization and Institutionalization

The 20th century witnessed rapid advancements in technology, science, and communication,
necessitating further evolution of IPR. The establishment of the World Intellectual Property
Organization (WIPO) in 1967 marked a significant step toward global IP governance.
WIPO became the central body for administering international IP treaties and promoting the
harmonization of IP laws.

The adoption of the TRIPS Agreement (1995) under the World Trade Organization (WTO)
was a watershed moment in the history of IPR. TRIPS established minimum standards for IP
protection across all WTO member states, including India. It mandated product patents in
fields like pharmaceuticals, aligning national IP laws with global standards.

The Indian Context

India’s IP system evolved in response to colonial influences, international developments, and

domestic needs. The British colonial government introduced laws like the Copyright Act of
1914 and the Indian Patents and Designs Act of 1911, which laid the groundwork for
India’s modern IP regime.

Post-independence, India adopted its own laws, such as the Patents Act, 1970, which initially
favored process patents over product patents to encourage domestic manufacturing. However,
with the TRIPS Agreement, India amended its IP laws significantly in the 1990s and 2000s to
align with global standards while retaining flexibilities to address public health and
developmental concerns.

Conclusion
The concept of intellectual property rights has evolved over centuries, reflecting humanity's
growing recognition of the value of creativity and innovation. From ancient guilds to modern
international treaties, the development of IPR demonstrates a continuous effort to balance
individual rights with societal progress. Today, IPR plays a pivotal role in shaping economies,
fostering innovation, and promoting global cooperation.

13. ‘the protection of intellectual/Industrial property is necessity than a compulsion’.

Elucidate. 10

Ans) The protection of intellectual and industrial property is an indispensable part of modern
legal and economic systems. Intellectual Property Rights (IPRs) are not merely a legal
compulsion but a necessity for fostering innovation, safeguarding creativity, and driving
economic growth. These rights ensure that inventors, creators, and businesses reap the
benefits of their intellectual labor while contributing to societal advancement. The necessity
for IPR protection is rooted in the dual objectives of rewarding individual effort and
promoting public access to new knowledge and technologies.

Significance of Intellectual and Industrial Property Protection

a) Encouraging Innovation and Creativity

The protection of intellectual property incentivizes individuals and organizations to innovate

and create by offering them exclusive rights over their inventions and works. Patents,
copyrights, trademarks, and other forms of protection ensure that innovators can
commercially exploit their ideas without fear of unauthorized use. This fosters a competitive
environment where creativity thrives, leading to technological advancements, cultural
development, and economic prosperity.

For instance, patent protection for pharmaceutical innovations allows companies to recoup
research and development costs, which are often substantial. Without such protection, the
lack of financial incentives would deter investments in critical areas such as medicine and
green technology.

b) Preventing Exploitation and Misappropriation

Without proper intellectual property protection, creators and businesses are vulnerable to the
theft or misuse of their ideas and innovations. In a globalized economy, the risk of intellectual
property theft has increased significantly, making it imperative to safeguard industrial
designs, trademarks, and trade secrets.

c) Facilitating Economic Growth

Intellectual and industrial property rights are directly linked to economic growth and
development. They encourage foreign investment, facilitate technology transfer, and enhance
a country’s competitiveness in the global market. For instance, robust intellectual property
regimes attract multinational corporations seeking to establish operations in jurisdictions
where their innovations and brands are protected.

India's strengthening of its patent laws after becoming a signatory to the TRIPS Agreement
under the WTO has significantly boosted sectors such as pharmaceuticals, biotechnology, and
information technology, contributing to the nation’s GDP.
Necessity of IPR Protection Over Mere Compulsion

a. Balancing Individual Rights with Public Interest

Intellectual property laws strike a balance between granting exclusive rights to creators and
ensuring that their innovations benefit society. For example, patents provide inventors with a
limited monopoly while requiring them to disclose their inventions, thereby enriching the
public domain after the patent term expires. This balance underscores the necessity of IPR
protection as a tool for promoting both private interests and public welfare.

b. Aligning with Global Standards

In the modern interconnected world, robust intellectual property laws are a necessity for
participating in the global economy. Compliance with international agreements such as the
TRIPS Agreement ensures that a country’s legal framework is aligned with global standards,
fostering cross-border trade and investment. Nations with weak intellectual property
protection risk losing out on opportunities for economic collaboration and technological
transfer.

c. Supporting Cultural and Creative Industries

Copyright protection is critical for cultural and creative industries, including film, music,
literature, and art. These industries contribute significantly to the economy and national
identity. Without copyright, artists and creators would be unable to profit from their works,
leading to stagnation in cultural production.

The Indian film industry, for example, relies heavily on copyright protection to prevent
piracy, ensuring that producers, directors, and actors receive fair compensation for their work.

d. Addressing Modern Challenges

The rapid advancements in technology and globalization have brought new challenges to
intellectual property protection, such as digital piracy, counterfeit goods, and cyber theft.
Addressing these challenges is not a mere compulsion but a necessity to ensure fair
competition, protect consumers, and maintain the integrity of markets.

For example, trademarks protect consumers from confusion by ensuring that they can identify
the source and quality of goods and services. Strong trademark enforcement is essential to
combat counterfeiting, which not only harms businesses but also poses risks to public health
and safety.

Conclusion

The protection of intellectual and industrial property is not merely a legal obligation or
compulsion; it is a necessity to foster innovation, safeguard creativity, and drive economic
progress. It provides a framework that rewards creators while ensuring that their
contributions benefit society as a whole. In an increasingly interconnected and competitive
world, robust intellectual property protection is essential for sustaining economic growth,
promoting technological advancement, and preserving cultural heritage.

14. Define patent. Explain the principles underlying the patent law in India. 10
Ans) The principles underlying patent law in India are rooted in the objective of fostering
innovation, encouraging technological advancement, and ensuring public interest is balanced
with the rights of inventors. The Indian legal framework governing patents is primarily
encapsulated in the Patents Act, 1970.

I. Patent Definition

The Patents Act, 1970 (hereafter referred as 'the Act') of India specifies the provisions that
are used by the Indian Patent Office and the courts to determine whether a product or a
process is worthy of a patent in India. The Act, vide Section 2(1)(m), provides that a patent
may be granted for an "invention". Further, the definition of "invention" is provided under
Section 2(1)(j) of the Act as a new product or process involving an inventive step and
capable of industrial application.

II. The principles underlying the patent law in India

a. Principle of Novelty

A patent can only be granted for an invention that is novel, meaning it must be new and not
disclosed to the public before the patent application date. The principle of novelty ensures
that patent protection is reserved for truly innovative ideas that add to the existing body of
knowledge.

This principle is enforced through prior art searches conducted by the Indian Patent Office
during the examination process. If an invention is found to have been published, used, or
known before the application date, it is considered not novel and is ineligible for patent
protection.

b. Principle of Inventive Step (Non-Obviousness)

Another critical principle is that an invention must involve an inventive step, meaning it
should not be obvious to a person skilled in the field of the invention. This requirement
ensures that patents are not granted for trivial modifications or incremental improvements to
existing technologies.

The test for inventive step is codified in Section 2(1)(ja) of the Patents Act, 1970. The
invention must demonstrate technical advancement or an economic significance compared to
prior art, ensuring that only genuine innovations receive patent protection.

c. Principle of Industrial Applicability

A patentable invention must have industrial applicability, meaning it must be capable of

being made or used in some form of industry. This principle ensures that patents are granted
only for inventions that have practical utility and contribute to economic or technological
development. Abstract theories, speculative ideas, or inventions lacking practical
implementation are excluded from patentability.

d. Principle of Exclusivity

A fundamental principle of patent law is to grant an inventor exclusive rights over their
invention for a limited period (typically 20 years). This exclusivity allows the inventor to
prevent others from making, using, selling, or distributing the invention without permission.
This serves as a reward for creativity and investment in innovation, fostering a culture of
research and development.

However, this exclusivity is not absolute and is balanced by safeguards to prevent abuse of
monopoly power. For example, provisions such as compulsory licensing and revocation of
patents are embedded within the Indian patent regime to ensure public interest is upheld.

e. Principle of Limited Duration

Patents are granted for a limited duration of 20 years from the date of filing. This principle
ensures that inventors are rewarded for their creativity while also guaranteeing that the
invention eventually enters the public domain, where it can be freely used by society.

This time-limited monopoly is justified on the grounds that it encourages inventors to

disclose their inventions without fear of losing commercial advantage, while society benefits
from eventual free access to the knowledge.

f. Principle of Public Disclosure

A core principle of patent law is the requirement for public disclosure of the invention.
When filing a patent application, the inventor must provide a detailed description of the
invention, including how it works and how it can be replicated by a person skilled in the
relevant field.

This principle serves two purposes:

1. It enables society to benefit from the inventor's knowledge and ensures technological
progress.

2. It allows the invention to enter the public domain after the patent term expires,
enabling others to use the invention freely.

g. Principle of Non-Patentable Subject Matter

Patent law in India explicitly excludes certain types of inventions from patent protection
under Sections 3 and 4 of the Patents Act, 1970. These exclusions reflect the principle that
not all innovations are eligible for monopoly rights, especially when granting a patent would
conflict with public morality, public health, or socio-economic considerations.

Examples of non-patentable subject matter include:

• Inventions that are frivolous or contrary to natural laws (Section 3(a)).

• Methods of agriculture or horticulture (Section 3(h)).

• Processes for the treatment of humans or animals (Section 3(i)).

• Business methods, algorithms, and computer programs per se (Section 3(k)). These
exclusions ensure that patents are not granted for inventions that would hinder societal
progress or conflict with public welfare.

h. Principle of Balance Between Private Rights and Public Interest

Patent law is designed to strike a balance between the private rights of inventors and the
public's interest in accessing essential goods and technologies. Provisions such as
compulsory licensing (Section 84) and exceptions for use in cases of public emergency
(Section 92) embody this principle.

Compulsory licensing allows third parties to produce a patented invention without the
patentee’s consent under specific conditions, such as when the invention is not available to
the public at reasonable costs or when it is necessary to address national emergencies, such as
health crises.

i. International Obligations

India is a signatory to a number of international treaties and agreements that govern the grant
and protection of patents. These include the Paris Convention for the Protection of Industrial
Property, the Patent Cooperation Treaty, and the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS). India's patent law must be in compliance with these
international obligations.

j. Enforcement and Remedies

Effective enforcement of patent rights is essential for the functioning of the patent system.
The Indian legal framework provides robust mechanisms for addressing patent infringement,
including:

• Injunctions to prevent continued infringement.

• Damages or accounts of profits to compensate the patentee.

• Orders for the seizure or destruction of infringing goods.

These enforcement mechanisms are balanced with safeguards to prevent misuse of patent
rights, such as the requirement for patentees to work their inventions in India (Section 83).

Conclusion

The principles underlying the patent law in India reflect a thoughtful balance between
incentivizing innovation and safeguarding public interest. They aim to reward inventors while
ensuring that the benefits of innovation are accessible to society. By fostering technological
progress, encouraging disclosure, and providing mechanisms to prevent the abuse of rights,
India’s patent law contributes to the nation’s socio-economic development while adhering to
international norms.

15. What are the factors responsible for the growth of patent law? Explain. 10

Ans) Patent law is a specialized branch of intellectual property law that grants exclusive
rights to inventors for their creations, provided certain conditions such as novelty, inventive
step, and industrial applicability are met. The growth of patent law can be attributed to a
range of factors that have collectively shaped its evolution as a cornerstone of modern
intellectual property regimes. These factors are deeply rooted in the economic, technological,
societal, and legal advancements that have necessitated a robust system for protecting
innovation. The growth of patent law is not merely a response to individual inventions but a
reflection of the broader societal need to balance the interests of inventors, businesses, and
the public.

Factors Responsible for the Growth of Patent Law

a. Economic Growth and Industrialization

The rise of patent law is closely tied to the economic transformations brought about by
industrialization. During the Industrial Revolution, technological advancements such as the
steam engine, mechanized textile production, and improved manufacturing processes led to a
surge in inventions that required legal protection to ensure fair commercial exploitation. The
growth of patent law during this period was driven by:

• The need to incentivize inventors and encourage investment in research and

development.

• The commercialization of innovations, which required a legal framework to regulate

ownership and exploitation rights.

The expanding global trade networks also necessitated the protection of inventions across
borders, contributing to the establishment of international agreements like the Paris
Convention for the Protection of Industrial Property (1883).

b. Technological Advancements

The exponential growth of technology has been one of the most significant drivers of patent
law's development. From early mechanical inventions to the rise of digital technologies,
biotechnology, and artificial intelligence, the increasing complexity of innovations has
necessitated a robust legal framework to address new challenges. Key areas influencing
patent law include:

• Biotechnology and Pharmaceuticals: The development of life-saving drugs and

medical technologies emphasized the need for product patents to encourage
investment in high-cost research.

• Information Technology: The growth of software, hardware, and

telecommunications created new categories of inventions requiring protection under
patent law.

• Green Technology: Innovations aimed at addressing climate change and

sustainability issues have also fueled the expansion of patent law.

As technology continues to evolve, patent law has had to adapt to accommodate emerging
fields, ensuring that inventors in cutting-edge industries receive adequate protection.

c. Recognition of Intellectual Property as an Economic Asset

The growth of patent law is linked to the increasing recognition of intellectual property as a
valuable economic asset. In a knowledge-driven economy, patents represent a significant
portion of a company’s value, providing competitive advantages and serving as tools for
economic leverage. Factors that have emphasized the economic importance of patents
include:
 • The rise of multinational corporations and their reliance on innovation to maintain
market dominance.

• The monetization of patents through licensing agreements, joint ventures, and

technology transfers, which has elevated the importance of strong patent protection.

• The emergence of global markets, where patented products and technologies are
traded as high-value commodities.

Governments and businesses alike have acknowledged the role of patents in fostering
economic growth, leading to the strengthening and harmonization of patent laws globally.

d. Globalization and International Agreements

The globalization of trade and the interconnectedness of economies have significantly

contributed to the growth of patent law. The need to protect inventions in multiple
jurisdictions led to the establishment of international treaties and frameworks. These
agreements have harmonized patent laws, making it easier for inventors to secure protection
across borders. Key milestones include:

• The Paris Convention (1883): Established the principle of national treatment and
facilitated international priority claims.

• The Patent Cooperation Treaty (PCT): Streamlined the process of seeking patent
protection in multiple countries.

• The TRIPS Agreement (1995): Mandated minimum standards for intellectual

property protection, including patents, across all member countries of the World Trade
Organization (WTO).

These agreements reflect the recognition of intellectual property rights as integral to

international trade and economic development, thereby spurring the growth of patent law.

e. Increased Focus on Innovation and R&D

The rise of innovation as a driving force behind economic and social progress has been a
major factor in the growth of patent law. Governments and organizations have prioritized
research and development (R&D) to address global challenges such as healthcare, energy,
and climate change. Patent law plays a critical role in incentivizing this innovation by
offering inventors a temporary monopoly over their creations. Examples include:

• Tax incentives for R&D activities in industries like pharmaceuticals and renewable
energy.

• Public funding for research institutions, which often seek patent protection for their
discoveries to facilitate commercialization.

The alignment of patent law with national and international innovation policies has further
fueled its development.

f. Judicial and Legislative Developments

The growth of patent law has also been shaped by the judiciary and legislative bodies, which
have continuously interpreted and refined patent statutes to address emerging challenges.
Landmark cases and legislative amendments have clarified the scope of patentable subject
matter, the requirements for patentability, and the limitations on patent rights. For instance:

• In India, the 2005 Amendment to the Patents Act, 1970 introduced product patents
in pharmaceuticals and chemicals, aligning the law with TRIPS while maintaining
provisions like Section 3(d) to prevent "evergreening."

• Courts have played a vital role in interpreting complex issues, such as the
patentability of software, methods of treatment, and the standard for inventive step.

These judicial and legislative developments have ensured that patent law remains relevant in
a rapidly changing world.

g. Public Interest and Access to Technology

Patent law has grown in response to societal demands for a balanced approach to innovation
and access. The development of mechanisms such as compulsory licensing and provisions for
public interest exceptions highlights the dual objectives of patent law: to incentivize
innovation and ensure public welfare. For example:

• In the pharmaceutical sector, compulsory licensing provisions have been used to

address the affordability and accessibility of life-saving medicines.

• Patent pools and open licensing agreements have emerged as innovative solutions to
share patented technologies for global benefit.

This balance between private rights and public interest has been a driving force behind the
evolution of patent law.

Conclusion

The growth of patent law has been driven by a confluence of economic, technological, legal,
and societal factors. Its evolution reflects the dynamic interplay between the need to
incentivize innovation and the imperative to protect public welfare. From the industrial
revolution to the age of artificial intelligence, patent law has adapted to meet the challenges
of each era, ensuring that it remains a vital tool for promoting creativity, economic
development, and global progress. Its continued development will depend on how effectively
it responds to emerging issues, such as access to essential technologies, ethical
considerations, and the impact of new technologies on traditional legal frameworks.

16. ‘Z’ a person has invented an antivirus software for the protection of computers and
wants to obtain a patent for it. Advise him. 6

Ans) Patentability of software, including antivirus software, is governed by Section 3(k) of

the Patents Act, 1970, which excludes “a mathematical or business method, a computer
program per se, or algorithms” from being considered as inventions. However, there are
exceptions and interpretations that may allow certain software-related inventions to be
patented under Indian law if specific conditions are met.

Legal Position on Software Patents in India

1. Section 3(k) of the Patents Act, 1970

Section 3(k) explicitly excludes “computer programs per se” from patentability. This
means that software in isolation, without any technical effect or industrial applicability,
cannot be patented.

2. Judicial Interpretation

Indian courts and the Patent Office have clarified that software-related inventions may be
patented if they:

• Produce a technical effect or solve a technical problem.

• Are tied to hardware or provide a specific technical advancement.

In Telefonktiebolaget LM Ericsson (Publ) v. Lava International Ltd., the court stated 88

that the bar of section 3(k) applies to algorithms which are theoretical in nature and/or
abstract formulae. This bar of section 3(k) does not apply when in a patent involving modern
day technology, algorithms are employed in order to perform certain calculations or
selections which are thereafter utilized by various hardware components or elements to
produce/improve a technology and create a practical effect or result in a physical realization.
The court further stated that mere mention of an algorithm or a mathematical formula in a
patent document should not be inferred to mean that the invention is nothing but an
algorithm.

In Telefonaktiebolaget LM Ericsson (Publ) v. Intex Technologies (India) Limited, The

court stated that any invention which has a technical contribution or has a technical effect
and is not merely a computer program per se is patentable.

If ‘Z’s antivirus software provides a technical solution to a specific problem, such as

detecting and eliminating new types of malware or significantly improving the performance
of a computer system, it may qualify for patent protection.

Advice

Hence ‘Z’ can pursue a patent for the antivirus software if it demonstrates a technical effect,
solves a technical problem, and possibly integrates with hardware. The patent application
should focus on the technical innovation rather than the software as a standalone entity to
comply with Section 3(k) of the Patents Act. Alternatively, ‘Z’ can protect the software
through copyright if patent protection is not granted. It is advisable to consult a patent
attorney for detailed guidance and assistance in drafting the patent application.

17. ‘X’ has an invention relating to atomic energy and wants to obtain patent for it.
Advice him. 6

Ans) Under the Patents Act, 1970, certain inven.ons are expressly excluded from patent
protec.on due to their sensi.ve nature and poten.al implica.ons for na.onal security and
public safety. Inven.ons related to atomic energy fall under this category and are governed
by Sec)on 4 of the Act.

Relevant Legal Provision: Section 4 of the Patents Act, 1970

Section 4 states:
"No patent shall be granted in respect of an invention relating to atomic energy falling within
Subsection (1) of Section 20 of the Atomic Energy Act, 1962."

This means that inventions directly related to atomic energy and its applications, as defined
under the Atomic Energy Act, 1962, are excluded from patentability. The intent of this
restriction is to ensure that such sensitive technologies remain under state control, given their
strategic importance and potential for misuse.

Implications for 'X's Invention

1. Atomic Energy-Related Inventions Are Non-Patentable

If the invention directly pertains to atomic energy or its use in processes such as
nuclear fission, fusion, or reactors, it cannot be patented under Indian law. The
rationale is that atomic energy is considered critical to national security, and its use is
regulated solely by the government through the Department of Atomic Energy.

2. Does the Invention Fall Under Section 4?

To determine whether 'X's invention is excluded, it must be evaluated whether it falls
under Section 20 of the Atomic Energy Act, 1962, which governs activities related
to the production, development, or use of atomic energy. If the invention is indirectly
related or has broader industrial applications beyond atomic energy, it may still
qualify for patentability.

3. Alternative Uses
If the invention has dual-use applications or broader industrial relevance not
exclusively tied to atomic energy, 'X' could argue that it falls outside the scope of
Section 4. However, this will depend on the specifics of the invention and the claims
in the patent application.

Advice

Based on the information provided, if 'X's invention directly relates to atomic energy, it
cannot be patented in India under Section 4 of the Patents Act, 1970. However, if the
invention has broader industrial applications, 'X' may revise the scope of the claims to focus
on those aspects. It is recommended that 'X' consults with a patent attorney and the
Department of Atomic Energy for further guidance on pursuing recognition or protection for
the invention.

18. An employee working for a firm comes out with an invention after much efforts in
the laboratory. But after the invention, the employer obtains patent in the name of
firm on the invention. Which of the theory supports employees position?

Ans) The strongest theoretical support for the employee’s claim arises from the Labour
Theory and Personality Theory, which focus on the individual creator’s rights.

Labour Theory

The Labour Theory, derived from John Locke’s philosophy, posits that an individual has a
natural right to ownership of the fruits of their labour. According to this theory, ownership
arises from the effort and resources an individual expends to create something.
• Application to the Employee's Position:
The employee in this scenario has invested significant intellectual effort, time, and skill in
the laboratory to develop the invention. Under the Labour Theory, these contributions
entitle the employee to ownership of the invention. The firm’s role, even if it provided
infrastructure or resources, is secondary to the employee’s direct intellectual contribution,
as the invention is the result of the employee’s personal labor.

• Limitation:
If the employment contract contains a work-for-hire clause, the employer could argue
that the invention was created as part of the employee’s assigned duties, and therefore, the
firm is the rightful owner. However, in the absence of such a clause, the Labour Theory
strongly supports the employee’s claim to ownership.

Personality Theory

The Personality Theory, based on the philosophy of Hegel, views intellectual creations as an
extension of an individual’s personality. This theory emphasizes that intellectual property
reflects the creator’s personal expression, creativity, and individuality.

• Support for the Employee:

The invention in question is a product of the employee’s intellectual creativity and is,
therefore, deeply tied to their personality and individuality. This theory argues that the
employee should have ownership rights because the invention is not merely a physical
object but also an embodiment of the employee’s thought process and innovation.

• Injustice in Employer’s Claim:

If the employer registers the patent in the firm’s name without acknowledging the
employee’s role as the true inventor, it undermines the employee’s moral and intellectual
contributions. The Personality Theory thus supports the recognition of the employee’s
ownership or at least joint ownership of the patent.

Conclusion

Among the various theories, the Labour Theory and Personality Theory provide the
strongest support for the employee’s position, as they emphasize the individual’s intellectual
contribution and personal connection to the invention. The Utilitarian Theory and Social
Planning Theory also lend support, particularly if granting ownership to the employee aligns
with broader societal benefits and encourages future innovation.

Ultimately, the resolution of such disputes often hinges on the terms of the employment
contract and the specific circumstances of the invention’s development. However, in the
absence of explicit agreements transferring ownership to the employer, these theories
collectively advocate for the employee’s rightful claim to the patent. This ensures fairness in
recognizing the individual’s intellectual effort and contribution to innovation.

19. The controller of patent in India rejects an application being submitted by the
applicant to seek patent relating to a method and device for accessing information
sources and services on the web holding it as non-patentable. The applicant
challenges it before the High Court. Decide. 6
Ans) The scenario involves the rejection of a patent application by the Controller of Patents
in India for a method and device used to access information sources and services on the web.
The rejection is based on the claim that the subject matter is non-patentable, likely under
Section 3(k) of the Patents Act, 1970, which excludes “computer programs per se” and
algorithms from patent protection.

Legal Framework

1. Section 3(k) of the Patents Act, 1970

Section 3(k) excludes:

“A mathematical or business method, a computer program per se, or algorithms.”

The provision reflects India’s restrictive approach to software patents, barring standalone
computer programs or abstract methods from being patented unless they demonstrate a
technical effect or are integrated with hardware to solve a specific technical problem.

2. Judicial Precedents

Indian courts have clarified the scope of Section 3(k) through various cases. Notable
examples include:

• Ericsson v. Intex Technologies (2015): The Delhi High Court recognized the
patentability of software integrated with hardware that demonstrated a technical
effect.

• Telefonaktiebolaget LM Ericsson v. Lava International (2016): The court upheld

patents for software embedded in devices that improved technical processes,
underscoring the importance of a hardware-software interaction.

High Court’s Likely Decision

If the applicant demonstrates that the method and device produce a technical effect and
involve hardware integration, the High Court may rule in favor of the applicant, directing
the Controller to reconsider the application. However, if the invention is found to be a mere
computer program per se or lacks a clear technical advancement, the court is likely to
uphold the rejection under Section 3(k). The ultimate decision will depend on the applicant’s
ability to highlight the invention's technical contribution and industrial applicability.

20. A practitioner challenges section 126 of the patent act as unconstitutional on the
ground that it goes against article 19(1)(g) of the constitution of India as the set
section does not permit Advocate to carry out patent practice. Decide. 6

Ans) Introduc)on

The question pertains to a conflict between Section 126 of the Patents Act, 1970, which
governs who may act as a patent agent, and Article 19(1)(g) of the Constitution of India,
which guarantees the right to practice any profession or carry on any trade, occupation, or
business. The issue arises because Section 126 restricts the right to practice as a patent agent
to individuals who meet specific qualifications, effectively excluding advocates unless they
fulfill additional criteria.
To resolve the question, it is essential to examine the provisions of Section 126, analyze its
constitutional validity in light of Article 19(1)(g), and determine whether the restriction
imposed is reasonable under Article 19(6).

Relevant Provisions

Section 126 of the Patents Act, 1970

Section 126 specifies the qualifications required to be registered as a patent agent in India. It
states that:

1. A person must be a citizen of India.

2. They must have completed a degree in science, engineering, or technology from a

recognized institution.

3. They must have passed the qualifying examination conducted by the Controller of
Patents.

4. They must have paid the prescribed fees.

Advocates, even though qualified to practice law, are not automatically eligible to act as
patent agents unless they meet these specific qualifications.

Article 19(1)(g) of the Constitution of India

This provision guarantees citizens the fundamental right to practice any profession or to carry
on any occupation, trade, or business.

Article 19(6) of the Constitution of India

This provision permits the State to impose reasonable restrictions on the exercise of rights
under Article 19(1)(g) in the interest of: Public order, Morality, or The general public.

Arguments of the Practitioner

The practitioner may argue that:

1. Violation of Article 19(1)(g):

By excluding advocates from practicing as patent agents without additional qualifications,

Section 126 restricts their fundamental right to practice their profession.

Advocates are already qualified under the Advocates Act, 1961, to represent clients in legal
matters, which should include matters related to patents.

2. Arbitrary and Discriminatory Nature:

Section 126 discriminates against advocates by imposing additional qualifications for patent
practice, while individuals with science or engineering backgrounds can register as patent
agents without legal training.

3. Overlap Between Legal Practice and Patent Practice:

Patent practice involves legal skills, such as drafting patent specifications and representing
clients before the Controller of Patents, which are well within the domain of advocates.

Defense of Section 126

The validity of Section 126 can be defended on the following grounds:

1. Patent Practice Requires Specialized Knowledge:

Patent practice involves drafting technical patent specifications, conducting patent searches,
and addressing issues related to technology and science. These tasks require expertise in
science, engineering, or technology, which advocates may lack.

The requirement of technical qualifications ensures that patent agents possess the necessary
knowledge to understand and articulate complex technical inventions.

2. Reasonable Restriction Under Article 19(6):

The restriction imposed by Section 126 is reasonable and serves a legitimate public purpose.
It ensures that only qualified individuals with the requisite technical and legal expertise are
allowed to act as patent agents, thereby maintaining the quality and reliability of patent
services.

The restriction does not completely prohibit advocates from engaging in patent-related work.
Advocates can still appear before the Intellectual Property Appellate Board (IPAB) or courts
in patent litigation matters, as this does not require registration as a patent agent.

3. Legislative Competence and Public Interest:

Parliament has the authority to legislate on matters related to patents, as they fall within
Entry 49, List I of the Seventh Schedule to the Constitution.

The classification made by Section 126, based on technical qualifications, is reasonable and
designed to serve the public interest by ensuring competent patent representation.

Judicial Precedents

Shamnad Basheer v. Union of India (2013): In this case, the Delhi High Court emphasized
the need for a specialized regime for patent practice, given the technical nature of patents.

The court recognized the distinction between patent agents and advocates, noting that patent
agents are required to have specific technical expertise.

Deepak Seth v. Union of India (2005):The Punjab and Haryana High Court upheld the
validity of Section 126, holding that the requirement of technical qualifications was neither
arbitrary nor unreasonable.

The court observed that the restriction was a reasonable classification and did not violate
Article 19(1)(g).

Akhil Bhartiya Upbhokta Congress v. State of Madhya Pradesh (2011): The Supreme
Court held that the right to practice a profession under Article 19(1)(g) is not absolute and is
subject to reasonable restrictions in the interest of maintaining professional standards and
public welfare.

Analysis

The challenge to Section 126 on constitutional grounds does not hold merit. While Article
19(1)(g) guarantees the right to practice any profession, this right is not absolute. The
restriction imposed by Section 126 is reasonable under Article 19(6) for the following
reasons:

1. The requirement of technical qualifications ensures that patent agents possess the
necessary expertise to deal with technical inventions, which involve highly
specialized knowledge.

2. The restriction is not arbitrary or discriminatory, as it applies uniformly to all

individuals, regardless of their background, and is based on a legitimate classification.

3. Advocates are not entirely barred from engaging in patent practice. They can still
represent clients in patent litigation, appear before courts, and provide legal advice on
patent-related matters.

Conclusion

The restriction imposed by Section 126 of the Patents Act, 1970, is a reasonable and
constitutionally valid regulation. It ensures that individuals engaging in patent practice have
both the technical and legal expertise necessary to handle complex patent matters effectively.
Advocates, while qualified in law, are required to fulfill the additional technical qualifications
mandated by Section 126 to register as patent agents. This does not violate Article 19(1)(g) of
the Constitution, as it is a reasonable restriction under Article 19(6) in the interest of
maintaining professional standards and public welfare.

The challenge to Section 126, therefore, is unlikely to succeed.

 UNIT II

1. “one of the grounds for rejecting an application for registration of trademark is the
lack of distinctiveness”- explain. 10

Ans) A trademark serves as a unique identifier for goods or services, distinguishing them
from those of others. Under the Trademarks Act, 1999, the distinctiveness of a trademark is
a fundamental requirement for its registration. Distinctiveness ensures that the trademark can
fulfil its primary purpose: to help consumers associate the goods or services with a specific
source. Without distinctiveness, a trademark cannot function as a badge of origin, leading to
confusion in the marketplace and undermining the purpose of trademark protection.

Section 9 of the Trademarks Act, 1999, enumerates the absolute grounds for refusal of
registration, with lack of distinctiveness being a key reason. This provision prevents the
registration of marks that are incapable of distinguishing the applicant's goods or services
from those of others. Courts and tribunals have consistently emphasized the importance of
distinctiveness in determining the registrability of a trademark.

I. The Concept of Distinctiveness

Distinctiveness in trademark law refers to the ability of a mark to identify the goods or
services of one trader and distinguish them from those of others. A trademark must be unique
and capable of creating an association in the minds of consumers with the origin of the goods
or services. Distinctiveness can be:

i. Inherent Distinctiveness: Some marks are inherently distinctive, such as fanciful or

arbitrary marks (e.g., "Google" for a search engine or "Apple" for electronics). These
marks immediately stand out as identifiers of the source.

ii. Acquired Distinctiveness (Secondary Meaning): Marks that are not inherently
distinctive may acquire distinctiveness through prolonged and exclusive use in
commerce, leading consumers to associate the mark with a particular source.

II. Legal Provisions Addressing Distinctiveness

Section 9(1)(a) – Marks Devoid of Distinctive Character

Section 9(1)(a) of the Trademarks Act, 1999, states that a trademark shall not be registered if
it is devoid of any distinctive character. This means that a mark incapable of distinguishing
the applicant's goods or services from those of others is not eligible for registration. Such
marks fail to function as trademarks because they do not create a unique association with the
goods or services of a particular source.

Examples of marks that lack distinctiveness include:

• Descriptive Marks: Marks that directly describe the goods or services (e.g., "Fresh"
for fruits).

• Generic Terms: Common names for goods or services (e.g., "Laptop" for
computers).
 • Commonplace Words or Phrases: Words or phrases commonly used in trade (e.g.,
"Best Quality").

Section 9(1)(b) – Descriptive Marks

Section 9(1)(b) prohibits the registration of marks that consist exclusively of indications or
descriptions of the kind, quality, quantity, intended purpose, or other characteristics of goods
or services. Descriptive marks lack inherent distinctiveness because they merely convey
information about the product rather than functioning as an identifier of its source.

However, an exception is provided if the applicant can prove that the mark has acquired
distinctiveness through use under proviso to Section 9(1). For instance, "Fair & Lovely"
was initially descriptive but gained distinctiveness through prolonged use.

Section 9(1)(c) – Marks Customary in Trade

Section 9(1)(c) disallows the registration of marks that have become customary in the trade.
Such marks lack distinctiveness because they are commonly used by multiple traders and fail
to indicate a specific source. Examples include terms like "Super," "Premium," or "Deluxe."

III. Judicial Interpretation of Distinctiveness

Indian courts have consistently emphasized the importance of distinctiveness in trademark

registration. Some landmark cases include:

Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd. (2004): The Supreme
Court held that distinctiveness is the cornerstone of trademark law. A mark that merely
describes the product or its qualities cannot be registered unless it has acquired secondary
meaning.

T.V. Venugopal v. Ushodaya Enterprises Ltd. (2011): In this case, the Supreme Court
examined the distinctiveness of the mark "Eenadu" (a Telugu word meaning "Today"). The
Court recognized that while the term was descriptive, it had acquired distinctiveness through
extensive use and consumer association.

Marico Ltd. v. Agro Tech Foods Ltd. (2010): The Delhi High Court refused to grant
protection to the term "Low Absorb" for edible oils, stating that it was descriptive and lacked
inherent distinctiveness. The court emphasized that such terms can only be protected if they
acquire secondary meaning.

IV. The Role of Acquired Distinctiveness

When a mark lacks inherent distinctiveness, it may still qualify for registration if it has
acquired distinctiveness through prolonged and exclusive use. The proviso to Section 9(1)
allows registration of such marks if the applicant can demonstrate that consumers associate
the mark exclusively with their goods or services.

Evidence to establish acquired distinctiveness may include:

• Long-standing use of the mark in commerce.

• Extensive advertising and promotion.

• Consumer surveys showing recognition of the mark.

• Sales figures and market share attributable to the mark.

V. Rationale Behind the Requirement of Distinctiveness

The requirement of distinctiveness serves several important purposes in trademark law:

• Prevention of Consumer Confusion: Distinctive marks help consumers identify the

source of goods or services, reducing the likelihood of confusion in the marketplace.

• Promotion of Fair Competition: Allowing non-distinctive marks to be registered would

unfairly restrict competitors from using common terms or descriptions.

• Encouragement of Innovation in Branding: The distinctiveness requirement

incentivizes businesses to create unique and imaginative marks that stand out in the
market.

VII. Exceptions and Defenses

While lack of distinctiveness is a common ground for rejecting trademark applications,

certain exceptions and defenses are available:

• Acquired Distinctiveness: As discussed, a mark that has acquired secondary meaning

can overcome objections under Section 9.

• Combination of Descriptive and Distinctive Elements: Marks that combine descriptive

terms with unique elements (e.g., logos or stylized fonts) may be eligible for registration.

Conclusion

The lack of distinctiveness is a critical ground for refusing trademark registration under the
Trademarks Act, 1999, particularly under Sections 9(1)(a), 9(1)(b), and 9(1)(c). The
requirement of distinctiveness ensures that trademarks serve their primary function of
distinguishing goods or services and identifying their source. While marks devoid of inherent
distinctiveness are ineligible for registration, the law provides flexibility by allowing such
marks to be registered if they acquire distinctiveness through use. Judicial precedents further
reinforce the importance of distinctiveness, highlighting its role in protecting consumers and
promoting fair competition in the marketplace.

2. Explain the procedure of registration of trademark under the Trademark Act of

1999. 10 (2)

Ans) The process of trademark registration is a fundamental legal procedure under the
Trademarks Act, 1999, which enables an individual, business, or entity to obtain exclusive
rights to a unique mark that distinguishes their goods or services. A trademark represents a
business’s identity, building goodwill and consumer recognition. Registration protects the
owner’s rights, aids in enforcing those rights, and ensures no one else can exploit the
registered mark inappropriately. The procedure is carefully structured to evaluate whether the
applied mark meets the statutory requirements, including distinctiveness, non-
descriptiveness, and the absence of deceptive or similar marks.
The trademark registration process under the Act involves multiple stages, governed by
specific provisions and detailed under various sections and rules.

I. Procedure for Registration of a Trademark

a. Filing the Application (Section 18)

The first step in the registration of a trademark is the filing of an application with the
Registrar of Trademarks. Any person claiming to be the proprietor of a trade mark used or
proposed to be used by him, may apply in writing to the Registrar in the prescribed manner
for the registration of his trade mark. The term "any person" is wide enough to include any
individual, company, or association of persons or body of individuals, society, HUF,
partnership firm, whether registered or not, Government, trust etc.

Single application for TM for different classes of goods and services [Section 18(2)]: A
single application may be made for registration of a trademark for different classes of goods
and services and the fee payable therefore shall be in respect of each such class of goods or
services.

The application can be filed electronically or manually, and must include:

• Details of the applicant (individual, partnership, company, etc.).

• The proposed trademark (word, device, logo, or combination).

• A description of the goods or services classified under the Nice Classification system
(45 categories).

• Date of first use, if the trademark is already in use.

• A properly signed affidavit of use, if claiming prior use.

• Fees for the application (as per Schedule of Fees under the Trademark Rules, 2017).

The application can also claim priority rights under the Paris Convention if the applicant
has filed for registration of the same trademark in any other convention country within six
months prior.

Where it is to be filled

Every application under sub-section (1) shall be filed in the office of the Trade Marks
Registry within whose territorial limits the principal place of business in India of the
applicant or in the case of joint applicants the principal place of business in India of the
applicant whose name is first mentioned in the application as having a place of business in
India, is situate:

Provided that where the applicant or any of the joint applicants does not carry on business in
India, the application shall be filed in the office of the Trade Marks Registry within whose
territorial limits the place mentioned in the address for service in India as disclosed in the
application, is situate.

b. Examination of the Application/ acceptance or refusal of application (Section 18)

After the application is filed, it undergoes an examination process conducted by the
Registrar of Trademarks. During this stage, the Registrar ensures that the application
complies with the provisions of the Trade Marks Act, 1999, and evaluates whether the
trademark can be registered.

The examination involves the following considerations:

a) Compliance with Statutory Requirements:

The Registrar examines whether the trademark complies with the formal filing
requirements (e.g., classification, description of goods/services, etc.).
b) Discretion of the Registrar (Section 18(4)):
Based on the findings of the examination, the Registrar has the discretion to:
o Accept the application unconditionally, if the trademark fulfills all statutory
requirements.
o Accept the application subject to conditions, such as requiring the applicant
to limit the scope of the goods/services or make modifications to the mark to
remove objections.
o Refuse the application outright, if the trademark does not comply with the
Act.

This discretion ensures a balanced approach by the Registrar in assessing trademarks

for registration.

c) Reasoned Decisions by the Registrar (Section 18(5)):

If the application is refused or accepted with conditions, the Registrar is required to:
o Record in writing the grounds for the decision.
o Provide the materials or evidence relied upon to arrive at the decision. This
ensures transparency in the process and allows the applicant to understand the
basis of the objections.
d) Response to Objections:
The Registrar communicates any objections raised during the examination. The
applicant must respond to these objections, either by:
o Filing an explanation, legal argument, or evidence to resolve the objections.
o Amending the application or modifying the trademark, as directed by the
Registrar.

Failure to respond to the examination report within the prescribed time frame leads to
the deemed abandonment of the application.

e) Opportunity for Hearing:

If the objections remain unresolved, the applicant may request a hearing before the
Registrar to present their case. The Registrar, after considering the submissions and
evidence, either accepts or rejects the application.

c. Advertisement in the Trademark Journal (Section 20)

According to section 20, when an application for registration of a trade mark has been
accepted whether absolutely or subject to conditions or limitations, the Registrar shall cause
the application to be advertised as accepted together with the conditions or limitations, if any,
subject to which it has been accepted.The purpose of publication is to allow third parties to
raise objections if they believe the registration of the mark would infringe their rights or
create confusion in the market.

Where an application has been advertised before acceptance or where after advertisement of
an application(i) an error in the application has been corrected; or (ii) the application has been
permitted to be amended under section 22, the Registrar may in such cases cause the
application to be advertised again or notify the correction or amendment made in the
application, where the error was corrected or application was amended.

The advertisement must contain:

1. The applied trademark.

2. The applicant’s details.

3. The goods or services associated with the trademark.

d. Opposition Proceedings (Section 21)

After publication, there is a four-month window during which any aggrieved party can file a
notice of opposition.

The opposition triggers a quasi-judicial process before the Registrar:

1. The opponent submits their evidence against the registration.

2. The applicant files a counterstatement and rebuttal evidence defending the mark.

3. The Registrar, after giving an opportunity of hearing to the applicant and his
opponent, is to decide whether registration is to be permitted absolutely or subject to
such conditions or limitations as he may deem fit to specify.

If no opposition is raised within four months, or if the opposition is resolved in favor of the
applicant, the registration proceeds.

Common grounds for opposition include:

• Similarity or identity with an already registered trademark.

• The applied mark being descriptive or non-distinctive.

• Deceptiveness, as the mark may confuse or mislead consumers.

In American Home Products Corpn. v. Mac Laboratories (P) Ltd., the Supreme Court
held that once an application for registration is made and accepted by the Registrar, the
Registrar has to cause the application to be advertised and within three months from the date
of the advertisement, any person may lodge with the Registrar a notice of opposition in
writing to the registration of such mark. A copy of such notice of opposition is to be served
upon the applicant. These provisions made in sections 20 and 21 of the 1958 Act (also 1999
Act) correspond to section 15 of the 1940 Act.

e. Grant of Registration (Section 23)

After resolving all objections and opposition, the trademark is registered, and the Certificate
of Registration is issued to the applicant. This grants the proprietor exclusive rights to use
the trademark concerning the goods or services listed in the application. The registration is
valid for 10 years from the filing date and can be renewed indefinitely in 10-year intervals
under Section 25.

Key Considerations in Registration

• Territorial Scope: A trademark registered in India provides protection only within India.
Separate applications must be filed in other jurisdictions.

• Well-Known Trademarks: Under Section 11(6), well-known marks, such as "Apple" or

"Google," are given broader protection, even without registration in specific classes.

• Certification Marks: Marks indicating compliance with certain standards, such as "ISI"
or "AGMARK," require additional documentation and approval.

II. Judicial Interpretation

Indian courts have frequently dealt with issues relating to trademark registration and
emphasized the importance of adhering to statutory requirements:

Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd. (2004): The Supreme
Court highlighted that descriptive marks are not registrable unless they have acquired
secondary meaning.

Yahoo Inc. v. Akash Arora (1999): The Delhi High Court stressed the significance of
distinctiveness and uniqueness in avoiding consumer confusion.

ITC Ltd. v. Britannia Industries Ltd. (2016): The court emphasized that similarity to
existing marks must be assessed on the likelihood of consumer confusion, not mere visual or
phonetic resemblance.

Conclusion

The procedure for trademark registration under the Trademarks Act, 1999, is designed to
ensure that only eligible marks—those capable of distinguishing goods or services—receive
protection. From filing to the grant of registration, the process incorporates stages for
examination, publication, opposition, and hearing, allowing a fair balance between protecting
proprietors' rights and safeguarding public interest. Thus, securing trademark registration not
only grants exclusivity but also strengthens the market identity of a proprietor’s brand.

3. Note on ‘deceptive similarity’ of trademarks. 6 or note on deceptively similar

trademarks. 6 (2)

Ans) Trademark law is fundamentally aimed at protecting the distinctive identity of brands,
goods, or services and preventing consumer confusion in the marketplace. A deceptively
similar trademark is a key legal concept that arises when two marks are so similar that they
are likely to cause confusion or deceive consumers regarding the source, origin, or
association of goods or services. It is an important ground for refusing trademark registration
as well as a basis for opposition, rectification, and infringement claims.
I. Statutory Definition under the Trade Marks Act, 1999

Under Section 2(1)(h), a trademark is considered to be deceptively similar to another if it

"so nearly resembles that other mark as to be likely to deceive or cause confusion." The
critical aspect here is the likelihood of confusion or deception in the minds of an average
consumer of the goods or services, based on a side-by-side comparison of the marks in
question.

The provision ensures that:

• Consumers are not misled into believing that there is a connection between two
unrelated entities.

• Legitimate trademark holders’ rights are protected, and their goodwill is not diluted or
misappropriated.

II. A Ground for Refusal

Deceptive similarity is addressed under Section 11 of the Trade Marks Act, 1999, as part of
the relative grounds for refusal of trademark registration. If a trademark is deceptively
similar to an existing registered mark, its registration can be refused due to the potential for
confusion.

Section 11(1) – Likelihood of Confusion

Section 11(1) provides that a trademark cannot be registered if:

• It is identical to or resembles an earlier trademark, and

• Its use in relation to the applicant’s goods or services is likely to cause confusion
among the public, including the likelihood of association with the earlier mark.

For example, if a new applicant attempts to register the mark "Appel" for electronic devices,
it is likely to be refused due to its deceptive similarity to the well-known mark "Apple".

Section 11(2) – Protection of Well-Known Trademarks

Deceptive similarity is also relevant in protecting well-known trademarks under Section

11(2). A mark that is deceptively similar to a well-known trademark, even in unrelated classes
of goods, may be refused registration. This ensures that the distinctiveness of well-known
marks is not diluted.

Section 11(3) – Marks Likely to Mislead

Section 11(3) bars the registration of trademarks that are likely to deceive the public or cause
confusion, particularly regarding the nature, quality, or geographic origin of goods or
services.

III. Case laws

The Supreme Court in Parle Products (P) Ltd. v. J.P. and Co., held that in come to the
conclusion whether one mark was deceptively similar order to to another, the broad and
essential features of the two were to be considered. They should not be placed side by side to
find out if there were any differences in the design and if so, whether they were of such
character as to prevent one design from being mistaken for the other. It would be enough if
the impugned mark bore such an overall similarity to the registered mark as would be likely
to mislead a person usually dealing with one to accept the other if offered to him.

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Supreme Court
emphasized factors for assessing deceptive similarity in pharmaceutical trademarks,
including:

• The nature of the goods and services.

• The class of consumers likely to use the products.

• The phonetic similarity between the marks.

• The likelihood of confusion even in cases of dissimilar products.

The Court emphasized that in medical products, public interest in avoiding confusion must
outweigh the commercial interest of the applicant.

Courts consider the visual resemblance, the sound of the words, and the overall structure
or appearance of the marks. For example, marks like "Pepsi" and "Pepci" would be
considered deceptively similar because of their phonetic similarity, even though their visual
representation may vary.

IV. Deceptively Similar Marks in Infringement Claims

The concept of deceptive similarity also arises in trademark infringement cases under
Section 29 of the Act. The courts consider: Whether the alleged infringing mark is so similar
to the registered trademark that it creates confusion or deception. The nature of goods or
services and their similarity. Whether the target consumers overlap and if confusion could
result.

V. Exceptions to Deceptive Similarity

While deceptive similarity is strictly enforced, there are scenarios where marks may coexist:

1. Honest Concurrent Use (Section 12):

Generally, identical or similar trademark cannot be registered. However, one
exception where identical or similar trademark can be registered is by using the
defence of honest concurrent use, provided under Section 12 of the Act. Section 12 is
an exception to this principle and provides that:

• where in the opinion of the Registrar, it is proper to do so in the case of honest

concurrent use or of other special circumstances;
• then he may permit the registration by more than one proprietor of trademarks that are
identical or similar (whether any such trademark is already registered or not) in
respect of the same or similar goods or services. However, such registration will be
subject to such conditions and limitations, if any, as the Registrar may think fit to
impose.
 In Goenka Institute of Education and Research v Anjani Kumar Goenka and Another
both the applicant and respondent had "Goenka" as a predominant part of their
trademarks: the complete marks were "Goenka Public School" and Goenka Public
School". Significantly, honest and concurrent use was established because of the
following facts: first, it was established that both using the word "Goenka" around the
same time, secondly, one institution was based in Delhi and the other in Rajasthan so
the appellant could not have known of the respondent's mark when he started using
the same and thirdly, the fact that Goenka forms part of the appellant's trust name, all
pointed to honest and concurrent adoption.

2. Acquiescence or Consent:
If the owner of an earlier trademark explicitly consents to the registration or use of a
deceptively similar mark, it may limit objections or claims.

Conclusion

Deceptively similar trademarks pose significant challenges to intellectual property law by

undermining consumer trust and jeopardizing the distinctiveness of established brands. The
Trade Marks Act, 1999, provides a robust legal framework to assess and prevent deceptive
similarity during trademark registration and in infringement cases.

4. Explain the grounds for refusal of registration of a trademark. 10 (3)

Ans) Introduc)on

The registration of a trademark under the Trademarks Act, 1999, confers exclusive rights to
its proprietor, providing protection against misuse and ensuring its distinctiveness in the
marketplace. However, not all trademarks are eligible for registration. To maintain the
integrity of the trademark system and prevent unjust monopolies, the Act outlines absolute
grounds for refusal under Section 9 and relative grounds for refusal under Section 11.

Absolute grounds focus on the intrinsic nature of the mark, while relative grounds concern
conflicts with existing rights or marks. These provisions ensure that trademarks serve their
primary purpose of distinguishing goods or services without creating confusion or infringing
upon prior rights.

Absolute Grounds for Refusal (Section 9)

Absolute grounds for refusal address the inherent characteristics of the trademark itself. If a
mark fails under these grounds, it cannot be registered regardless of other factors, including
prior use or ownership.

Section 9 of the Act mentions the following absolute grounds for refusal of registration:

(a) Trademarks which lack any distinctive character [Section 9(1)(a)];

(b) Trademarks consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin, etc.
[Section 9(1)(b)];
(c) Trademarks which consist exclusively of marks or indications which have become
customary in the current language or in the bona fide and established practices of the trade
[Section 9(1)(c)],

(d) it is of such nature as to deceive the public or cause confusion[Section 9(2) (a)];

(e) it contains or comprises any matter likely to hurt the religious susceptibilities of any class
or section of the citizens of India[Section 9(2) (b)];

(f) it comprises or contains scandalous or obscene matter [Section 9(2)(c)];

(g) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950 [Section 9(2)(d)]

(h) the shape of goods which results from the nature of the goods themselves [Section
9(3)(a)]; or

(i) the shape of goods which is necessary to obtain a technical result [Section 9(3)(b)]; or

(j) the shape which gives substantial value to the goods [Section 9(3)(c)].

1. Lack of Distinctive Character [Section 9(1)(a)]

A trademark must possess distinctiveness, enabling it to distinguish the goods or services of

one business from others. Marks that are generic, common, or incapable of creating a unique
association in the minds of consumers lack distinctive character and are refused registration.
Examples include:

• Words like "Fresh" or "Good Quality" for food items.

• Generic phrases like "Best Furniture" for furniture products.

2. Descriptive Marks [Section 9(1)(b)]

Marks that exclusively describe the kind, quality, quantity, intended purpose, value, or
geographical origin of goods or services are not registrable. For example:

• "Sweet Mangoes" for mangoes.

• "High Performance" for engines. The rationale is that such descriptions should remain
available for general use by all traders.

However, under the proviso to Section 9(1), a descriptive mark may be registered if it has
acquired distinctiveness through use. For instance, "Fair & Lovely" for cosmetics, initially
descriptive, gained secondary meaning through long-term and widespread use.

3. Customary Marks [Section 9(1)(c)]

Marks that have become customary in the current language or in the bona fide practices of
trade are not registrable. For instance:

• "Cotton" for textiles.

 • "Salt" for table salt.

These terms are used by multiple traders and cannot serve as unique identifiers for any single
business.

4. Deceptive or Confusing Marks [Section 9(2)(a)]

A trademark that is likely to deceive the public or cause confusion about the nature, quality,
or geographical origin of goods or services is refused registration. Examples include:

• A mark claiming geographical origin like "Swiss Chocolate" for chocolates not made
in Switzerland.

• Marks that resemble existing ones, misleading consumers into believing they are
related.

5. Marks Offensive to Religious Sentiments [Section 9(2)(b)]

Trademarks that hurt the religious susceptibilities of any class or section of Indian citizens are
refused registration. For example:

• Using religious deities or symbols on alcohol products. This provision ensures respect
for diverse cultural and religious sensitivities in India.

6. Scandalous or Obscene Marks [Section 9(2)(c)]

Marks containing scandalous, vulgar, or obscene matter are not registrable. For instance,
marks with explicit or offensive language or imagery are barred from registration.

7. Prohibited Marks [Section 9(2)(d)]

Trademarks that violate the Emblems and Names (Prevention of Improper Use) Act, 1950
are refused registration. This includes:

• National emblems like the Ashoka Chakra or Tricolor.

• Names of international organizations like WHO or UNESCO.

8. Shape of Goods [Section 9(3)]

A trademark comprising the shape of goods may be refused registration in the following
cases:

• Shape Resulting from the Nature of Goods [Section 9(3)(a)]: For instance, the
cylindrical shape of a pencil cannot be trademarked as it results from its functionality.

• Shape Necessary for a Technical Result [Section 9(3)(b)]: Shapes that serve a
purely functional purpose, such as the shape of a blade for efficient cutting, are not
registrable.

• Shape Giving Substantial Value to Goods [Section 9(3)(c)]: If a shape contributes

significantly to the aesthetic or commercial value of the goods, such as a jewelry
design, it may be refused.
II. Relative Grounds for Refusal (Section 11)

Relative grounds for refusal address potential conflicts between the applied-for trademark
and existing trademarks or rights. Unlike absolute grounds, these depend on the existence of
prior marks or rights.

Important relative grounds for refusal or registration are:

(a) When the applied mark is identical or similar to an earlier mark and there exists a
likelihood of confusion on the part of the public [Section 11(1)];

(b) when the trademark would take unfair advantage of or be detrimental to the distinctive
character or repute of the earlier the well known trademark [Section 11(2), 11(5), 11(6),
11(7), 11(8), 11(9), 11(10)(11)];

(c) Where registration is prevented by the law of Passing off or Law of Copyright[Section
11(3)(5)];

(d) where the proprietor of the earlier trademarks or other earlier right does not consent to the
registration[Section 11(4)];

1. Likelihood of Confusion with an Earlier Mark [Section 11(1)]

A trademark is refused registration if it is identical or deceptively similar to an earlier mark

for the same or similar goods or services, creating a likelihood of confusion among
consumers. The test for confusion considers:

• Visual, phonetic, and conceptual similarities.

• The nature of the goods or services.

For example, "PEPSI Cola" would likely be refused due to similarity with "PEPSI."

2. Well-Known Trademarks [Section 11(2)]

Marks identical or similar to well-known trademarks are refused registration, even for
dissimilar goods or services. This protects the reputation of well-known marks from dilution.
For instance:

• Using "Nike" for unrelated goods like electronics would be refused due to its global
recognition.

3. Conflict with Prior Rights [Section 11(3)]

A trademark is refused if its registration would infringe upon prior rights under:

• The common law principle of passing off.

• The law of copyright, if the mark copies a copyrighted work.

For example, registering a logo resembling a copyrighted artistic work would be refused.

4. Lack of Consent from the Proprietor of Earlier Marks [Section 11(4)]

If the proprietor of an earlier trademark does not consent to the registration of a similar or
identical mark, the application may be refused. This ensures that existing trademark owners
can protect their rights against potential infringement.

Case law

In Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. (2003): The Supreme Court
emphasized that distinctiveness is critical for trademark registration. Descriptive or generic
marks fail this test unless they acquire secondary meaning.

In Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd. (2004): The Court
held that marks must not mislead consumers. A deceptive or confusing mark cannot be
registered.

In Tata Sons Ltd. v. Manoj Dodia (2011): The Delhi High Court highlighted the broad
protection afforded to well-known trademarks, even against dissimilar goods or services.

Conclusion

The Trademarks Act, 1999, provides a comprehensive framework for evaluating trademark
applications, ensuring that only marks meeting statutory requirements are granted protection.
Absolute grounds for refusal under Section 9 focus on the inherent characteristics of the
mark, disqualifying those that lack distinctiveness, are deceptive, or offend public
sensibilities. Relative grounds for refusal under Section 11 address conflicts with pre-
existing rights, prioritizing consumer protection and the rights of trademark owners.

5. Explain the salient features of Trade Mark Act of 1999. 10 (3)

Ans) The Trade Marks Act, 1999, is the primary legislation governing trademarks in India. It
outlines the rules for registering, protecting, and enforcing trademarks, aiming to protect
intellectual property and promote fair competition.

Salient features of the Trademarks Act, 1999

The TMA 1999 was enacted to make Indian Trademark law in tune with the TRIPS, 1996. It
repealed the TMA, 1958 and brought various changes in Indian law.

Salient features of the Trademarks Act, 1999 are:

(a) Definition of trademark widended: The definition of Trademarks has been enlarged, to
bring the law in conformity with the current trend all over the world. The definition of the
trademark under section 2(1)(zb) is an inclusive definition having meaning and an inclusive
part.

(b) Service Trademark and its registration: A service mark is a new concept inserted in the
TMA 1999. It was obligatory for India to provide a facility for the protection of trademarks in
respect of services as it is a member of the Paris Convention and the TRIPS agreement. The
reference to Service trademark is there in the preamble and Section 2(1)(z) of the Trademarks
Act, 1999. The rules governing the service marks are fundamentally the same as any other
trademarks.
(d) Requirement for Registrability of trademarks simplified: For registrability, the mark
will have to be capable of distinguishing the goods or services of the applicant from those of
the others. Any mark that is revealed to be distinctive in fact by usability will eligible for
registration under the law.

(e) Well-known trademark more protected: The Act of 1999 inserted a definition of the
expression "well-known trademark" in section 2(1)(zg) to enhance the protection to such
well-known trademarks. The law prevents registration of the trademark, which are imitations
of well-known marks, by enlarging the grounds for absolute and relative refusal of
registration under Sections 9 and 11 of the Act. The proprietor of well-known mark can
prevent the use of the identical or similar trademark in connection with goods or services,
though not similar to those for which the mark is registered, where such use is without due
cause, would take unfair advantage of or to be detrimental to the distinctive character or
reputation of the well-known trademark.

(f) Period of renewal of trademark increased: Under the Trademarks Act, 1999, the
registration is for 10 years and so the renewal of registration is also provided accordingly.
Earlier, under the Act of 1958, trademark registration was required to be renewed after 7
years.

(g) Classification in conformity with International Classification: The new law has
adopted the international classification of goods and services for purpose of registration of
marks. Significantly, under the new law the Registrar has duty to publish an alphabetical
index of classification of goods and services to give such index statutory recognition.

(h) Single application for registration of goods or services in different classes: Under the
earlier law, there were 34 classes of goods, and an application to register a trademark must be
in respect of goods falling only one class. Under the new Act, the applicant can file a single
application for registration of the same mark in respect of goods or services falling in more
than one class. Now goods and services are classified into 45 classes. Therefore, under the
new Act registration of the same mark in several classes by means of a single application is
permitted. However, the separate fee will be payable will be in respect of each class of goods
or service.

(i) Defensive registration system in TM Act, 1958 abolished: the system of defensive
registration was there under the 1958 Act. A defensive trademark could be applied for by a
trademark owner of a well-known trademark for goods or services that are not intended to be
used by that owner.

(j) Definition of permitted users widened: The definition of the permitted user has been
widened up to cover both registered user and unregistered common law licensee, who is
entitled to use the mark by virtue of the licence agreement with the registered proprietor. The
procedure for registration of registered users has been greatly simplified to encourage and
facilitate such registration. Under the 1958 Act, the authority to register licensing agreements
was with the Central Government" and now it is transferred from "Central Government" to
the Registrar of Trademarks.

(k) "Trafficking in Trademarks" abolished: "Trafficking in Trademarks", which existed in

the old law has been deleted. The trafficking in a trademark included the act of getting a
trademark registered without any intention to use it in relation to any goods but to gain
monetary benefit by its sale. It mainly covered "uncontrolled licensing" or "dealing in the
trademark as a commodity by itself". Now it has become irrelevant as under the New law
there are provisions regarding the assignment of a trademark with or without the transfer of
the goodwill of the business or part of the business to which the trademark relates and are
mentioned in sections 38 and 39 of the new Act.

(l) Assignment of unregistered trademarks: Under the old law, an unregistered trademark
was not assignable or transmissible without the goodwill of the business concerned, except
in certain specified circumstances. This has been abolished. Under the new law, there are
provisions to assign an unregistered trademark with or without the goodwill of the business
concerned.

(m) Registration of Collective marks: "collective mark" is a mark of a group or association

of persons, which can be used by the members of the group or association of persons. The
new Act has provisions for registration of Collective marks that would serve to distinguish
characteristic features of the products or services offered by those enterprises.

(n) Removal of mark on the ground of non-use: Like old law, the new Act has provision
for removal of the trademark from the register on the ground of nonuse for five years.

(o) Appeals from Registrar lie to High Court: Under the old law Appeals from orders or
decisions of Registrar lied to the High Court having the jurisdiction as defined under the old
Act. Under the new law, it lies before the Intellectual Property Appellate Board. By The
Tribunal Reforms Act 2021, the Intellectual Property High Court (IPAB) was repealed
resulting into old position, i.e., Appeals from orders or decisions of Registrar shall lie to the
High Court having the jurisdiction in that case.

(p) Scope of infringement of trademarks widened: The enlarged grounds for refusal of
registration on "relative grounds" are mentioned under Section 11 of the New Act.
Accordingly, the scope of the law relating to the infringement of trademarks has been
enlarged to cover the cases where the infringing use is likely to confuse or is likely to be
taken to have an association with a registered trademark. Further, the law provides that the
use of an identical or similar mark on goods or services which are not similar will constitute
infringement, where the registered trademark has a reputation in India and the use without
due cause will take unfair advantage or features of or is detrimental to the distinctive
character or repute of the registered mark.

(q) Jurisdiction of the District Court for the institution of infringement suit: Like old
law, under new law also Suit for infringement is to be filed before a court not inferior to that
of a District Court. But a significant change in the new law is that the term "District Court
having jurisdiction" is used instead District Court. This new expression District Court having
jurisdiction will include a district court within the local limits of whose jurisdiction, the
plaintiff actually or voluntarily resides or carries on business or personally works for gain
whereas under the old law jurisdiction of the District Court includes jurisdiction where the
defendant actually or voluntarily resides or carries on business or personally works for gain.

(r) Enhanced punishment for trademark offenses: To provide deterrent punishment to

discourage the sale of spurious goods, penalty for applying a false trademark, trade
description, etc., and for selling goods or providing services to which false trademark or false
trade description is applied, has been enhanced. Also, the distinction between offences in
relation to "drugs" or "food", on the one hand, and other categories of goods, on the other has
been removed.
(s) Enhanced punishment for second or subsequent trademark offence: The new law also
provides for enhanced punishment on second and subsequent convictions. The offences are
explicitly declared as "cognizable and non bailable".

(u) International non-proprietary names not registrable: section 13 of the new Act
provides that International non-proprietary names declared by the World Health Organization
and notified by the Registrar or which is/are deceptively similar to such names will not be
registrable. Under the old law, there was no such provision, and the central Government used
to issue directions to the Registrar in this behalf.

(v) Other features: Apart from the main changes introduced in the Trademarks Act, 1999,
the other changes are:

(i) E-Register: The registrar is empowered to maintain the register and other records
wholly or partly in computer floppies, diskettes, or in any other electronic form
(Section 6).

(ii) Associated Trademarks: Associated Trademark is a new concept under the New
Act. The trademark is registered as an associated trademark in cases where two marks
registered under the same class are identical or so nearly resemble each other as to be
likely to deceive or cause confusion if used by a person other than the proprietor in
respect of the same goods or description of goods or services.

(iii) Relative grounds for Refusal of Registration: The new law provides for absolute
and relative grounds for refusal of trademark registration, as mentioned in sections 9
and 11.

6. Note on certification marks. 6 (2)

Ans) Under the Trade Marks Act, 1999, a certification mark is a unique type of trademark
that is used to certify the characteristics of certain goods or services, such as quality, origin,
material, mode of manufacture, performance, or other specific standards. Unlike regular
trademarks, which identify the source or origin of goods or services, certification marks are
meant to assure consumers of a product's compliance with prescribed standards. This gives
consumers confidence in their purchasing decisions, especially when dealing with specialized
goods or services where quality is crucial.

I. Definition and Nature of Certification Marks

Section 2(1)(e) of the Trade Marks Act, 1999, defines a certification mark as a mark “capable
of distinguishing the goods or services in connection with which it is used in the course of
trade and which is certified by the proprietor of the mark in respect of origin, material, mode
of manufacture of goods, quality, accuracy, or other characteristics”. The purpose of
certification marks is thus to indicate compliance with a recognized standard rather than
identifying the producer of the goods or services.

The distinctive feature of certification marks is that they are not used by the proprietor of the
mark. Instead, they are granted for use by other entities that meet the certified criteria. The
proprietor acts as a certifying body, ensuring that the standards associated with the mark are
upheld.
II. Examples of Certification Marks

Certification marks play an essential role in various industries. Some prominent examples in
India include:

• ISI (Indian Standards Institute): A certification mark used for industrial products
certifying quality compliance with Indian standards.

• AGMARK: Used for agricultural products certifying quality and safety under the
Agricultural Produce (Grading and Marking) Act, 1937.

• FSSAI Logo: A certification indicating compliance with food safety standards.

• Woolmark: Certifies the purity of wool in textile products.

These marks provide assurances to consumers and ensure that sellers adhere to legally
defined standards.

III. Application for Certification Marks (Section 18 and Rule 135)

The registration of certification marks involves a distinct procedure as laid out in the Act and
the Trade Marks Rules, 2017. An application for a certification mark can only be made with
the Registrar of Trademarks and must fulfill the following:

• The application must clearly indicate that the mark is a certification mark.

• A detailed statement of case must accompany the application, describing the

conditions under which the certification is granted and how it ensures compliance
with specific standards.

• Rule 135 mandates that the application include a draft regulation, which specifies:

o The persons authorized to use the certification mark.

o The characteristics and standards to be certified.

o The process for evaluating compliance.

o Provisions to prevent misuse of the mark.

Examination and Advertisement

Certification mark applications are subject to examination under Section 18(4) to ensure that
the mark complies with the statutory requirements and does not fall under absolute grounds
for refusal (Section 9) or relative grounds for refusal (Section 11).

If the Registrar is satisfied, the mark is published in the Trademark Journal to allow public
objections. Any person opposing the certification mark must file a notice of opposition under
Section 21.

IV. Control Over Certification Marks (Section 74 and Section 75)

Under Section 74, certification marks can only be registered if the Registrar is satisfied that
the applicant intends to certify goods or services according to defined standards. The
applicant must prove their competency to perform the role of a certifying authority.

Section 75 elaborates on restrictions and conditions for registering certification marks. The
Registrar ensures that the applicant’s proposed standards for certification:

1. Promote uniformity across the industry or sector.

2. Do not mislead consumers or grant unfair advantages to specific traders.

3. Serve public welfare and market efficiency.

V. Purpose and Importance of Certification Marks

Certification marks serve several essential functions in trade, industry, and consumer
protection:

• Quality Assurance: Certification marks assure buyers that goods or services meet certain
minimum standards. For instance, the ISI mark on electrical appliances guarantees safety
compliance.

• Promoting Fair Competition: By enforcing uniform standards, certification marks help

prevent fraudulent claims and ensure level competition among producers.

• Facilitating Consumer Choice: Consumers rely on certification marks for informed

decisions, particularly in technical fields where quality is paramount but difficult to judge
visually.

• Ensuring Public Safety and Welfare: Certification marks help prevent substandard
products from entering the market, safeguarding public health and safety.

Case Law

In National Dairy Development Board v. Registrar of Trade Marks, The Gujarat High
Court underscored that certification marks must strictly adhere to the standards established by
the certifying body. Failure to uphold such standards could lead to the rectification of the
mark.

Conclusion

Certification marks, governed by the Trade Marks Act, 1999, play an indispensable role in
modern commerce by certifying and assuring product standards. Unlike ordinary trademarks,
they are not indicators of origin but guarantees of quality, safety, or other characteristics.
Sections 74 to 78 provide a clear legal framework to ensure that certification marks serve
public welfare, maintain uniform standards, and prevent market abuse

7. Note on effects of registration of trademark. 6

Ans) Trademark registration under the Trade Marks Act, 1999 plays a pivotal role in
conferring legal rights and protections to the proprietor of a trademark. Once a trademark is
registered, it grants statutory exclusivity and enables the proprietor to prevent unauthorized
use or imitation of the mark, thereby ensuring brand recognition, goodwill, and consumer
trust. The registration of a trademark not only provides enforceable rights but also creates a
legally recognized identity for goods or services.

Legal Effects of Trademark Registration

a. Exclusive Rights Conferred (Section 28)

One of the primary effects of registration is the conferral of exclusive rights upon the
registered proprietor of the trademark. Section 28(1) provides that the proprietor of a
registered trademark acquires:

1. The right to use the trademark in relation to the goods or services for which it is
registered.

2. The right to seek legal remedies against any person who uses an identical or
deceptively similar mark in the course of trade, thereby infringing the registered mark.

The exclusivity extends to preventing others from using the trademark or similar marks likely
to deceive or confuse consumers.

However, the exclusive rights are subject to limitations:

• They are limited to the specific class of goods or services for which the trademark is
registered.

• These rights do not affect prior and valid claims of use or ownership by others.

b. Trademark as Evidence of Ownership (Section 31)

Under Section 31, registration of a trademark serves as prima facie evidence of its validity
and ownership. In legal proceedings, the fact of registration creates a presumption that:

1. The trademark is valid.

2. The registered proprietor has exclusive rights to the trademark.

This statutory presumption shifts the burden of proof onto the party challenging the validity
of the trademark, offering a significant procedural advantage to the registered proprietor.

c. Remedies Against Infringement (Section 29)

Registration enables the proprietor to seek legal remedies for trademark infringement,
which is provided for under Section 29. Infringement occurs when:

1. An identical or deceptively similar mark is used without the authorization of the

registered proprietor.

2. Such use is likely to cause confusion or deception among the public, leading to the
misidentification of goods or services.

Legal Remedies for Infringement Include:

 • Injunctions: To restrain the infringing party from further use.
• Damages or Account of Profits: To compensate for losses or recover profits gained by
the infringing party.
• Delivery-Up of Infringing Goods: For the destruction or disposal of counterfeit
products.

d. Creation of Distinct Identity and Goodwill

The registration of a trademark creates a distinct identity for the associated goods or services,
facilitating brand recognition and building consumer trust. A registered trademark becomes a
valuable asset for the business, contributing to its goodwill and market reputation. Over time,
trademarks such as "TATA" and "AMUL" have come to symbolize quality and reliability due
to their distinctiveness and registered protection.

e. Protection Against Unfair Competition and Passing Off

While unregistered trademarks may be protected through common law action for passing off,
registration significantly enhances the legal protection available to the proprietor. Under the
common law doctrine of passing off, the proprietor must prove:

1. The trademark has acquired a distinct reputation.

2. The defendant’s use of a similar mark is likely to deceive consumers.

By contrast, registration simplifies enforcement by eliminating the need to prove reputation,

as the rights are statutorily conferred.

II. Commercial Advantages of Registration

a. Assignment and Licensing (Sections 37–45)

The registered trademark becomes a transferrable asset under Section 37. Registration
facilitates the:

• Assignment of trademark ownership to another entity.

• Licensing of the trademark for use by third parties, enabling businesses to monetize
their trademarks.

The registered status enhances the trademark’s value in mergers, acquisitions, and franchise
agreements, making it a significant commercial asset.

b. Use as a Defensive Trademark

Registered trademarks are protected even in unrelated classes where confusion is likely to
arise, especially in cases of well-known trademarks under Section 11(6). For instance,
"Google" is protected across different categories due to its well-known status.

c. International Recognition Through Treaties

For trademarks registered in India under the Trade Marks Act, 1999, international protection
may be sought under treaties like the Madrid Protocol. Indian businesses can use
registration in India as a basis for extending their trademark rights to other jurisdictions,
enhancing their global presence.

Case law

In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories: The

Supreme Court differentiated between infringement and passing off, stating that registration
grants statutory remedies for infringement irrespective of reputation or prior use.

Conclusion

The effects of trademark registration under the Trade Marks Act, 1999, go beyond conferring
exclusive rights; they provide a robust legal and commercial framework for protecting,
monetizing, and enforcing trademark rights. Provisions like Sections 28, 29, 31, and others
ensure that the registered proprietor enjoys statutory presumptions of validity, remedies
against infringement, and substantial commercial benefits.

8. Examine the powers and function of registrar of trademarks. 10

Ans) The Registrar of Trademarks holds a pivotal position under the Trademarks Act,
1999, overseeing the administration of trademark law in India. Entrusted with both quasi-
judicial and administrative responsibilities, the Registrar plays a crucial role in implementing
the Act's objectives, which include facilitating trademark registration, ensuring protection of
intellectual property rights, and resolving disputes. The powers and functions of the Registrar
are derived from the provisions of the Act, especially Sections 3 to 7 and other relevant
sections that deal with procedural and substantive aspects of trademark law.

The Registrar functions under the overall supervision of the Controller General of Patents,
Designs, and Trademarks, a statutory authority established to administer intellectual
property rights in India. The office of the Registrar acts as the custodian of the Trademark
Register and is responsible for maintaining its integrity and accuracy.

Powers of the Registrar

The powers conferred upon the Registrar of Trademarks under the Trademarks Act, 1999, are
both discretionary and mandatory in nature. These powers ensure that the Registrar can
effectively regulate the registration and protection of trademarks while balancing the rights of
applicants, existing trademark owners, and the public.

1. Power to Register Trademarks (Section 18):

The Registrar has the authority to grant or refuse trademark registration after examining the
application. The decision is based on the compliance of the application with the substantive
and procedural requirements of the Act. The Registrar ensures that:

• The trademark meets the eligibility criteria under Sections 9 (absolute grounds) and
Section 11 (relative grounds).

• The applicant has fulfilled all procedural requirements, such as filing the application
in the prescribed manner and payment of fees.

2. Power to Hear and Decide Opposition Proceedings (Sections 21 and 22):

The Registrar adjudicates trademark opposition proceedings. When a trademark application is
opposed by a third party under Section 21, the Registrar has the power to:

• Hear both the applicant and the opposing party.

• Examine evidence and submissions.

• Deliver a reasoned decision either allowing or rejecting the registration of the

trademark.

Under Section 22, the Registrar can also address errors in trademark applications, permitting
amendments to correct bona fide mistakes or clarify ambiguities.

3. Power to Maintain the Register of Trademarks (Section 6):

The Registrar is responsible for maintaining the Register of Trademarks, a public record
that contains details of all registered trademarks. This register is critical for transparency and
includes:

• Names and addresses of trademark owners.

• Description of the trademarks.

• Classes of goods and services for which the trademarks are registered.

• Conditions or limitations on the use of the trademarks.

The Registrar also has the authority to rectify entries in the register under Section 57 to
remove errors or to reflect the current status of trademarks.

4. Power to Grant Well-Known Trademark Status (Section 11(6)–11(8)):

The Registrar is empowered to recognize a trademark as a well-known trademark based on

factors such as its reputation, extent of use, and recognition among the public. Once granted
this status, the trademark enjoys broader protection, even against dissimilar goods or services.

5. Power to Cancel or Remove Trademarks (Sections 47 and 57):

Under Section 47, the Registrar can cancel or remove a trademark from the register on
grounds of non-use or if the registration was obtained without intent to use. Similarly, under
Section 57, the Registrar has the authority to rectify the register by removing invalid or
improperly registered trademarks.

6. Power to Accept, Amend, or Reject Applications (Sections 19 and 22):

The Registrar has the discretion to accept or reject a trademark application after examination
under Section 19. If the application is rejected, the Registrar must provide reasons for the
decision. Under Section 22, the Registrar may allow amendments to applications, provided
they do not substantially alter the identity of the trademark.

7. Power to Conduct Hearings:

The Registrar has quasi-judicial powers to conduct hearings in various matters, including:
 • Opposition proceedings under Section 21.

• Rectification of the register under Section 57.

• Appeals against decisions on registration or refusal.

8. Power to Delegate (Section 3(2)):

The Registrar may delegate certain powers and functions to subordinate officers to ensure
efficient functioning of the Trademark Office. However, this delegation is subject to the
Registrar's overall supervision.

9. Power to Enforce Compliance:

The Registrar ensures that trademark applicants comply with procedural requirements such as
filing the statement of use, renewal fees, and responses to objections or oppositions.

Functions of the Registrar

The functions of the Registrar are designed to facilitate the effective administration of
trademark law. These include administrative, quasi-judicial, and record-keeping
responsibilities:

1. Administration of Trademark Applications:

The Registrar oversees the filing, examination, publication, and registration of trademark
applications. This involves ensuring that applications are complete, comply with statutory
requirements, and do not infringe upon existing rights.

2. Maintenance of the Register of Trademarks:

The Registrar ensures that the Register of Trademarks remains accurate and up to date. The
register serves as a public record and provides evidence of trademark ownership, facilitating
transparency in trademark transactions.

3. Publication in the Trademark Journal (Section 20):

The Registrar publishes accepted trademark applications in the Trademark Journal,

allowing third parties to oppose the registration if necessary. This publication ensures public
awareness and provides an opportunity for objections.

4. Adjudication of Disputes:

As a quasi-judicial authority, the Registrar resolves disputes related to:

• Opposition to trademark registration.

• Rectification of the register.

• Determining the validity of trademarks. The Registrar’s decisions are reasoned and
subject to appeal before the Intellectual Property Appellate Board (now the High
Court).
5. Renewal and Expiry of Trademarks (Sections 25 and 47):

The Registrar monitors the renewal of trademarks, ensuring that trademarks remain on the
register only if the renewal fees are paid within the prescribed time. Non-renewal results in
the removal of the trademark from the register.

6. Facilitating Licensing and Assignment of Trademarks (Sections 48–49):

The Registrar records assignments, transmissions, and licensing agreements related to

trademarks. This ensures that trademark rights are properly transferred or licensed while
maintaining legal clarity.

7. Promoting Awareness and Guidance:

The Registrar plays an important role in promoting awareness of trademark rights among
businesses and the public. The office also provides guidance to applicants on the procedural
aspects of trademark registration.

Judicial Interpretation of the Registrar’s Powers

In Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. (2003): The Supreme Court
emphasized that the Registrar’s quasi-judicial powers must be exercised in a manner
consistent with natural justice and the principles of fairness.

In Whirlpool Co. v. Registrar of Trademarks (1998): The court highlighted that the
Registrar must examine trademarks rigorously to ensure they meet distinctiveness
requirements, avoiding confusion in the marketplace.

In Shanthi Junior v. Registrar of Trademarks (2004): The Madras High Court observed
that the Registrar’s decisions regarding oppositions and rectifications must be supported by
evidence and reasoned findings.

Conclusion

The Registrar of Trademarks plays a multifaceted role under the Trademarks Act, 1999,
combining administrative, quasi-judicial, and supervisory functions to ensure the smooth
operation of trademark law in India. Armed with wide-ranging powers to register, refuse,
rectify, or cancel trademarks, the Registrar safeguards the interests of trademark owners,
businesses, and the public. By maintaining the integrity of the Register of Trademarks and
resolving disputes with fairness, the Registrar ensures that trademarks continue to serve as
reliable indicators of origin, fostering trust and competition in the marketplace. This pivotal
role underscores the importance of the Registrar in the effective enforcement and
administration of trademark rights.

9. Note on domain name. 6 (2) or Note on Internet domain names. 6 (2)

Ans) A domain name is a unique alphanumeric address used to identify a specific location on
the internet. It acts as a user-friendly substitute for complex numeric IP (Internet Protocol)
addresses, allowing individuals, businesses, and organizations to establish a recognizable
online presence. While domain names have technical functions related to internet navigation,
they have acquired significant commercial and intellectual property value over time due to
their role in online branding and e-commerce.
In the legal context, particularly under Indian intellectual property law, domain names are
increasingly treated as assets that resemble trademarks. Courts and tribunals have addressed
disputes concerning domain names in the context of passing off, trademark infringement, and
cybersquatting, even though domain names themselves are not explicitly governed by the
Trade Marks Act, 1999.

I. Nature of Domain Names and Legal Recognition

Domain names are often regarded as internet "trademarks" because they serve the function of
identifying businesses and distinguishing them from competitors in the online marketplace.
They play a vital role in branding and goodwill, especially in e-commerce and the digital
economy.

Though domain names are not traditionally protected under trademark statutes like the Trade
Marks Act, they are recognized as intellectual property because:

1. They represent brand identity, just as trademarks do in the physical marketplace.

2. They may acquire goodwill and reputation due to usage and consumer recognition,
enabling their proprietors to protect them under the common law doctrine of passing
off.

II. Trademark-Related Aspects of Domain Names

Under Indian law, trademarks are protected under the Trade Marks Act, 1999. While domain
names are not explicitly included in the Act, many legal principles concerning trademark
protection have been applied to domain names. The courts have held that a domain name,
when it functions as a trademark, deserves protection if it fulfills the following criteria:

1. It is distinctive and capable of identifying the goods or services associated with the
name.

2. It has acquired goodwill and reputation through use, particularly in e-commerce.

3. Its unauthorized use or appropriation by third parties is likely to deceive or cause

confusion among internet users.

One of the landmark cases that recognized the similarity between trademarks and domain
names was the Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) decision, where
the Supreme Court of India held that domain names are not merely addresses but symbols of
goodwill that warrant protection akin to trademarks.

III. Legal Remedies for Domain Name Disputes

Indian courts and arbitration mechanisms have addressed disputes arising from the improper
use or registration of domain names, including cases of cybersquatting (i.e., registering a
domain name with the intent to profit from someone else's trademark or goodwill).

a. Protection Under the Doctrine of Passing Off

Even though domain names may not be explicitly registered as trademarks, they can be
protected under the common law action of passing off, which safeguards goodwill and
prevents misrepresentation. In a passing-off action involving domain names, the plaintiff
must prove:

1. Goodwill in the domain name.

2. Misrepresentation by the defendant, such as registering a deceptively similar domain

name.

3. Likelihood of Confusion among consumers, leading to damages to the plaintiff’s

goodwill.

In Yahoo Inc. v. Akash Arora (1999), the Delhi High Court was faced with a passing-off
action in which "Yahoo!" sought protection against the unauthorized use of the domain
"Yahooindia.com." The court recognized that domain names function as trademarks on the
internet and granted relief to the plaintiff, highlighting the likelihood of confusion caused by
the deceptive similarity.

b. UDRP and INDRP Mechanisms

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) provides an international

framework for resolving domain name disputes, particularly disputes involving generic Top-
Level Domains (gTLDs) like .com, .org, or .net. The policy is administered by organizations
like the World Intellectual Property Organization (WIPO).

In India, the .in Registry, which manages India-specific domain names (such as
www.example.in), operates under the Indian Domain Name Dispute Resolution Policy
(INDRP). The INDRP provides a mechanism for resolving disputes concerning .in domain
names and ensures that domain names are not misused for unfair commercial gain or
cybersquatting.

IV. Cybersquatting and Domain Name Piracy

Cybersquatting refers to the bad-faith registration of domain names that are identical or
confusingly similar to trademarks, with the intent of selling them at a profit to legitimate
trademark owners or exploiting their goodwill. Such activities often lead to disputes under the
UDRP or INDRP mechanisms, or through legal actions for passing off and injunctions.

Examples of cybersquatting may include:

1. Registering a famous brand's domain name, such as "microsoftindia.com," and

offering to sell it to Microsoft.

2. Misleadingly using a domain name similar to an established trademark to attract web

traffic.

Legal actions and dispute-resolution mechanisms in such cases focus on determining

whether:

1. The domain name is identical or confusingly similar to a pre-existing trademark.

2. The registrant has no legitimate interest in the domain name.

 3. The registration or use of the domain name is in bad faith.

For instance, in Tata Sons Ltd. v. Manu Kosuri and Others (2001), the court dealt with
cybersquatting involving "tatapowerco.com" and emphasized the need to protect trademarks
in the digital domain.

Case Law

In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004): The Supreme Court
recognized domain names as more than mere addresses for internet communication. The
court held that domain names represent a company's goodwill in the digital space and deserve
protection equivalent to trademarks.

In Rediff Communication Ltd. v. Cyberbooth (2000): The Bombay High Court held that
the domain name "Rediff", although not registered as a trademark, had acquired
distinctiveness due to usage. Unauthorized registration of a similar domain was treated as
passing off.

In Yahoo Inc. v. Akash Arora (1999): This case established that the principles of trademark
law apply equally to domain names, recognizing the likelihood of confusion in the digital
marketplace.

In MakeMyTrip (India) Private Limited v Pravasi Guide Private Limited & Ors. The
online travel company, MakeMyTrip, filed a suit before the Delhi High Court requesting a
permanent trademark injunction to restrain Pravasi Guide from using the deceptively similar
mark 'MakeMyPravaas' and the domain www.makemypravaas.com concerning online travel.
The Court upon hearing the submissions of the parties opined that Pravasi Guide has no real
prospect in defending the claim and there is a clear case of infringement of MakeMyTrip's
reputation and goodwill. The Court, therefore, passed an ex-parte permanent injunction in
favour of MakeMyTrip restraining Pravasi Guide from using the deceptively similar mark
and the domain.

Significance of Domain Name Protection

• Prevention of Consumer Confusion: Protecting domain names as intellectual property

ensures that consumers are not misled by identical or deceptively similar domain names.

• Enhancing Goodwill and Reputation: Registered domain names serve as virtual assets
and help build trust and recognition for businesses operating online.

• Curbing Unfair Competition: Domain name protection deters cybersquatters and unfair
competitors from exploiting established brands.

• Legal Recourse for Proprietors: Indian and international legal frameworks ensure that
proprietors have adequate remedies for domain name disputes.

Conclusion

Domain names, while primarily technical tools for internet navigation, have evolved into
critical assets with significant commercial and intellectual property value. Although they are
not explicitly addressed under the Trade Marks Act, 1999, the principles of trademark
protection, particularly passing off, are applied to domain name disputes. Additionally,
mechanisms like INDRP and UDRP address challenges specific to cybersquatting and misuse
of domain names. Judicial precedents like Satyam Infoway v. Sifynet Solutions have further
clarified that domain names act as "internet trademarks," underscoring the need for robust
legal protection in the digital era. As the internet continues to dominate global commerce,
domain name protection remains an essential aspect of intellectual property law.

10. What are the essential features of a trademark? Enumerate the trademarks that are
registerable and not registerable. 10

Ans) A trademark is a legal identifier that distinguishes the goods or services of one entity
from those of another. It acts as a representation of a brand's identity, providing assurance of
quality and creating goodwill in the market. Under the Trade Marks Act, 1999, a trademark is
defined under Section 2(1)(zb) as “a mark capable of being represented graphically and
capable of distinguishing the goods or services of one person from those of others, including
the shape of goods, their packaging, and a combination of colors.”

The legal and commercial value of a trademark depends on its compliance with certain
essential features and its ability to function as a source identifier. The Act explicitly mentions
criteria for trademarks that are registerable under Sections 9 and 11, and those that are non-
registerable due to absolute or relative grounds for refusal.

I. Essential Features of a Trademark

For a mark to qualify as a valid trademark, it must possess certain essential features outlined
in the Trade Marks Act, 1999, and further elaborated in judicial interpretations. These
features ensure that the trademark fulfills its purpose of distinguishing goods and protecting
consumer interest.

a. Distinctiveness

The most critical feature of a trademark is its ability to distinguish the goods or services of
one trader from those of others. Distinctiveness can either be inherent or acquired:

• Inherent Distinctiveness: Some marks are unique and instantly identifiable, such as
invented or arbitrary words (e.g., "Google" for search engines or "Kodak" for
cameras).

• Acquired Distinctiveness: Descriptive or generic marks can acquire distinctiveness

through prolonged, consistent use and recognition in the market. For example, "Bata,"
which initially referred to the founder's name, has become synonymous with footwear
through extensive usage.

Under Section 9(1)(a), a mark that lacks distinctiveness and cannot distinguish the
goods/services of one trader from another is not registerable.

b. Graphical Representation

As per Section 2(1)(zb), a trademark must be capable of graphical representation. This

requirement ensures the mark can be recorded in the Trademark Registry and visually
inspected to determine its eligibility and distinguishability.
Marks such as logos, shapes, word marks, and symbols satisfy this requirement. However,
trademarks like sounds (e.g., the Intel jingle) or smells must also be translated into graphical
formats to meet this criterion.

c. Source Identification

A trademark must function as a badge of origin, enabling consumers to associate it with a

particular producer or service provider. This ability to indicate the source of goods/services
ensures consumer confidence in product quality and authenticity.

For instance, the "Nike Swoosh" logo immediately indicates the origin of the goods as being
from Nike.

d. Non-Deceptive and Non-Scandalous Nature

Under Section 9(2), a trademark must not:

• Deceive consumers regarding the nature, quality, or origin of the goods or services.

For example, "Swiss Chocolates" for a product manufactured outside Switzerland would
be considered deceptive.

• Be scandalous, obscene, or contrary to public morality, such as marks promoting violence

or offensive themes.

• Be against public policy or lead to harmful practices.

Marks that violate these principles are non-registerable to maintain social ethics and
consumer trust.

e. Capable of Use in Trade

A trademark must be used or intended to be used in the course of trade, as specified under
Section 2(1)(zb). Trademarks associated with idle entities or marks that are purely
ornamental cannot qualify for registration. The intention to use a mark commercially is
pivotal to its registration. For example, the iconic Coca-Cola script functions as more than
just a logo; it serves as a mark used actively in commerce, distinguishing Coca-Cola
beverages from competing products.

The Supreme Court stated in Laxmikant V. Patel v. Chetanbhat Shah, There are three
essentials of trade marks: (i) it should be a mark; (ii) it should capable of being represented
graphically; and (iii) it should be capable of distinguish the goods or services of one person
from those of others

II. Trademarks That Are Registerable

The registrability of a trademark depends on its compliance with statutory conditions and the
absence of grounds for refusal outlined in the Trade Marks Act. Trademarks that fulfill the
essential criteria are generally eligible for registration under Sections 9 and 11 of the Act.

a. Inherently Distinctive Marks

Under Section 9(1)(a), trademarks with inherent distinctiveness are registerable, as they
serve the primary function of distinguishing goods/services without requiring further proof.
Such trademarks may include:

• Fanciful Marks: Invented words with no direct association with the product (e.g.,
"Kodak").

• Arbitrary Marks: Common words unrelated to the goods/services they represent

(e.g., "Apple" for electronics).

• Suggestive Marks: Words suggesting but not directly describing the product (e.g.,
"Netflix").

b. Trademarks Not Falling Under Absolute Grounds for Refusal (Section 9)

Marks that do not violate the provisions of Section 9, including:

• Non-descriptive marks that do not directly indicate the quality, nature, or origin of
goods/services.

• Marks that do not consist exclusively of commonly used or customary terms in trade.

c. Non-Descriptive Marks

Marks that do not directly describe the nature, quality, or purpose of the goods/services are
generally eligible for registration under Section 9(1)(b).

For example, "Puma" for sportswear does not describe the product but serves as a unique
identifier.

d. Acquired Distinctiveness

Trademarks that initially lack distinctiveness (such as descriptive marks) may acquire
registration if they have achieved secondary meaning in the market through substantial
usage, as recognized under the proviso to Section 9(1).

For example, "Fair & Lovely," a descriptive term for fairness cream, gained distinctiveness
and registration due to consistent use over decades.

e. Non-Similarity to Existing Trademarks

Under Section 11, trademarks that do not cause confusion due to similarity to existing marks
are registerable. For example, "Zara Electronics" (registered in an unrelated class) will not
infringe upon "Zara" for clothing.

f. Well-Known Trademarks

Trademarks with global recognition can seek protection under Section 11(6), even in classes
unrelated to their original registration. For instance, "Google" or "Mercedes-Benz" enjoys
broader protection as well-known trademarks.

g. Certification and Collective Marks

Certification marks (e.g., “AGMARK,” indicating agricultural product quality) under Section
2(1)(e) and collective marks (indicating membership in an organization) under Section 61 are
also registerable.

Trademarks That Are Not Registerable

Certain types of marks are prohibited from registration under the absolute and relative
grounds for refusal in Sections 9 and 11.

a. Lack of Distinctiveness

As per Section 9(1)(a), trademarks devoid of distinctiveness or incapable of distinguishing

one trader’s goods/services from another are not registerable. For instance, "Fresh" for fruits
lacks distinctiveness and fails to indicate the origin of goods.

b. Descriptive Marks

Descriptive marks, as per Section 9(1)(b), cannot be registered if they only describe the
goods' quality, origin, or intended purpose. Examples include "Low Fat" for dietary products
or "Cold" for refrigerators. However, exceptions apply if the mark has acquired
distinctiveness through consistent usage.

c. Marks Customary in Trade

Under Section 9(1)(c), marks that are customary or generic in the trade are not registerable.
Examples include "Luxury" for cars or "Premium" for coffee, which fail to distinguish one
product from another.

b. Marks Deceptive or Contrary to Public Interest

Section 9(2) disallows the registration of marks that:

• Mislead the public regarding the nature, origin, or quality of goods/services (e.g.,
"Kashmiri Wool" for synthetic clothing).

• Are scandalous, immoral, or offensive.

• Promote illegal or harmful practices.

d. Similarity to Existing Trademarks

Section 11(1) prohibits trademarks that are identical or deceptively similar to previously
registered trademarks if such similarity is likely to confuse consumers. For example, "Luxor"
for cosmetics may conflict with an existing mark "Luxe."

Case Laws

In Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd. (2004): The court
emphasized the need for distinctiveness, holding that descriptive marks cannot be registered
unless they acquire secondary meaning.
In Yahoo! Inc. v. Akash Arora (1999): This case involved a trademark dispute over domain
names. The court held that deceptively similar marks lead to confusion and are non-
registerable under Indian law.

In Bata India Ltd. v. Pyare Lal & Co. (1985): The court dealt with the issue of deceptive
similarity and held that registration is barred where confusion in trade is likely to arise.

Conclusion

The Trade Marks Act, 1999 ensures a balance between granting trademark protection and
maintaining public interest by specifying the essential features of a trademark and
categorizing marks as registerable or non-registerable. While distinctive marks capable of
distinguishing goods/services and representing the proprietor’s goodwill are eligible for
registration, generic, deceptive, offensive, or misleading marks are barred under Sections 9
and 11.

11. What is passing off action? How it is different from infringement. 10 or examine the
difference between infringement and passing off. 6

Ans) The doctrines of passing off and infringement are pivotal aspects of intellectual
property law that protect the interests of trademark proprietors and consumers. While both
concepts are intended to safeguard against the misuse or misappropriation of trademarks, they
are fundamentally different in their legal foundations and applications. A passing off action
protects unregistered trademarks, relying on common law principles to prevent one trader
from misrepresenting their goods or services as those of another. In contrast, an infringement
action is a statutory remedy available to registered trademark proprietors under the Trade
Marks Act, 1999.

Passing Off

Passing off is a common law remedy designed to protect the goodwill associated with a
trademark, trade name, or trade dress. It prevents traders from misrepresenting their goods or
services as those of another, thereby protecting the business reputation of the original
proprietor and ensuring that consumers are not misled.

Key Elements of Passing Off

To establish a claim of passing off, the plaintiff must prove the "Classic Trinity" Test, as
laid down in the seminal case of Reckitt & Colman Products Ltd. v. Borden Inc. (1990)
(commonly referred to as the "Jif Lemon" case) and reaffirmed in Indian jurisprudence. These
three elements are:

i. Goodwill or Reputation: The plaintiff must establish that their goods or services
enjoy a substantial reputation and goodwill in the marketplace. Goodwill represents
the attractive force that brings in business, linking consumers to the proprietor.

ii. Misrepresentation by the Defendant: The defendant must have engaged in a

misrepresentation, intentionally or unintentionally, that leads consumers to believe
their goods or services originate from the plaintiff. This includes adopting a similar
name, packaging, logo, or trade dress.
 iii. Likelihood of Confusion and Damage: The misrepresentation must cause or be
likely to cause confusion among consumers, leading to potential or actual harm to the
plaintiff’s goodwill or business.

Passing off is particularly relevant in cases where unregistered trademarks have acquired a
reputation in the market.

In Cadila Health Care Ltd. v. Cadila Pharmaceutical Limited, the Supreme Court laid
down certain tests for ascertaining passing off. The Court observed that in an action for
passing off on the basis of unregistered trade mark generally for deciding the question of
deceptively similarity the following factors were to be considered:

(i) The nature of the marks i.e., whether the marks were word marks or label marks or
composite marks i.e., both words and label marks.

(ii) The degree of resemblance between the marks, phonetically similar and hence similar in
idea.

(iii) The nature of the goods in respect of which they were used as trade marks.

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

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

(vi) The mode of purchasing the goods or placing orders for the goods.

(vii) Any other surrounding circumstances which might be relevant in the extent of
dissimilarity between the competing marks

Statutory and Judicial Recognition of Passing Off in India

Although passing off is a common law remedy, it is recognized under Section 27(2) of the
Trade Marks Act, 1999, which explicitly states that nothing in the Act shall affect the rights
of action for passing off. This provision ensures that businesses can seek protection for
unregistered trademarks.

The statutory recognition of passing off is further strengthened by Section 134(1)(c), which
allows proprietors to initiate passing off actions in cases of false representation.

Landmark Case:
In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001), the Supreme Court laid
down guidelines for determining deceptive similarity in passing off actions. The Court
emphasized the likelihood of confusion among consumers as the decisive factor and called
for stricter scrutiny in industries like pharmaceuticals, where confusion could harm public
health.

Trademark Infringement

Infringement, unlike passing off, is a statutory remedy available only for registered
trademarks under the Trade Marks Act, 1999. When a registered trademark is used without
authorization in a manner likely to cause confusion, the proprietor can initiate an
infringement action under Section 29 of the Act.

Trademark infringement involves the unauthorized use of a mark that is identical or

deceptively similar to the registered mark concerning goods or services in the same class.
Unlike passing off, which requires proof of reputation and goodwill, an infringement claim
hinges on the legal registration of the trademark.

Essential Ingredients of Infringement

• The plaintiff must have a validly registered trademark under the Trade Marks Act,
1999.

• The defendant must have used a mark that is identical or deceptively similar to the
registered trademark.

• The unauthorized use must be in the course of trade, and it should relate to goods or
services in the same category.

• The defendant’s actions must cause or be likely to cause confusion or deception

among consumers.

Statutory Provisions and Remedies:

Under Section 135 of the Act, remedies for infringement include:

• Injunctions to stop the unauthorized use.

• Damages or an account of profits.

• Seizure and destruction of infringing goods.

Differences Between Passing Off and Infringement

In Durga Dutt v. Navaratna Laboratories, the Supreme Court held: While an action for
passing off is a Common Law remedy being in substance an action for deceit, that is, a
passing off by a person of his own goods as those of another, that is not the gist of an action
for infringement. The action for infringement is a statutory remedy conferred on the
registered proprietor of a registered trade mark for the vindication of the exclusive right to the
use of the trade mark in relation to those goods.... The use by the defendant of the trade mark
of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case
of an action for infringement.
Conclusion

Passing off and infringement are essential legal remedies protecting trademarks, goodwill,
and consumer trust. While passing off is a common law remedy that safeguards unregistered
marks based on reputation and misrepresentation, infringement is a statutory remedy
available to registered proprietors. The former emphasizes goodwill and the likelihood of
deception, while the latter focuses on the statutory right arising from registration. Both
doctrines play a complementary role in creating a robust trademark protection framework,
ensuring that intellectual property rights are upheld both in commerce and in consumer
markets. By balancing statutory provisions and common law principles, trademark law
fosters fair competition, encourages innovation, and prevents commercial exploitation.

REMEDIES FOR INFRINGEMENT OF TRADE MARKS OR FOR PASSING OFF

(Extra)

SUIT TO BE INSTITUTED BEFORE DISTRICT COURT section 134

No suit (i) for the infringement of a registered trade mark; or (ii) relating to any right in a
registered trade mark; or (iii) for passing off arising out of the use by the defendant of any
trade mark which is identical with or deceptively similar to the plaintiff's trade mark whether
registered or unregistered, is to be instituted in any court inferior to a District Court having
jurisdiction to try the suit.

REMEDIES FOR INFRINGEMENT OF TRADE MARKS OR FOR PASSING OFF

Section 135 provides that in any suit for infringement or passing off, the court may grant
relief including injunction and at the option of the plaintiff, either damages or an account of
profits, together with or without any order for the delivery-up of the infringing labels and
marks for destruction or erasure.

a) Injunction

Injunction is a relief in equity and is based on equitable principles. It is a preventive relief.

The purpose of grant of injunction is not to penalize the defendant. It is to protect the interest
of the plaintiff to the extent it is justified. The court would have to consider the extent of
restraint to which the defendants should be subjected to in future to safeguard the plaintiff's
rights and interest and to prevent the infringement of the trade mark and passing off of the
goods and products of the defendant as that of the plaintiff.

At the same time, the court would also address the defences raised by the defendants, such as
delay and laches, acquiescence on the part of the plaintiff; bona fide and concurrent user of
the mark by the defendant; and the injury and loss that would be caused to the defendant in
the event of grant of a complete injunction, and other relevant considerations.

Injunction may be of two kinds: temporary injunction/interim injunction and permanent

injunction. Temporary injunctions are such as to continue until a specified time, or until the
further order of the court. They may be granted at any stage of a suit, and are regulated by the
Code of Civil Procedure, 1908 (CPC). Permanent injunctions can only be granted by the
decree made at the hearing and upon merits of the suit and thereby, defendant in the suit is
perpetually enjoined from assertion of a right or from commission of an act, which would be
contrary to the rights of the plaintiffs.

Ex parte injunction or any interlocutory order

According to section 135(2) of the Trade Marks Act, 1999, the order for injunction may
include an ex parte injunction or any interlocutory order for any of the following matters,
namely:

(i) for discovery of documents;

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

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

b) Damages and account of profits

The relief of damages and account of profits are alternative and not cumulative. The court
shall not grant relief by way of damages (other than nominal damages) or account of profits
in the following cases:

(i) where in a suit for infringement of a trade mark, the infringement complained of is
in relation to a certification trade mark or collective mark; or

(ii) where in a suit for infringement the defendant satisfies the court (i) that at the time
he commenced to use the trade mark complained of in the suit, he was unaware and
had no reasonable ground for believing that the trade mark of the plaintiff was on the
register or that the plaintiff was a registered user using by way of permitted use; and
(ii) that when he became aware of the existence and nature of the plaintiff's right in
the trade mark, he forthwith ceased to use the trade mark in relation to goods or
services in respect of which it was registered; or

(iii) where in a suit for passing off, the defendant satisfies the court (i) that at the time
he commenced to use the trade mark complained of in the suit he was unaware and
had no reasonable ground for believing that the trade mark of the plaintiff was in use;
and (ii) that when he became aware of the existence and nature of the plaintiff's trade
mark he forthwith ceased to use the trade mark complained of.

c) Delivery of material containing mark, etc.

The court is empowered to direct the infringer to deliver up all printed material bearing the
mark/name of the plaintiff, including name boards, stationery, invoices, business cards,
goods, dyes, blocks, cartons, labels, packaging boxes, plastic covers etc. to the plaintiff for
the purpose of their destruction.

In Tata Sons Ltd. v. Amit Mahna, the Delhi High Court directed the defendants to destroy
the goods (pressure cookers) and packaging material or any other printed material bearing the
trade mark TATA.

12. Examine the essential features of a trademark and the different types of trademarks.
10 or explain kind of trademark. 10

Ans) A trademark is a sign, symbol, word, or combination thereof used to distinguish the
goods or services of one business from those of others. Under the Trademarks Act, 1999, a
trademark serves as an identifier of the origin of goods or services, ensuring that consumers
associate specific qualities with a particular source. The legal protection of trademarks
incentivizes businesses to maintain quality and develop their brands, while also safeguarding
consumers from confusion or deception.

Section 2(1)(zb) of the Act defines a trademark as a mark capable of being represented
graphically and capable of distinguishing the goods or services of one person from those of
others. This definition emphasizes two essential features: distinctiveness and graphical
representation, which are critical for registration and protection under Indian trademark law.
Furthermore, trademarks can exist in various forms, reflecting the diverse ways in which
businesses can identify their offerings.

I. Essential Features of a Trademark

To qualify as a trademark under the Trademarks Act, 1999, certain essential features must
be present:

a. A Mark as Defined in Section 2(1)(m):

The term "mark" under Section 2(1)(m) includes a wide range of elements such as words,
letters, numerals, devices, shapes of goods, packaging, and even combinations of colors. This
broad definition ensures that businesses have the flexibility to use creative identifiers.

b. Distinctiveness:

Distinctiveness is the ability of a trademark to distinguish the goods or services of one

business from those of others. A trademark must not be generic or descriptive without
acquiring secondary meaning. Section 9 of the Act outlines absolute grounds for refusal of
registration, stating that a mark devoid of distinctive character or consisting exclusively of
descriptive terms cannot be registered unless it has acquired distinctiveness through use.

c. Graphical Representation:

As per Section 2(1)(zb), a trademark must be capable of being represented graphically,

meaning it must be visually perceptible. This requirement ensures that trademarks can be
entered in the register and are accessible to examiners, the public, and courts.

d. Capable of Identifying Source:

A trademark must enable consumers to identify the origin of goods or services. It acts as a
"badge of origin," fostering brand recognition and loyalty.

e. Non-Deceptive and Not Contrary to Public Order or Morality:

Under Section 9(2), a trademark must not deceive the public, cause confusion, or offend
public morals. For example, marks containing false claims about the quality of goods or
services may be refused registration.

f. Exclusivity and Monopolistic Rights:

A registered trademark confers exclusive rights to its owner under Section 28 of the Act. This
includes the right to use the trademark and to prevent unauthorized use by others.
g. Compliance with Legal and Procedural Requirements:

The application for a trademark must meet the procedural and legal requirements outlined in
Sections 18 to 26, including a clear description of the mark and its intended use.

The Supreme Court stated in Laxmikant V. Patel v. Chetanbhat Shah, There are three
essentials of trade marks: (i) it should be a mark; (ii) it should capable of being represented
graphically; and (iii) it should be capable of distinguish the goods or services of one person
from those of others

II. Types of Trademarks

Section 2(1)(m) defines mark to include 'a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or combination of colours or any
combination thereof. The definition of mark is an inclusive definition. It may also include
other things which may fall within the general and plain meaning of the definition.

Trademarks can be classified into traditional and non-traditional marks, based on their nature
and representation. These categories highlight the diverse ways businesses use trademarks to
create brand identity.

A. Traditional Marks

Traditional marks are the most commonly used forms of trademarks, encompassing textual,
visual, and graphical identifiers. These marks are highly versatile and can exist independently
or as a combination of multiple elements. They are typically visual and textual identifiers,
including:

1. Device Marks

A device mark refers to any pictorial representation, including logos, symbols, or images used
to identify a product or service. Examples include the Nike swoosh or Apple’s bitten apple
symbol. Device marks are often registered based on their visual distinctiveness.

2. Brand Marks

Brand marks include symbols or identifiers branded onto goods. For example, the "Monkey
Brand" fabric uses the monkey image as a distinguishing feature. These marks often rely on
long-standing use to establish recognition.

3. Heading Marks

Headings consist of inscriptions or titles that identify products or services. While their
specific application is less clear, headings often serve as identifiers in contexts like
publications or signage.

4. Label Marks

A label mark refers to a composite mark printed on paper, including logos, text, and devices.
It is often pasted or attached to goods or their containers. Examples include the intricate
labels used on wine bottles or packaged food items.
5. Ticket Marks

Tickets are physical tags or stitched elements containing the trademark, typically attached to
goods. For instance, clothing brands often use fabric tags with their logos stitched onto
garments.

6. Name Marks

Name marks include the names of individuals, firms, companies, or their abbreviations.
Examples include "Tata" or "Reliance." Name marks also extend to domain names used as
online identifiers.

7. Signature Marks

A signature mark includes the unique signature of an individual, often the proprietor of the
business. For example, a famous artist or designer may use their signature as a brand
identifier.

8. Word, Letter, and Numeral Marks

Word, letter, and numeral marks consist of any combination of these elements. Examples
include "IBM," "BMW," or "5G." Such combinations often acquire distinctiveness through
extensive use and recognition.

9. Shape of Goods

Under the Trademarks Act, 1999, the shape of goods can be registered as a trademark if it is
distinctive and not functional. For example, the Coca-Cola bottle’s unique contour shape is a
registered shape mark.

10. Packaging Marks

Packaging marks protect the design of containers, boxes, or wrappers. For instance,
Toblerone's triangular packaging is a registered trademark. The definition of packaging under
trademark law is broad, covering various forms of containers.

11. Combination of Colors

Color combinations, such as the purple packaging of Cadbury chocolates, can qualify as
trademarks if they acquire distinctiveness. Single colors or shades can also be registered in
exceptional cases, provided they have gained secondary meaning.

13. Define mark. Explain essentials of trademark. 10

Ans) Sectoion 2(m) “mark” includes a device, brand, heading, label, ticket, name, signature,
word, letter, numeral, shape of goods, packaging or combination of colours or any
combination thereof;

essentials of trademark see above questions

The Supreme Court stated in Laxmikant V. Patel v. Chetanbhat Shah, There are three
essentials of trade marks: (i) it should be a mark; (ii) it should capable of being represented
graphically; and (iii) it should be capable of distinguish the goods or services of one person
from those of others

B. Non-Traditional Marks (Modern Marks)

Non-traditional marks represent innovative branding methods that go beyond traditional

visual or textual identifiers. These marks are recognized under specific legal conditions:

1. Sound Marks

Sound marks consist of distinctive audio elements associated with a brand. The first
registered sound mark in India was the "Yahoo yodel" in 2009. Such marks must be
represented graphically, often through musical notation or digital recordings.

2. Smell Marks

Smell marks protect unique scents associated with goods. However, they are challenging to
register due to the difficulty of graphically representing a smell. Successful registrations
include a Dutch company's tennis balls with the scent of freshly mown grass.

3. Taste Marks

Taste marks protect specific tastes associated with goods. Similar to smell marks, graphical
representation is a significant challenge. Written descriptions and evidence of distinctiveness
are required for registration.

4. Motion Marks

Motion marks involve animated logos or sequences used in branding. These are often
registered using a series of still images depicting the motion, such as Google’s dynamic logo
changes.

5. Hologram Marks

Holograms are three-dimensional, multi-view images used as trademarks. Applications must

include representations of each view in the hologram to meet graphical representation
requirements.

6. Gestural Marks

Gestures or physical movements, such as the specific hand gestures used in certain
advertisements, can qualify as trademarks if they meet distinctiveness criteria.

7. Three-Dimensional Marks

3D marks include shapes or configurations of goods or their packaging that are distinctive.
The Nestlé Contrex water bottle and Toblerone packaging are notable examples.

8. Color Per Se Marks

Single colors or shades used as a branding element can be protected. However, they must
acquire distinctiveness through use, as in the case of Cadbury’s purple or Tiffany & Co.’s
robin egg blue.

C. Special Types of Marks Under Indian Trademark Law

1. Certification Marks (Section 2(1)(e))

Certification marks indicate that goods or services meet specific standards of quality,
material, or origin. For example, the ISI mark signifies compliance with Indian safety
standards.

2. Collective Marks (Section 2(1)(g))

Collective marks distinguish the goods or services of members of an association, such as the
CA mark used by the Institute of Chartered Accountants of India.

3. Well-Known Trademarks (Section 2(1)(zg))

Well-known trademarks are those widely recognized by the public, even without registration
in some cases. Examples include Apple, Google, and Coca-Cola.

Judicial Interpretation of Trademark Categories

Indian courts have played a significant role in defining and protecting various types of
trademarks:

• Christian Louboutin SAS v. Pawan Kumar (2018): The Delhi High Court granted
protection to the distinctive red soles of Christian Louboutin shoes, recognizing it as a
non-traditional color trademark.

• Yahoo Inc. Sound Mark Registration (2009): The first sound mark registered in India
demonstrated the growing acceptance of non-traditional marks under Indian law.

• Coca-Cola Company v. Bisleri International Pvt. Ltd. (2009): This case emphasized
the importance of brand identity and the protection of well-known trademarks in
international markets.

Conclusion

The Trademarks Act, 1999, offers a comprehensive framework for the recognition and
protection of both traditional and non-traditional marks. From simple word and logo marks to
innovative forms like sound, smell, and motion marks, the law ensures that businesses can
create unique brand identities in an increasingly competitive market.

14. Define trademark. Explain functions of trademark. 10

Ans) A trademark is a crucial element of modern commerce, serving as an identifier of the

origin of goods or services and a symbol of quality and trust. Under the Trademarks Act,
1999, a trademark not only protects the interests of businesses but also serves consumers by
preventing confusion and deception. The importance of trademarks lies in their ability to
distinguish goods or services in a competitive market while fostering brand loyalty.
I. Definition of Trademark

Section 2(1)(zb) of the Trademarks Act, 1999, defines a trademark as a mark that is capable
of being represented graphically and of distinguishing the goods or services of one person
from those of others. This broad definition encompasses traditional trademarks like words,
logos, and numerals, as well as non-traditional marks such as shapes, sounds, and colors. A
registered trademark grants exclusive rights to its proprietor, enabling them to use the mark
and prevent unauthorized use.

II. Functions of a Trademark

Trademarks play a vital role in commerce and the economy, benefiting both businesses and
consumers. The functions of a trademark are broadly categorized into commercial, legal,
and social functions, which are essential for fostering a robust and competitive marketplace.

a. Identifying the Source or Origin of Goods or Services

One of the primary functions of a trademark is to act as a badge of origin. It identifies the
source of goods or services, enabling consumers to associate them with a specific business or
individual. For example, when consumers see the "Nike swoosh," they immediately associate
it with Nike, a globally recognized brand. This function fosters trust and credibility in the
marketplace.

b. Distinguishing Goods or Services

A trademark distinguishes the goods or services of one business from those of others. This
function is particularly critical in competitive markets where similar products are offered by
multiple sellers. By ensuring distinctiveness, trademarks prevent confusion among consumers
and enable them to make informed purchasing decisions.

Section 2(1)(zb) emphasizes the importance of distinctiveness in defining a trademark, as it

forms the basis for its registrability and protection under the law.

c. Guaranteeing Quality

A trademark serves as a symbol of quality assurance. Consumers often rely on trademarks to

identify products that meet specific quality standards or satisfy their preferences. For
instance, the use of the ISI mark on electrical goods in India assures consumers of
compliance with safety standards. This function encourages businesses to maintain consistent
quality and fosters consumer loyalty.

d. Advertising and Branding

Trademarks play a significant role in branding and advertising. They help businesses
establish a unique identity in the market and differentiate their offerings from competitors.
For instance, Coca-Cola’s distinctive logo and packaging are integral to its global brand
recognition. Trademarks serve as a tool for brand recall, influencing consumer purchasing
behavior and reinforcing brand value.

e. Preventing Unfair Competition

A trademark provides legal protection against unauthorized use, ensuring that businesses can
capitalize on their brand reputation without interference. This protection discourages unfair
trade practices, such as passing off or counterfeiting, and ensures a level playing field for
businesses.

f. Facilitating Consumer Choice

Trademarks simplify decision-making for consumers by allowing them to identify and choose
products that align with their preferences. For example, a consumer who prefers Samsung
products can easily recognize them by the trademarked logo, even in a crowded marketplace.

g. Legal Protection of Intellectual Property

A trademark serves as a form of intellectual property, granting the proprietor exclusive rights
under Section 28 of the Act. These rights include the ability to use the trademark, license it to
others, and seek remedies against infringement. This function encourages innovation and
investment in branding.

h. Promoting Economic Development

By fostering brand identity and protecting intellectual property, trademarks contribute to

economic growth. They encourage businesses to invest in product development, marketing,
and quality improvement, ultimately enhancing competitiveness in both domestic and
international markets.

III. Judicial Recognition of the Functions of Trademarks

Indian courts have highlighted the functions of trademarks in various landmark cases:

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001): The Supreme Court
emphasized the role of trademarks in preventing consumer confusion and ensuring
distinctiveness, especially in the pharmaceutical industry where confusion could have serious
consequences.

T.V. Venugopal v. Ushodaya Enterprises Ltd. (2011): The Court acknowledged that
trademarks play a critical role in building goodwill and reputation for businesses, acting as a
significant asset in commerce.

Conclusion

Trademarks are an essential component of modern commerce, serving multiple functions that
benefit businesses and consumers alike. As defined under Section 2(1)(zb) of the
Trademarks Act, 1999, trademarks act as identifiers of origin, distinguish goods or services,
guarantee quality, and facilitate consumer choice. Their role in branding and advertising
fosters economic growth and innovation while ensuring fair competition and consumer
protection. The functions of trademarks, reinforced by judicial interpretations, underline their
significance in a competitive and globalized marketplace.

15. Defenses available to the defendant against infringement of trademark. 6

Ans) Introduc)on
Trademark infringement occurs when an unauthorized party uses a registered trademark or a
deceptively similar mark in a manner likely to cause confusion, deception, or mistake among
consumers. Under the Trademarks Act, 1999, the proprietor of a trademark can file an
infringement suit under Section 29, which enumerates various acts constituting infringement.
However, the defendant in such cases is not without recourse and may rely on several
statutory and equitable defenses to contest the claims.

The Act, along with established legal principles, provides robust defenses to ensure that the
enforcement of trademark rights does not unfairly impede lawful trade practices, free speech,
or public interest. Key defenses include those explicitly mentioned in the Act, such as under
Section 30, and general defenses available under common law principles.

I. Statutory Defenses Against Trademark Infringement

The Trademarks Act, 1999, outlines specific statutory defenses available to the defendant,
which primarily address the scope and limitations of the proprietor’s rights.

a. Use of the Mark Not as a Trademark (Section 30(1))

Section 30(1) permits the use of a registered trademark if it is not used as a trademark but for
purposes such as identifying the goods or services. For example:

• If a party uses the mark descriptively to indicate the kind, quality, or intended purpose
of the goods, it does not constitute infringement.

• A pharmacist describing "Crocin" to identify paracetamol as a type of medication

would fall under this exception.

The defense ensures that trademark rights do not unjustly prevent descriptive or nominative
use in legitimate business practices.

b. Use of the Mark in Accordance with Honest Practices (Section 30(2)(a))

Under Section 30(2)(a), a defendant can claim that their use of the trademark is in
accordance with honest commercial practices and is not intended to take unfair advantage of
or harm the reputation of the registered trademark. This defense applies when:

• The use is necessary to describe or identify goods or services.

• The use does not mislead consumers or dilute the distinctiveness of the registered
mark.

For instance, using "Rolex" to compare a generic watch with a luxury watch may be
permissible if done transparently.

c. Descriptive Use (Section 30(2)(b))

Section 30(2)(b) provides a defense for the descriptive use of a trademark, where the mark is
used to describe characteristics of goods or services, such as their kind, quality, quantity, or
geographical origin. For example:
 • Describing oranges as "Nagpur Oranges" or textiles as "Kashmir Silk" is lawful,
provided it is done in good faith.

This ensures that commonly used descriptive terms remain accessible to all traders.

d. Use of the Mark for Indicating Purpose (Section 30(2)(c))

Section 30(2)(c) allows the use of a trademark to indicate the intended purpose of a product
or service, particularly in relation to spare parts, accessories, or compatible goods. For
example:

• Using "Samsung" to describe a phone cover compatible with Samsung phones.

This exception prevents monopolization of terms necessary for fair trade.

e. Comparative Advertising (Section 30(1) and Section 30(2)(d))

The Act permits comparative advertising, where a defendant may use a registered trademark
to compare their goods or services with those of the trademark owner. However, this is
allowed only if:

• The comparison is honest and does not disparage or misrepresent the goods or
services of the trademark owner.

• It highlights the advantages of the defendant’s product without misleading consumers.

An example would be an advertisement comparing two detergents to demonstrate cleaning

efficiency.

f. Trademark Not Used in the Course of Trade (Section 30(1))

A defendant may argue that the alleged infringing use does not constitute "use in the course
of trade." For instance:

• Use of a trademark in private communications, academic discussions, or research

contexts may not qualify as infringement.

II. Other Defenses Recognized in Trademark Law

Apart from statutory defenses, the defendant can also rely on common law and equitable
principles to contest infringement claims.

a. Lack of Likelihood of Confusion

One of the primary elements of trademark infringement under Section 29 is the likelihood of
confusion. A defendant can argue that:

• The marks in question are not visually, phonetically, or conceptually similar enough to
cause confusion.

• The goods or services are unrelated, and consumers are unlikely to associate the
defendant’s goods with the trademark owner.
b. Invalidity of the Plaintiff’s Trademark

A defendant may challenge the validity of the trademark itself. If the plaintiff’s trademark is
generic, descriptive, or not distinctive, the defendant can argue that it should not have been
registered under Section 9. For example:

• A trademark that exclusively describes the nature of goods, such as "Best Bread" for a
bakery, may be invalid.

c. Honest Concurrent Use

Under Section 12, a defendant may rely on the defense of honest concurrent use if they can
demonstrate that:

• They have been using the mark in good faith for a significant period.

• Their use predates the plaintiff’s registration or is geographically distinct, minimizing

the likelihood of confusion.

d. Acquiescence or Delay in Enforcement

The defendant can claim that the plaintiff acquiesced to the use of the mark or delayed
initiating legal action, leading to an implied waiver of rights. For instance:

• If a trademark owner knowingly allowed the defendant to use the mark for years
without objection, the defense of acquiescence may apply.

e. Exhaustion of Rights (Section 30(3))

Under the doctrine of exhaustion, once a trademarked product is lawfully sold in the market,
the trademark owner cannot control its subsequent resale or use. For example:

• A retailer reselling genuine branded goods cannot be accused of infringement.

f. Fair Use Doctrine

The defendant may argue that the use of the mark falls under "fair use," particularly in cases
involving parody, criticism, or non-commercial contexts. For instance:

• Satirical or humorous use of a trademark in a cartoon or meme may qualify as fair

use.

g. Use by a Prior User

Under Section 34, a defendant who can prove that they were using the trademark before the
plaintiff registered it may assert their rights as a prior user. Trademark law in India recognizes
prior use over registration.

h. Public Interest and Freedom of Expression

In cases involving public interest, free speech, or artistic expression, courts may reject
infringement claims. For example:
 • Use of a trademark in a documentary or news report for illustrative purposes may not
constitute infringement.

Judicial Interpretation of Defenses

Indian courts have provided valuable insights into the scope and application of defenses
against trademark infringement:

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001): The Supreme Court
laid down guidelines for determining the likelihood of confusion, emphasizing factors like
visual and phonetic similarity, the nature of goods, and consumer behavior.

In ITC Ltd. v. Britannia Industries Ltd. (2016): The Delhi High Court permitted
comparative advertising, provided it was honest and did not disparage the plaintiff’s goods.

In Amritdhara Pharmacy v. Satya Deo Gupta (1963): The Court highlighted the
importance of assessing the overall impression of the marks rather than dissecting individual
elements.

In Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. (1990): The Delhi High
Court recognized the defense of acquiescence, stating that trademark owners cannot remain
silent while another party uses their mark in good faith.

Conclusion

The Trademarks Act, 1999, provides a balanced framework for addressing infringement
claims by allowing defendants to assert a range of statutory and equitable defenses. These
defenses, such as those under Section 30 and Section 34, ensure that trademark protection
does not stifle legitimate trade practices, descriptive use, or fair competition. Judicial
precedents further strengthen the interpretation of these defenses, safeguarding the rights of
defendants while maintaining the integrity of the trademark system.

16. Note on collective mark. 6

Ans) A collective mark is a distinctive sign used to distinguish goods or services provided by
members of an association or collective organization from those of others. Unlike
conventional trademarks, which indicate the source of goods or services, a collective mark
signifies membership in a group or adherence to specific standards set by the association.
Collective marks play a significant role in promoting the collective interests of their
members, maintaining quality standards, and fostering consumer trust.

The legal framework for collective marks is provided under Sections 61 to 68 of the
Trademarks Act, 1999, and the rules governing their application, registration, and use are
elaborated in the Trade Marks Rules, 2017. These provisions ensure that collective marks are
used responsibly and transparently, preventing misuse and protecting the interests of the
association and consumers.

I. Definition of Collective Mark

Section 2(1)(g) of the Trademarks Act, 1999, defines a collective mark as:
“A trademark distinguishing the goods or services of members of an association of
persons not being a partnership which is the proprietor of the mark from those of
others.”

Key elements of this definition are:

• Ownership: A collective mark is owned by an association of persons, such as

societies, organizations, or unions. However, partnerships are explicitly excluded
from owning collective marks.

• Membership: The mark is used by members of the association, not the association
itself.

• Distinction: The mark distinguishes the goods or services of the members from those
of non-members.

Examples of collective marks include marks used by professional organizations (e.g., the CA
symbol for Chartered Accountants in India) or industry associations (e.g., the Woolmark
logo for high-quality wool products).

II. Purpose and Importance of Collective Marks

Collective marks serve several important purposes in commerce and trade:

• Indicating Membership: Collective marks signify that the user is a member of the
association that owns the mark.

• Guaranteeing Standards: The mark assures consumers that the goods or services meet
the quality standards or guidelines established by the association.

• Promoting Collective Identity: Collective marks enhance the reputation of the

association and its members by fostering a sense of unity and trust.

• Preventing Misrepresentation: By restricting use to authorized members, collective

marks prevent misuse and ensure fair competition.

III. Legal Provisions Governing Collective Marks

1. Application for Registration (Section 61)

Section 61 governs the registration process for collective marks. The application must
include:

• A clear statement that the mark is being applied for as a collective mark.

• The association’s rules governing the use of the mark, including:

o Conditions for membership.

o Quality standards to be maintained.

o Rights and obligations of members.

 o Procedures for resolving disputes.

The Registrar may request further information to ensure compliance with the Act and the
proper functioning of the collective mark.

2. Absolute and Relative Grounds for Refusal (Section 62)

The registration of a collective mark is subject to the same grounds for refusal as ordinary
trademarks under Sections 9 and 11:

• Absolute Grounds (Section 9): A collective mark cannot be descriptive, generic, or

deceptive. For instance, a mark like "Best Farmers" may be refused for being non-
distinctive.

• Relative Grounds (Section 11): A collective mark cannot conflict with an earlier
trademark or well-known mark.

3. Use and Regulation (Section 63)

Section 63 requires the association to regulate the use of the collective mark in accordance
with its rules. The association must ensure:

• Members adhere to the prescribed standards.

• The mark is not misused or used deceptively.

4. Infringement and Remedies (Section 64)

Section 64 provides protection against the unauthorized use of collective marks. If a non-
member uses the mark, it constitutes infringement, and the association can seek remedies
such as injunctions, damages, or accounts of profits.

5. Rectification and Removal (Sections 66 and 68)

A collective mark may be removed from the register if:

• The mark is misused or not used in accordance with the association’s rules.

• The mark becomes deceptive or ceases to distinguish members’ goods or services.

The Registrar has the authority to rectify the register or cancel the registration after
giving the association an opportunity to be heard.

6. Protection Against Misuse (Section 67)

Section 67 prohibits unauthorized use of collective marks. Any person falsely representing
goods or services as being associated with the collective mark may face legal consequences.

IV. Registration Process for Collective Marks

The registration of a collective mark follows the same basic steps as that of an ordinary
trademark, with additional requirements specific to collective marks:
• Application Filing: The application must be filed in the prescribed form, indicating that
the mark is a collective mark and including a copy of the association’s rules.

• Examination: The Registrar examines the application for compliance with the Act and
Rules, including assessing distinctiveness and ensuring no conflict with existing marks.

• Publication and Opposition: The application is published in the Trademark Journal,

allowing third parties to oppose the registration if they believe it infringes their rights or
misrepresents the goods or services.

• Registration: If no opposition is filed, or if the opposition is resolved in favor of the

applicant, the mark is registered, and a certificate of registration is issued.

V. Case Law

In Institute of Chartered Accountants of India v. Shammi N. Ranjan (2015): The court

upheld the exclusive right of the Institute of Chartered Accountants to use the "CA" collective
mark, emphasizing its role in identifying qualified professionals.

In Woolmark Co. v. Indian Woollen Mills Federation (1999): The court recognized the
importance of collective marks in ensuring quality and protecting consumer interests, ruling
in favor of the Woolmark logo as a guarantee of high-quality wool products.

VI. Challenges and Misuse of Collective Marks

While collective marks serve important functions, they are not immune to challenges:

• Mismanagement by Associations: Failure to enforce rules or monitor members’

compliance can dilute the value of the mark.

• Deceptive Use: Unauthorized use of the mark by non-members or members violating

quality standards can harm the association’s reputation.

• Complex Registration Process: The additional requirements for collective mark

registration, such as submitting rules and regulations, make the process more
cumbersome.

Conclusion

Collective marks under the Trademarks Act, 1999, provide a powerful tool for associations to
promote their collective identity, ensure quality standards, and distinguish their members’
goods or services from those of others. Governed by Sections 61 to 68, the legal framework
ensures proper use, regulation, and protection of collective marks, balancing the interests of
associations, their members, and consumers.

17. A proprietor started a new shop to sell meat products under a trademark “Hubballli
chickens” can he register trademark? Advice. 6

Ans) Under the Trade Marks Act, 1999, registration of a trademark is contingent upon
several statutory requirements, including distinctiveness, non-deceptiveness, and its ability to
function as an identifier for the proprietor’s goods or services. In this case, the proprietor
seeks to register the trademark “Hubballi Chickens” for selling meat products. The
registrability of this trademark hinges on whether it complies with the requirements laid out
in the Act, particularly under Sections 9 and 11, which deal with absolute and relative
grounds for refusal of trademarks.

Absolute Grounds for Refusal (Section 9):

Section 9 of the Act outlines absolute grounds on which a trademark can be refused
registration:

• Descriptive Marks (Section 9(1)(b)): Marks that directly describe the goods or
services or their quality, origin, or nature are not registerable unless they acquire
distinctiveness through secondary meaning. For example, “Hubballi Chickens”
describes both the geographical origin (Hubballi) and the product type
(chickens/meat).

• Geographical Indications (Section 9(1)(c)): Marks that exclusively consist of

indications of geographical origin are not registerable, as they do not function as
unique identifiers for a particular trader but are descriptive of a region.

Relative Grounds for Refusal (Section 11):

Section 11 bars registration if:

• The mark is identical or deceptively similar to an existing trademark for similar

goods, creating a likelihood of confusion.

• If “Hubballi Chickens” is similar to an existing trademark in the same or related

category (e.g., meat or chicken products), it could face refusal under this section.

Exception for Acquired Distinctiveness:

Section 9(1) provides an exception to descriptiveness if the applicant can demonstrate that the
mark has acquired secondary meaning, indicating that consumers now associate the
descriptive term “Hubballi Chickens” exclusively with the proprietor’s products.

If the proprietor demonstrates extensive use of “Hubballi Chickens” over a significant

period (e.g., advertisements, sales, consumer recognition surveys), the mark could acquire
distinctiveness and overcome the bar under Section 9(1)(b).

This would require evidence showing that consumers associate “Hubballi Chickens”
exclusively with the proprietor’s products, and not as a general term for chicken products
from Hubballi.

The trademark “Hubballi Chickens” faces significant hurdles in registration due to its
descriptive and geographic nature under Sections 9(1)(b) and 9(1)(c) of the Trade Marks
Act, 1999.

If the proprietor can establish secondary meaning or use creative branding elements, the
registration process may succeed.

18. ‘X’ is a registered user of a trademark ‘Nirma’. Now ‘Y’ wants to apply the
trademark ‘Nima’ fir his products. Advice him. 6

Ans) Under the Trade Marks Act, 1999, the proposed trademark ‘Nima’ by ‘Y’ may face
legal hurdles due to its phonetic similarity to the registered trademark ‘Nirma’.
Relevant Law and Sections

a) Section 11(1): This prohibits registration of trademarks that are identical or deceptively
similar to an earlier mark and likely to cause confusion among the public. ‘Nima’ and
‘Nirma’ are phonetically similar and could lead to consumer confusion.

b) Section 29: If ‘Y’ starts using ‘Nima’, it may result in trademark infringement of ‘X's’
rights over ‘Nirma’, as both are likely to fall in the same or related class of goods.

c) Section 11(2): Further, ‘Nirma’ could claim enhanced protection as a well-known

trademark, preventing registration of ‘Nima’ even for unrelated goods or services.

Advice to ‘Y’

It is advisable for ‘Y’ to avoid applying for the trademark ‘Nima’, as it is likely to be refused
under Section 11(1) on relative grounds for refusal and may lead to an infringement action
under Section 29. ‘Y’ should consider creating a trademark that is distinctive, both
phonetically and visually, to avoid conflict.

19. The plaintiff hold trademark on Andalsnuff. The defendant begins to use trademark
as Ambalsnuff. The plantiff challenges it. Decide. 6

Ans) Under the Trade Marks Act, 1999, the defendant’s use of the mark ‘Ambalsnuff’,
which is phonetically and visually similar to the plaintiff’s registered trademark
‘Andalsnuff’, constitutes a clear case of potential trademark infringement. The matter hinges
on whether the defendant’s mark is deceptively similar to the plaintiff's, causing confusion
among the relevant consumer base. Trademark law, particularly in India, addresses such
conflicts under Sections 29 and 11 of the Act.

Relevant Legal Provisions

1. Section 29(2) – Trademark Infringement: A registered trademark is infringed if the

impugned mark is:

o Identical or deceptively similar to the registered trademark.

o Used concerning the same or similar goods or services.

o Likely to cause confusion or association in the minds of the public regarding

the origin of goods or services.

In this case, ‘Ambalsnuff’ and ‘Andalsnuff’ are phonetically similar and visually
comparable. Both marks operate in the same industry (likely related to tobacco products),
which strengthens the claim of confusion among consumers.

2. Section 11(1) – Relative Grounds for Refusal of Registration: The provision

prohibits registration of marks that are identical or similar to an earlier trademark,
where such similarity may cause confusion regarding the origin of goods or services.

If ‘Ambalsnuff’ is not yet registered but has been applied for, its registration may be refused
under this section due to its similarity to the registered mark ‘Andalsnuff’.
 3. Section 135 – Remedies for Infringement: The plaintiff may seek injunctions,
damages, or accounts of profits for the infringement of their trademark rights. The
primary relief sought here would likely be an injunction to restrain the defendant from
further use of the mark ‘Ambalsnuff’.

Judicial Precedents

1. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001):

The Supreme Court emphasized that phonetic similarity is a crucial factor in determining
trademark infringement. The court highlighted the importance of protecting consumers from
confusion, particularly when the goods or services are of similar nature. Applying this
precedent, the marks ‘Andalsnuff’ and ‘Ambalsnuff’ share a high degree of phonetic
resemblance, likely to deceive the average consumer of average intelligence.

2. Amritdhara Pharmacy v. Satya Deo Gupta (1963):

The Supreme Court laid down the test for determining deceptive similarity, stating that two
marks must be compared for their overall impression, focusing on the likely perception of the
average consumer. Similarities in sound, appearance, and the goods associated with the
trademarks play a significant role. Here, ‘Andalsnuff’ and ‘Ambalsnuff’ could confuse
ordinary customers.

3. Durga Dutt Sharma v. Navaratna Pharmaceuticals (1965):

This case clarified the distinction between infringement and passing off. In infringement
cases, the plaintiff only needs to show that the defendant’s mark is deceptively similar,
without proving actual damage or deception. Applying this principle, ‘Ambalsnuff’ being
similar to ‘Andalsnuff’, constitutes infringement, even if actual confusion is yet to occur.

Conclusion

Based on the principles established under the Trade Marks Act, 1999, and judicial
precedents, the plaintiff’s claim against the defendant for trademark infringement is well-
founded. The phonetic and visual similarity between ‘Andalsnuff’ and ‘Ambalsnuff’ would
likely result in confusion among consumers, constituting trademark infringement under
Section 29(2). The court would likely grant an injunction against the defendant to restrain
them from using the infringing mark, with possible additional remedies under Section 135,
including damages or an account of profits.

20. The plaintiff company which is assigned with all rights, title, and interests along
with trademark existing in the personality of the artist, a famous pop star, challenges
unauthored use of artist reputation in selling miniature dolls of the artist by the
defendant company before the court. Decide. 6

Ans) The issue in this case involves the unauthorized commercial exploitation of a pop star’s
personality, likeness, and reputation by the defendant, which falls under the ambit of
personality rights or publicity rights. The plaintiff, having been assigned all rights, title, and
interest associated with the artist’s trademark and personality, seeks to protect these rights
against unauthorized use.

Legal Basis and Analysis

1. Personality Rights

Personality rights refer to the right of an individual to control the commercial use of their
name, image, likeness, or identity. These rights are especially significant for celebrities and
public figures, as their identity has commercial value. In India, personality rights are
recognized as part of intellectual property law and protected under common law principles
of passing off and tort law.

The Trade Marks Act, 1999, indirectly recognizes such rights through trademarks registered
for names or likenesses of personalities under Section 2(1)(zb), which defines a trademark as
any mark capable of distinguishing goods or services. If the artist's image or identity is
trademarked, unauthorized use would constitute trademark infringement under Section 29.

2. Right to Protection from Passing Off

Even if the artist’s name, image, or likeness is not formally trademarked, the common law
doctrine of passing off can be invoked to protect personality rights. To establish passing off,
the plaintiff must prove:

• Goodwill: The artist's name, likeness, or image has commercial value and goodwill.

• Misrepresentation: The defendant used the artist's likeness without authorization to

sell dolls, misleading consumers into believing there is an association with the artist.

• Damage: Such use harms the artist's reputation or the plaintiff’s financial interests by
exploiting the identity without compensation.

In the current case, the defendant company is exploiting the artist’s fame for commercial gain
without authorization, which satisfies these criteria.

3. Unauthorized Use and Misrepresentation

The defendant’s act of selling miniature dolls depicting the artist constitutes:

1. Unauthorized Commercial Exploitation: By using the artist’s likeness without

consent, the defendant violates the personality rights assigned to the plaintiff.

2. Misrepresentation: The use of the artist’s identity may mislead consumers into
believing the dolls are endorsed, authorized, or affiliated with the artist or the
plaintiff.

3. Unjust Enrichment: The defendant is deriving commercial gain from the reputation
of the artist without compensating the rightful owner.

Judicial Precedents

1. Titan Industries Ltd. v. M/S. Ramkumar Jewellers (2012):

The Delhi High Court recognized the concept of personality rights, particularly for public
figures, and held that unauthorized use of the image of a well-known celebrity (Amitabh
Bachchan and Jaya Bachchan) amounted to passing off and violation of personality rights.
2. Shivaji Rao Gaekwad v. Varsha Productions (2015):

In this case, the Madras High Court protected the personality rights of actor Rajinikanth,
restraining the unauthorized use of his name and likeness in a film. The court reaffirmed that
public figures have an exclusive right to commercially exploit their identity.

3. ICC Development (International) Ltd. v. Arvee Enterprises (2003):

The Delhi High Court observed that publicity rights vest with the individual or the entity
controlling them, and unauthorized commercial exploitation violates these rights.

Conclusion

Based on the facts, the defendant’s unauthorized use of the artist's reputation and likeness for
selling miniature dolls violates the plaintiff's personality rights and constitutes passing off
under common law principles. Additionally, if the likeness is trademarked, it would also
constitute trademark infringement under Section 29 of the Trade Marks Act, 1999.

The court would likely:

1. Grant an injunction restraining the defendant from further selling or distributing the
miniature dolls.

2. Award damages or an account of profits for the unlawful exploitation of the artist’s
identity.

3. Order the seizure and destruction of all infringing goods.

The plaintiff, as the assignee of all rights related to the artist’s personality and reputation, has
a strong claim to protect these rights from unauthorized commercial use.

21. The defendant company assigns its trademark ‘Maaza’ to the plaintiff company with
all intellectual property rights and it’s Goodwill in India concerning mango fruit
drink. Afterwards, the defendant company starts exporting fruit drink under the
name of Maaza to Turkey. The plaintiff company seeks legal action against the
defendant company. Decide. 6

Ans) The issue in this case involves the assignment of a trademark along with its goodwill
and whether the defendant, after transferring the rights, can legally continue using the mark
‘Maaza’ for any purpose. Under the Trade Marks Act, 1999, the assignment of a trademark
includes the transfer of ownership and rights associated with it, and the assignee gains
exclusive rights to use, license, and protect the trademark.

Legal Provisions Involved

a) Section 37 – Assignment of Trademark: Under this provision, the registered proprietor

of a trademark has the right to assign the trademark with or without goodwill. When a
trademark is assigned along with goodwill, as in this case, the assignee (plaintiff)
acquires exclusive ownership of the mark, including its reputation and associated
intellectual property rights, for all uses connected with the goods or services covered by
the mark.
b) Section 28 – Rights Conferred by Registration: This section grants the registered
proprietor (or assignee in this case) exclusive rights to use the trademark and to take legal
action against any person using an identical or deceptively similar mark in the course of
trade. Since the plaintiff now owns all rights to ‘Maaza’, the defendant cannot use the
same trademark in connection with the same category of goods (mango fruit drinks).

c) Section 29 – Infringement of Trademark: The defendant’s use of the trademark

‘Maaza’ for exporting fruit drinks to Turkey constitutes trademark infringement if:

o The mark is identical to the plaintiff’s registered trademark.

o The goods (fruit drinks) fall within the same category.

o Such use without authorization causes confusion about the source of goods in
Turkey or dilutes the trademark’s exclusivity.

d) Implied Covenant of Non-Use in Assignments: By assigning the trademark and

goodwill, the defendant has effectively transferred its right to use the trademark ‘Maaza’
in any capacity concerning mango fruit drinks. Any continued use by the defendant
undermines the exclusivity conferred to the plaintiff, violating common legal principles of
assignment.

Analysis

• Effect of Assignment with Goodwill: When a trademark is assigned with goodwill, the
assignee acquires not only the right to use the trademark but also the business reputation
associated with it. The defendant’s continued use of ‘Maaza’ after assignment contradicts
the nature of this transfer. The assignment explicitly prohibits the assignor from
continuing to operate in the market under the same mark, as this would create confusion
and dilute the trademark’s goodwill.

• Defendant’s Unauthorized Use: The defendant's use of the mark ‘Maaza’ for exports to
Turkey constitutes:

o A violation of the exclusive rights of the plaintiff under Section 28.

o Trademark infringement under Section 29, as the defendant’s actions dilute the
exclusivity of the mark and may mislead consumers globally about the source of
the goods.

• Passing Off: Even if the defendant argues that Turkish consumers are not connected to
the Indian market, the plaintiff can invoke the common law doctrine of passing off. The
use of the ‘Maaza’ mark by the defendant creates a misrepresentation that the exported
goods originate from the plaintiff, causing reputational harm to the plaintiff’s brand.

Judicial Precedents

a) Laxmikant V. Patel v. Chetanbhai Shah (2002): The Supreme Court held that passing
off protects goodwill and prevents misrepresentation of goods by a party that no longer
has legal ownership of the business or its associated intellectual property.
b) Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals (1965): The Court
held that in trademark infringement cases, the mere unauthorized use of the plaintiff’s
mark creates a valid cause of action.

c) Gauhati Carbon Ltd. v. Pancarb Carbon (2017): This case reaffirmed that a trademark
assigned with goodwill prevents the assignor from continuing to use the mark in the
assigned territory, as it leads to the dilution of the assignee’s exclusive rights.

Conclusion

The defendant’s act of using the trademark ‘Maaza’ after its assignment, particularly for
goods identical to those covered by the assignment agreement (mango fruit drinks), is a clear
violation of the plaintiff’s exclusive rights under Sections 28 and 29 of the Trade Marks
Act, 1999. Furthermore, the defendant’s actions constitute passing off, as it misuses the
goodwill associated with the mark.

The plaintiff has a strong case, and the court would likely:

1. Grant an injunction restraining the defendant from using the trademark ‘Maaza’ for
any goods or exports.

2. Award damages or an account of profits to the plaintiff.

3. Prevent further dilution of the trademark’s goodwill by prohibiting the defendant's

unauthorized use globally.
 UNIT III

1. What are problems encountered while protecting intellectual property rights(IPR) in

cyber space? Explain. 10

Ans) The advent of the internet and rapid technological advancements have revolutionized
commerce, communication, and innovation, giving rise to a vast digital landscape known as
cyberspace. While cyberspace offers immense opportunities for creators and businesses to
expand their reach, it has also posed significant challenges to the protection of Intellectual
Property Rights (IPR). The intangible nature of intellectual property, coupled with the
borderless and decentralized nature of the internet, has made it increasingly difficult to
enforce and regulate IPR in cyberspace.

The issues range from copyright piracy and trademark infringement to jurisdictional conflicts
and the misuse of domain names. The legal framework, while evolving, often struggles to
keep pace with the technological advancements that enable new forms of infringement.

Problems Encountered While Protecting IPR in Cyberspace

The protection of IPR in cyberspace is fraught with challenges stemming from the unique
characteristics of the digital environment, such as anonymity, speed of information
dissemination, and jurisdictional complexities. The following are the major problems
encountered:

1. Copyright Infringement in Digital Media

One of the most prevalent issues in cyberspace is the unauthorized reproduction, distribution,
and modification of copyrighted material. Digital content, such as music, movies, e-books,
software, and photographs, can be copied and shared with ease due to the following factors:

• Ease of Reproduction: Digital files can be duplicated without any loss of quality,
allowing for widespread piracy.

• Peer-to-Peer Networks and Streaming Platforms: Websites and platforms, including

torrent sites, facilitate the sharing of copyrighted material without authorization.

• User-Generated Content: Platforms like YouTube or social media allow users to upload
content, often without proper licensing, leading to copyright violations.

For instance, the case of MySpace Inc. v. Super Cassettes Industries Ltd. highlighted
issues surrounding user-generated content and intermediary liability for copyright
infringement.

2. Trademark Infringement and Cybersquatting

Trademarks are vulnerable in cyberspace due to issues such as domain name conflicts,
cybersquatting, and bad faith registrations:

• Cybersquatting: This involves registering domain names similar to well-known

trademarks with the intent to sell them at a profit or to mislead consumers. For example,
registering a domain like "amazonbooks.com" to profit from Amazon’s brand recognition
constitutes cybersquatting.
• Typosquatting: This involves registering domain names that mimic common
typographical errors of popular trademarks (e.g., "goggle.com" instead of "google.com").

• Keyword Hijacking: Unauthorized use of trademarks in search engine keywords to

divert traffic to competing or unrelated websites.

The Uniform Domain Name Dispute Resolution Policy (UDRP) has been implemented to
resolve such disputes but remains limited in scope and enforceability.

3. Jurisdictional Challenges

Cyberspace operates without physical borders, making it difficult to determine jurisdiction in

cases of IPR infringement. For instance:

• If a copyrighted movie is pirated in one country and hosted on a server in another, which
jurisdiction applies?

• Differing legal standards across jurisdictions complicate enforcement. For example, what
constitutes "fair use" in one country may be considered infringement in another.

The case of Dow Jones v. Gutnick (2002) highlighted the complexities of jurisdiction in the
digital age, with the Australian High Court ruling that jurisdiction could extend to the place
where the content was downloaded and accessed.

4. Anonymity and Difficulty in Identifying Infringers

The anonymity provided by cyberspace enables infringers to operate with minimal risk of
identification or accountability. Virtual Private Networks (VPNs), encrypted communication
platforms, and decentralized hosting make it challenging to trace and prosecute offenders.

5. Counterfeit Products in E-Commerce

E-commerce platforms are frequently used to sell counterfeit goods bearing unauthorized
trademarks, harming brand reputation and consumer trust. For instance: Unauthorized sellers
on platforms like Amazon and eBay often list counterfeit products, making it difficult for
genuine trademark owners to monitor and enforce their rights.

6. Patent Infringement in Technology

Patent infringement in cyberspace often involves the unauthorized use of patented software,
algorithms, or technology. Issues such as reverse engineering, software piracy, and
unauthorized distribution of patented innovations are rampant in the digital realm.

7. Lack of Harmonized Laws

While treaties like the Agreement on Trade-Related Aspects of Intellectual Property

Rights (TRIPS) establish minimum standards for IPR protection, the lack of harmonized
enforcement mechanisms across countries creates challenges. Some countries have weaker IP
enforcement frameworks, making it easy for infringers to operate from jurisdictions with lax
regulations.

8. Intermediary Liability
Intermediaries, such as social media platforms, search engines, and hosting providers, often
facilitate the dissemination of infringing material. The extent to which these intermediaries
should be held liable is a contentious issue. For example:

Section 79 of the Information Technology Act, 2000, provides "safe harbor" protection to
intermediaries in India, limiting their liability if they act as mere conduits and comply with
takedown notices. However, this provision is not always effective in addressing widespread
infringement.

9. Misuse of Artificial Intelligence (AI) and Big Data

Emerging technologies such as AI and big data analytics present new challenges for IPR
protection:

• AI-generated content raises questions about ownership and copyright eligibility.

• Big data platforms may aggregate and use proprietary data without authorization.

10. Challenges in Enforcement

Even when infringement is identified, enforcing IPR in cyberspace presents difficulties:

• Speed of dissemination: Content can be shared across platforms faster than it can be
removed.

• High costs: Monitoring and enforcing IPR globally is resource-intensive, particularly for
small businesses or individual creators.

Legal Framework for Addressing IPR Challenges in Cyberspace

Several laws and treaties aim to address these challenges, including:

• The Trademarks Act, 1999: Provides remedies for trademark infringement, including
cybersquatting and misuse in domain names.

• The Copyright Act, 1957: Offers protection against digital piracy and unauthorized
reproduction of works.

• The Information Technology Act, 2000: Addresses intermediary liability and electronic
commerce but requires further refinement to tackle emerging IPR challenges.

• WIPO Internet Treaties: The WIPO Copyright Treaty (WCT) and WIPO
Performances and Phonograms Treaty (WPPT) address digital copyright protection
globally.

• Uniform Domain Name Dispute Resolution Policy (UDRP): Provides a mechanism for
resolving domain name disputes.

Proposed Solutions

To address the challenges of protecting IPR in cyberspace, the following measures are
essential:
• Strengthening international cooperation and harmonizing laws to address jurisdictional
issues.

• Enhancing technological tools for detecting and preventing infringement, such as AI-
based monitoring systems.

• Amending laws to address emerging issues like AI-generated works and data misuse.

• Increasing accountability of intermediaries while balancing safe harbor protections.

• Raising awareness among businesses and consumers about the importance of IPR
protection.

Conclusion

The protection of intellectual property rights in cyberspace is a complex and evolving issue,
shaped by the unique characteristics of the digital environment. While legal frameworks like
the Trademarks Act, 1999, and the Copyright Act, 1957, provide some protection,
challenges such as jurisdictional conflicts, anonymity, and technological advancements
require constant adaptation of laws and enforcement mechanisms. By fostering international
collaboration, leveraging technology, and enhancing legal provisions, it is possible to strike a
balance between protecting creators’ rights and ensuring a fair and open digital marketplace.

2. What do you mean by ‘domain name’? Explain the procedure of registration of

domain names in India. 10

Ans) A domain name serves as the unique address of a website on the internet, enabling
users to access digital content or services. In technical terms, it is a human-readable version
of an Internet Protocol (IP) address, simplifying the identification of websites. For instance,
"www.google.com" is the domain name for Google’s website. A domain name plays a crucial
role in branding and business identity, as it allows users to associate a particular web address
with a specific company, product, or service.

In legal and commercial contexts, a domain name can also function as a trademark if it
satisfies the criteria of distinctiveness and is associated with the source of goods or services.
The protection and registration of domain names are governed by principles of trademark
law, international treaties, and national regulations, including those in India.

I. What is a Domain Name?

A domain name is essentially a string of text that corresponds to a numerical IP address used
by computers to locate each other on the internet. It has two main components:

• Top-Level Domain (TLD): The suffix or extension of the domain name, such as .com,
.org, .gov, or country-specific extensions like .in for India.

• Second-Level Domain (SLD): The name chosen by the registrant, such as "amazon" in
"www.amazon.in."
Domain names are critical for online identity, branding, and accessibility. They are often
registered by businesses, organizations, or individuals to establish their presence on the
internet.

II. Legal Nature of Domain Names

While domain names are primarily technical tools, they also acquire legal significance when
they intersect with intellectual property rights, particularly trademarks. In cases of disputes,
courts in India have recognized the value of domain names as intellectual property. For
example:

In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004), the Supreme Court of India
held that domain names are not merely addresses but identifiers of businesses, akin to
trademarks.

III. Procedure for Registration of Domain Names in India

The registration of domain names in India is overseen by the National Internet Exchange of
India (NIXI) through its subsidiary, the INRegistry, which administers .in domain names.
Registrants can also use international registrars for generic top-level domains (gTLDs) like
.com, .org, or .net. The process of registering a domain name involves the following steps:

1. Selection of a Domain Name

The registrant must select a unique domain name that reflects their brand, business, or
personal identity. It is advisable to choose a name that is distinct and not deceptively similar
to existing domain names or trademarks to avoid disputes or rejection.

2. Choosing a Domain Registrar

Domain names can only be registered through accredited registrars authorized by governing
bodies like the Internet Corporation for Assigned Names and Numbers (ICANN) or the
INRegistry for .in domains. Registrars such as GoDaddy, Namecheap, and BigRock provide
domain registration services in India.

3. Checking Availability

The availability of the desired domain name must be checked using the registrar’s search
tools or databases. If the domain name is already registered, the registrant may need to select
an alternative or negotiate with the existing owner for transfer.

4. Selecting a TLD

The registrant must decide whether to register a generic TLD (like .com, .net) or a country-
code TLD (like .in). Country-code domains may have additional requirements, such as
proving a local presence.

5. Registration Application

Once the domain name and TLD are selected, the registrant submits an application through
the chosen registrar. The application requires:
 • The name and contact details of the registrant.

• Technical information about the domain’s intended use.

• Selection of a registration period, typically ranging from 1 to 10 years.

6. Payment of Fees

The registrant pays a fee to the registrar, which varies depending on the TLD and registrar.
For instance, .in domains may have different pricing structures compared to .com domains.

7. Verification and Registration

The registrar processes the application, verifies the information, and registers the domain
name if it meets all requirements. The registrant receives a confirmation, and the domain
name is activated.

IV. Legal and Policy Framework for Domain Names in India

a) National Internet Exchange of India (NIXI)

NIXI is the primary body responsible for managing .in domain names in India. Its subsidiary,
the INRegistry, operates under the authority of the Ministry of Electronics and Information
Technology (MeitY) and ensures compliance with national and international standards.

b) Domain Name Dispute Resolution Policy (INDRP)

The INRegistry has established the .IN Dispute Resolution Policy (INDRP) to address
disputes related to .in domain names. The policy applies in cases of:

• Cybersquatting (registering domain names to sell them at inflated prices).

• Bad faith registration or use.

• Infringement of trademarks.

The INDRP is modeled after the Uniform Domain Name Dispute Resolution Policy
(UDRP), which governs gTLD disputes internationally.

c) Intellectual Property Considerations

Under Indian law, domain names are protected as intellectual property if they satisfy the
criteria of a trademark, such as distinctiveness and use in commerce. Disputes involving
domain names are often addressed under the Trademarks Act, 1999, or through common
law principles of passing off.

V. Challenges in Domain Name Registration

The registration of domain names is not without challenges, particularly in the following
areas:

• Cybersquatting: The practice of registering well-known brand names as domain names

to extort money from legitimate trademark owners.
• Typosquatting: The registration of domain names similar to popular ones, exploiting
common typographical errors made by users.

• Bad Faith Registration: Domain names registered with the intent to mislead consumers
or harm the reputation of an existing business.

• Jurisdictional Issues: Cross-border disputes over domain names often involve

conflicting legal systems, complicating resolution.

• Overlapping Rights: Conflicts between domain names and pre-existing trademarks may
arise, leading to legal disputes.

Conclusion

A domain name is a critical component of online identity and branding, functioning as both a
technical tool and a legal asset. In India, the registration of domain names is governed by the
INRegistry under NIXI for .in domains and by ICANN-accredited registrars for gTLDs. The
registration process involves selecting a unique name, choosing a registrar and TLD, and
complying with technical and procedural requirements.

While domain names offer immense commercial and branding potential, their protection in
cyberspace is complicated by issues such as cybersquatting and bad faith use. Legal
frameworks like the INDRP and trademark law aim to address these challenges, ensuring that
domain names remain valuable assets for businesses and individuals in the digital era.

3. Note on Digital signature. 6

Ans) A digital signature is a mathematical technique used to ensure the authenticity, integrity,
and non-repudiation of an electronic message, document, or transaction. Under Indian law,
the concept and legal framework for digital signatures are primarily governed by the
Information Technology Act, 2000 (IT Act, 2000), which provides legitimacy to electronic
records and signatures in India. Digital signatures serve as the electronic equivalent of
physical or handwritten signatures, enabling secure and legally valid communication in the
digital realm.

I. Definition of Digital Signature under the IT Act, 2000

As per Section 2(1)(p) of the IT Act, 2000, a digital signature is defined as "authentication
of any electronic record by a subscriber by means of an electronic method or procedure in
accordance with the provisions of Section 3."

Thus, a digital signature serves as proof that:

• The electronic record originates from the signatory (authenticity).

• The content of the record has not been tampered with after it was signed (integrity).

II. Key Provisions Regarding Digital Signatures under the IT Act

a. Authentication of Electronic Records (Section 3)

Section 3 lays the foundation for the use and recognition of digital signatures. It provides that
any electronic record may be authenticated by a digital signature generated through a method
that satisfies the following conditions:

• Uniqueness: The digital signature must be unique to the person (subscriber) using it.

• Public Key Infrastructure (PKI): The process involves the use of an asymmetric
cryptosystem, where a pair of cryptographic keys (private key and public key) are
generated. The private key, held securely by the subscriber, is used to digitally sign the
document, while the public key is used to verify the signature.

• Hashing Functionality: The electronic record is subjected to a hash function, which

creates a unique hash value corresponding to the content of the document. This value is
encrypted with the private key to create the digital signature.

• Legal Effect: The IT Act recognizes digital signatures as legally valid methods of
authenticating electronic records, provided they adhere to this framework.

b. Secure Digital Signatures (Section 15)

To ensure legal validity, Section 15 of the Act defines a secure digital signature as one that
meets certain security requirements. It must be unique, capable of identifying the signatory,
and created in such a manner that it is linked to the signer and the data in a way that any
changes to the data invalidate the signature.

Only signatures certified by a trusted certifying authority (as outlined under Section 35) can
be deemed secure.

c. Recognition of Digital Signatures (Section 5)

Section 5 of the IT Act grants digital signatures the same legal standing as handwritten
signatures in cases where digital signatures are used to authenticate an electronic record.
Once authenticated, the record is considered valid and enforceable under Indian law.

For example, signing a contract digitally will hold the same legal effect as affixing a
handwritten signature on a physical agreement.

d. Certifying Authorities and Digital Signature Certificates (Sections 35–39)

The issuance and regulation of digital signatures are governed by certifying authorities,
which are entities authorized by the Controller of Certifying Authorities (CCA) under the
IT Act. The key aspects include:

• Section 35: A certifying authority issues a Digital Signature Certificate (DSC) to a

subscriber after verifying their identity. This certificate binds the digital signature with the
identity of the signatory.

• The DSC contains information such as the signatory’s public key, identity details, and
validity period.

• Unauthorized issuance of certificates or false information is penalized under the IT Act to

maintain trust in the system.
e. Presumption and Legal Validity (Section 85B)

Section 85B presumes the validity of digital signatures unless proven otherwise. A digitally
signed electronic record is presumed to be authentic unless evidence is presented to challenge
the validity of the signature or its creation.

III. Working Mechanism of Digital Signature

The digital signature mechanism operates through Public Key Infrastructure (PKI)
technology and involves the following key steps:

a) Generation of Public and Private Keys: A user generates a private key and a
corresponding public key. The private key is kept confidential, while the public key is
made available publicly.

b) Signing the Document:

o The electronic document is run through a cryptographic hashing algorithm, which

creates a hash value (unique fingerprint) of the document.

o This hash value is encrypted using the signatory’s private key to create the digital
signature.

c) Verification of the Digital Signature:

o The receiver decrypts the digital signature using the public key of the signatory.

o The decrypted value is compared with the hash value of the original document. If
the values match, the document is considered authentic and unaltered.

IV. Benefits of Digital Signatures

• Authenticity: A digital signature ensures the identity of the signer.

• Integrity: The use of a hashing function ensures that any tampering with the document
invalidates the signature.

• Non-Repudiation: Once a digital signature is affixed, the signatory cannot deny having
signed the document, as the private key is unique to the individual.

• Efficiency: Digital signatures eliminate the need for physical copies, thereby speeding up
transactions and reducing paperwork.

• Global Acceptance: Digital signatures are recognized and accepted internationally under
frameworks such as the UNCITRAL Model Law on Electronic Commerce.

V. Judicial Recognition of Digital Signatures

Indian courts have recognized the use and legality of digital signatures in several judgments:

Trimex International FZE Ltd. v. Vedanta Aluminum Ltd. (2010): The Supreme Court
acknowledged the enforceability of agreements concluded via email with digital signatures,
emphasizing the validity of electronic records authenticated through a proper signature
process.

State of Maharashtra v. Dr. Praful B. Desai (2003): The Court allowed electronic
documents and signatures as valid evidence, affirming the legal equivalence of digital
communications to physical ones.

Challenges Related to Digital Signatures

Despite their benefits, digital signatures face certain challenges:

• Cybersecurity Risks: Digital signatures can be compromised if private keys are stolen or
misused.

• Lack of Awareness: Many businesses and individuals are unfamiliar with the use and
advantages of digital signatures, leading to limited adoption.

• Infrastructure: Effective implementation of digital signatures requires robust PKI

systems and dependable certifying authorities.

• Cross-Border Recognition: While digital signatures are widely accepted, discrepancies

in international regulations can pose legal hurdles in cross-border transactions.

Conclusion

A digital signature, as defined and regulated by the IT Act, 2000, is an indispensable tool in
today’s digital economy. It ensures security, authenticity, and efficiency in electronic
transactions, replacing traditional paper-based processes. By adhering to the provisions of
Sections 3, 5, and 35–39, digital signatures have been granted full legal recognition and
enforceability, enabling their use in diverse applications such as e-governance, online
contracts, and secure communications.

4. What are cyber crimes? Explain different kinds of cyber crimes. 10 (2) or Note on
cyber crimes. 6 (3)

Ans) Introduc)on

Cyber crimes are offenses committed using computers, networks, or other electronic devices,
where the target is either the technology itself, data, or individuals who interact within a
digital environment. The rapid advancement of technology and widespread internet
penetration have transformed the way individuals and organizations interact. However, this
has also resulted in the misuse of technology for unlawful purposes, leading to the emergence
of a wide array of cyber crimes.

Under Indian law, cyber crimes are regulated primarily through the Information Technology
Act, 2000 (IT Act, 2000) and other penal provisions within the Indian Penal Code (IPC).
These laws address crimes ranging from unauthorized access to computer systems, identity
theft, data breaches, online harassment, and terrorism. Cyber crimes challenge the traditional
understanding of territorial jurisdiction and law enforcement, necessitating a nuanced legal
and technological response.

I. Definition of Cyber Crime

While the IT Act, 2000, does not define "cyber crime" explicitly, it encompasses offenses that
involve the use of computers or computer networks as a medium or target for unlawful acts.
Cyber crimes broadly fall into two categories:

1. Target-Oriented: Where the computer system, network, or data is the direct target
(e.g., hacking, denial-of-service attacks).

2. Technology-Facilitated: Where computers or networks are used as a tool to commit

traditional crimes (e.g., fraud, defamation, identity theft).

Cyber crimes violate multiple rights and duties, including privacy, security, intellectual
property, and financial interests, which require legal regulation and protection.

II. Types of Cyber Crimes

Cyber crimes are diverse and affect various aspects of individuals and institutions, including
economic stability, privacy, and national security. The following are some prominent kinds of
cyber crimes:

1. Hacking (Unauthorized Access or Control)

Hacking refers to the unauthorized access to or control over a computer system, network, or
data. Hackers exploit vulnerabilities in computer systems to manipulate, delete, or steal data.
Under Section 43(a) and Section 66 of the IT Act, hacking is punishable if it causes loss or
harm to a person by destroying, altering, or damaging data.

Example: A hacker breaking into a company’s server to steal confidential customer

information or intellectual property.

2. Identity Theft and Phishing

Identity theft occurs when a person’s personal information, such as passwords, financial
details, or identification documents, is stolen and misused without their consent. Phishing is a
related crime, where fake emails or websites are used to deceive individuals into revealing
sensitive information.
Section 66C of the IT Act penalizes identity theft.

Example: Cybercriminals pretending to be bank officials to gain access to a user's credit card
information through a phishing email.

3. Cyber Stalking and Online Harassment

Cyber stalking involves repeated and persistent harassment of an individual using electronic
means, causing fear or distress. It includes sending offensive messages, spreading defamatory
content, or monitoring the victim’s online activity.
The IPC Sections 354D (stalking) and 509 (insulting the modesty of a woman) also address
related crimes. Cyberstalking is punishable under Section 66A and 67 of the IT Act.

Example: Following someone’s online activities, sending repeated threatening messages, or

posting personal information to harass the individual.

4. Cyber Terrorism
Cyber terrorism involves the use of cyberspace to threaten or disrupt critical infrastructure,
national security, or public order. It includes acts such as hacking into defense systems,
spreading misinformation, or recruiting individuals to engage in terrorist activities.
Cyber terrorism is addressed under Section 66F of the IT Act.

Example: Hacking into government systems to disrupt power grids, communication

networks, or water supplies.

5. Data Theft and Data Breaches

Data theft occurs when unauthorized individuals or entities steal sensitive or confidential
data, such as financial information, trade secrets, or customer databases, from a computer
system or network. Breaches can lead to significant financial and reputational damage.

Section 72 of the IT Act addresses the unauthorized disclosure of information in breach of

lawful contracts.

Example: An employee stealing company data and sharing it with competitors.

6. Online Defamation and Hate Speech

The act of posting false, offensive, or defamatory content online that tarnishes the reputation
of an individual, organization, or community falls under this category. Hate speech includes
promoting enmity, hostility, or violence through online platforms.
Provisions under Sections 499 and 500 of the IPC apply to defamation, while hate speech
can be addressed through Section 153A (promoting enmity) and 66A of the IT Act (now
read down but invoked for threats).

Example: Spreading false rumors about an individual on social media platforms to damage
their professional or personal reputation.

7. Cyber Fraud and Financial Scams

Cyber fraud refers to the use of deceptive practices online to cheat individuals or institutions
for financial gain. Common forms include phishing scams, lottery frauds, and credit card
frauds.
Section 420 of the IPC and Section 66D of the IT Act address cheating through
impersonation.

Example: Offering fake investment schemes online to collect money from unsuspecting
victims.

8. Child Exploitation and Pornography

The use of cyberspace to exploit children, including hosting, viewing, or distributing child
pornography or using online platforms for grooming, constitutes one of the gravest forms of
cyber crime.
Section 67B of the IT Act specifically penalizes acts related to child pornography and sexual
exploitation.

Example: Operating a dark web platform to share or sell child abuse content.
9. Software Piracy and Intellectual Property Violations

Piracy involves the unauthorized copying, distribution, or use of software or digital content
such as music, films, and books. It infringes upon the intellectual property rights of creators.
Relevant laws include the Copyright Act, 1957, in conjunction with IT Act provisions for
electronic content.

Example: Uploading copyrighted films on torrent websites without authorization.

10. Cyber Espionage

Cyber espionage entails unauthorized spying on individuals, corporations, or governments to

gain confidential or sensitive information. Hackers or foreign entities often engage in cyber
espionage for competitive or political advantage.
Section 66F (cyber terrorism) and the Official Secrets Act, 1923 govern such offenses.

Example: A foreign hacker stealing classified information from a government defense agency.

III. Challenges in Addressing Cyber Crime

Despite the legal framework, cyber crimes pose several challenges:

• Anonymity and Global Reach: Cyber criminals exploit the borderless nature of
cyberspace, making it difficult to track offenders and establish jurisdiction.

• Lack of Awareness: Many individuals and organizations are unaware of potential cyber
threats and how to safeguard themselves.

• Evolving Techniques: Cybercriminals frequently innovate new methods to bypass

security systems, requiring continuous updates to laws and technology.

• Limited International Collaboration: Cooperation among nations is critical to tackle

cross-border cyber crime, yet divergent legal systems and priorities hinder collaboration.

Conclusion

Cyber crimes encompass a broad range of offenses that target technology, data, and
individuals in the digital realm. As technology advances, so does the sophistication of
cybercriminal activities, posing significant challenges for law enforcement, businesses, and
individuals. The IT Act, 2000, along with provisions of the IPC/BNS, provides a robust legal
framework to address these crimes in India. However, the dynamic nature of the digital
landscape necessitates ongoing legal reform, enhanced international cooperation, and public
awareness campaigns to effectively combat cyber threats and ensure the safety of cyberspace.

5. What are cyber crimes? Classify computer related crimes enumerated in

information technology act, 2000. 10

Ans) Cyber crimes involve offenses committed using computers, computer networks, or
other digital devices, targeting either technology itself, sensitive data, or users interacting in
the cyberspace. The rise of the internet, digital infrastructure, and electronic communications
has significantly enhanced connectivity and accessibility. However, it has also paved the way
for illicit activities that exploit vulnerabilities in technology, such as hacking, phishing, and
identity theft.

The Information Technology Act, 2000 (IT Act) provides a legal framework to recognize,
penalize, and regulate cyber crimes in India. It also ensures the security and integrity of
electronic transactions, communications, and data. Computer-related crimes under the IT Act
can be broadly classified based on the nature of the target and the offense committed.

I. Definition of Cyber Crime

Cyber crimes, though not explicitly defined in the IT Act, 2000, are broadly understood as
offenses where:

1. A computer or electronic device is the target of the crime (e.g., hacking, data
breaches).

2. A computer or network serves as the tool to commit traditional crimes (e.g., cyber
fraud, defamation).

3. The crime involves activity in cyberspace, such as the transmission of obscene

material or cyberstalking.

Section 2(1)(t) of the IT Act defines a computer system as any device that uses electronic
means for storing, processing, or transmitting information. Crimes involving such systems
fall under cyber crimes if the action violates the legal provisions of the IT Act or other
relevant laws.

II. Classification of Computer-Related Crimes Under the IT Act, 2000

The IT Act, 2000, enumerates a wide array of computer-related offenses in various sections.
These can be broadly classified into the following categories:

1. Offenses Against Computers and Systems (Hacking and Unauthorized Access)

Hacking, unauthorized access, and damage to computer systems form the most common
types of cyber crimes targeting technology infrastructure. Section 43 of the IT Act penalizes
activities such as accessing a computer system without authorization, extracting data,
introducing viruses, or disrupting networks.

If such acts are committed dishonestly or fraudulently, they attract further penalties under
Section 66. For example:

• Hacking: Unauthorized intrusion into a system to gain confidential information or

disrupt operations is punishable.

• Viruses and Malware: Introducing malicious programs that corrupt data or render
systems non-operational is addressed under these sections.

2. Identity Theft, Impersonation, and Cyber Fraud

Identity theft and impersonation have become prevalent with the rise of e-commerce and
online banking. These crimes involve stealing or using personal data such as passwords or
banking information to commit fraud. Section 66C specifically criminalizes identity theft,
while Section 66D penalizes cheating by impersonation through digital means.

For example:

• Phishing: Fake websites or emails deceive users into revealing sensitive information.

• Credit Card Fraud: Using stolen card details to conduct unauthorized transactions
online is punishable.

3. Transmission of Offensive or Obscene Content

The IT Act seeks to regulate the content shared in cyberspace to prevent the misuse of
technology for transmitting offensive or obscene material. Section 67 prohibits the
publication or transmission of obscene content in electronic form, with enhanced penalties
under Section 67A for sexually explicit material and Section 67B for child pornography.

This provision plays a critical role in combating cyber crimes such as:

• Circulation of Pornographic Content: Hosting or sharing sexually explicit content

through websites or messaging platforms.

• Cyber Harassment: Sending obscene messages through electronic communication

tools.

4. Cyber Terrorism

One of the most severe forms of cyber crime is cyber terrorism, which involves using
cyberspace to cause harm or threaten national security, sovereignty, or the public at large.
Section 66F criminalizes such activities, including hacking critical government systems,
disrupting essential services, or spreading extremist propaganda online.

For instance:

• Hacking Defense Networks: Gaining unauthorized access to sensitive military or

government databases to obtain classified information.

• Disrupting Public Services: Attacking systems managing utilities like electricity or

water supply.

5. Breach of Data and Privacy

Protecting data and ensuring privacy is a crucial part of cyber law. The IT Act penalizes
unauthorized access to or disclosure of data stored in computer systems. Section 72
criminalizes breaches of confidentiality, while Section 43(b) penalizes extracting or copying
sensitive data without authorization.

Example scenarios include:

• Data Theft: Stealing customer information from a company database for commercial
gain.
• Employee Misconduct: An employee accessing confidential company data without
proper authorization.

6. Financial and Online Banking Fraud

As online banking and digital payments grow, so do cyber crimes involving financial fraud.
These offenses often include phishing, unauthorized transactions, or hacking into accounts.
Penalties for these crimes are laid down under Section 66D (cheating by impersonation).

Examples include:

• Unauthorized Transactions: Using stolen account credentials to transfer money.

• Online Ponzi Schemes: Deceptive investment plans advertised over the internet.

7. Cyberstalking and Harassment

Online harassment, including stalking, is a growing concern, especially with the proliferation
of social media. Cyberstalking involves following someone’s digital activities to intimidate,
harass, or threaten them. Sections 66A and 67 penalize sending offensive messages, while
Section 354D of the IPC criminalizes stalking in general.

8. Intellectual Property Crimes

Cyber crimes also extend to the infringement of intellectual property rights in digital content,
including piracy, plagiarism, and trademark violations. The IT Act, in conjunction with the
Copyright Act, 1957, prohibits:

• Piracy of Digital Media: Unauthorized duplication or distribution of software, movies,

music, and books.

9. Cyber Espionage

Cyber espionage involves illegally accessing classified information or corporate data, often
for political or competitive advantage. Under Section 66F, acts of spying on government or
private systems with malicious intent are categorized as cyber terrorism if they endanger
national security.

10. Defamation and Misinformation

Online defamation involves publishing false or defamatory statements about an individual or

organization on digital platforms. While the IT Act does not explicitly address defamation,
Section 499 of the IPC applies to online platforms.

Similarly, spreading false information or rumors to incite violence or panic can be prosecuted
under Sections 505 and 66D of the IPC and IT Act, respectively.

III. Legal Challenges in Combating Cyber Crimes

Cyber crimes pose significant legal and enforcement challenges:

• Jurisdictional Issues: As cyberspace transcends geographical boundaries, determining
the applicable jurisdiction becomes complex.

• Evolving Techniques: Rapid technological advancements make it difficult for law

enforcement to stay ahead of cyber criminals.

• Insufficient Awareness: Victims and businesses often lack awareness about the
preventive measures or legal recourses available.

• Cross-Border Cooperation: Tackling crimes like cyber terrorism requires global

cooperation, which is hindered by varying legal frameworks.

Conclusion

Cyber crimes represent one of the most pressing legal challenges of the modern era, requiring
both legal and technological interventions. The Information Technology Act, 2000, provides
a robust framework to classify, penalize, and regulate cyber crimes, offering remedies to
victims while punishing offenders. By addressing offenses such as hacking, phishing, cyber
terrorism, and data theft, the IT Act seeks to uphold data integrity, privacy, and cybersecurity
in India.

6. Explain the salient features of information technology act, 2000. 10 (4) or explain the
objectives and salient features of IT Act,2000. 10

Ans) The Information Technology Act, 2000, was enacted in India to provide a legal
framework for e-commerce, cybercrime, electronic governance, and the secure use of digital
technologies. This Act marked a significant milestone in regulating digital activities in the era
of globalization and rapid technological advancements. It primarily aimed to address the
growing concerns of cyber security, online fraud, data privacy, and digital identity
authentication. Over the years, it has been amended, particularly in 2008, to address emerging
challenges such as data breaches, phishing, and cyber terrorism.

I. Objectives

The objectives of the Information Technology Act, 2000, is to provide legal recognition to
electronic records, digital signatures, and electronic transactions, facilitating e-commerce and
e-governance. It aims to prevent cybercrimes, ensure cybersecurity, regulate certifying
authorities for digital signatures, promote international compatibility, and establish
mechanisms for resolving cyber disputes while safeguarding data privacy and electronic
communication.

II. Salient Features of the Information Technology Act, 2000

The Information Technology Act, 2000, provides a comprehensive framework addressing the
legal challenges and opportunities posed by the digital world. Its key features include
provisions for electronic governance, cybercrime regulation, digital signatures, and penalties
for unauthorized digital activities.

1. Legal Recognition of Electronic Records and Digital Signatures

One of the foundational objectives of the IT Act is to provide legal recognition to electronic
records and digital signatures. Sections 4 and 5 of the Act state that electronic records and
digital signatures are valid, just like physical documents and handwritten signatures, provided
they meet the prescribed authentication standards. This feature facilitates e-commerce, digital
contracts, and online transactions by ensuring their enforceability in courts of law.

Digital signatures, as defined in the Act, are based on asymmetric cryptosystems and serve
as a means of verifying the authenticity and integrity of electronic communications.
The Controller of Certifying Authorities (CCA) supervises the licensing of certifying
authorities that issue digital signature certificates.

2. Electronic Governance (E-Governance)

The Act promotes electronic governance by encouraging the use of electronic records and
communications for government functions. Sections 6, 7, and 8 provide the legal framework
for submitting applications, issuing approvals, and maintaining official records in digital
form. This initiative has been instrumental in projects like Digital India, enabling faster,
more transparent, and accessible public services.

For instance:

• Filing income tax returns online.

• Submission of applications for government schemes.

• Digital payment systems for public utilities.

3. Regulation of Certifying Authorities

The IT Act establishes a framework for regulating certifying authorities (CAs), responsible
for issuing digital signature certificates. The CAs must adhere to the guidelines prescribed by
the Controller of Certifying Authorities (CCA), who oversees their operation and ensures
compliance.

This regulatory mechanism builds trust in electronic communications by providing a secure

infrastructure for digital signatures and encryption.

4. Cybercrime and Offenses

One of the most critical aspects of the IT Act is its focus on identifying and penalizing
cybercrimes. Chapter XI of the Act deals with offenses such as:

• Hacking (Section 66): Unauthorized access to computer systems with intent to cause
harm.

• Identity Theft (Section 66C): Fraudulently using another person’s identity.

• Phishing and Cyber Fraud (Section 66D): Impersonation for cheating via electronic
means.

• Obscene Content (Section 67): Publishing or transmitting obscene material

electronically.
The Act provides penalties and imprisonment for such offenses, ensuring deterrence and
addressing public concerns about cyber safety.

5. Data Protection and Privacy

While the IT Act primarily deals with cybercrime, it also addresses data privacy concerns.
Section 43A imposes liability on entities handling sensitive personal data if they fail to
implement reasonable security practices, leading to wrongful loss or gain. Though limited in
scope, this provision is a precursor to more comprehensive data protection legislation, such as
the proposed Data Protection Bill.

6. Cyber Appellate Tribunal

The Act establishes the Cyber Appellate Tribunal (CAT) to adjudicate disputes related to
cybercrime and penalties. It provides an efficient redressal mechanism, ensuring swift
resolution of grievances related to digital activities. Appeals against the orders of the Tribunal
lie with the High Court.

7. Penalties and Compensation

The IT Act prescribes penalties and compensation for damage caused due to unauthorized
digital activities. For example:

• Section 43 imposes penalties for unauthorized access, data theft, or introducing

viruses into a computer system.

• Section 66E penalizes the violation of privacy by capturing or transmitting images

without consent.

This provision ensures accountability for wrongful acts in cyberspace.

8. Offenses Related to Cyber Terrorism

The 2008 amendment to the Act introduced Section 66F, which deals with cyber terrorism. It
criminalizes acts intended to threaten national security, such as unauthorized access to
sensitive government data, disrupting critical information systems, or promoting terrorism
through digital means.

This provision underscores the importance of cybersecurity in safeguarding national interests.

9. Intermediary Liability

The IT Act defines the role and responsibilities of intermediaries, such as social media
platforms, internet service providers, and hosting providers. Section 79 provides a "safe
harbor" for intermediaries, exempting them from liability for third-party content, provided
they comply with due diligence and takedown requests.

The 2021 Information Technology (Intermediary Guidelines and Digital Media Ethics
Code) Rules further strengthened this provision, requiring intermediaries to:

• Appoint grievance officers.

 • Remove harmful content within specified timelines.

• Conduct due diligence on user-generated content.

10. Legal Recognition of E-Commerce and Online Transactions

By validating electronic contracts and records, the IT Act facilitates the growth of e-
commerce in India. It removes barriers to conducting business online and enables the use of
electronic methods for entering into agreements, fulfilling obligations, and maintaining
records.

11. Extraterritorial Jurisdiction

Section 75 of the IT Act extends its applicability to offenses committed outside India if they
involve a computer system or network located in India. This provision ensures that
perpetrators of cybercrimes affecting Indian citizens or entities can be prosecuted,
irrespective of their location.

12. Admissibility of Electronic Evidence

Under Section 65B of the Indian Evidence Act, 1872, electronic records and documents are
admissible as evidence in courts, provided they meet the prescribed standards of authenticity.
This provision complements the IT Act by ensuring that electronic data can be relied upon in
legal proceedings.

13. Protection of Intellectual Property in Cyberspace

The IT Act indirectly aids in protecting intellectual property rights (IPR) in the digital domain
by penalizing unauthorized reproduction or distribution of copyrighted material, such as
software, music, videos, and e-books. While India’s Copyright Act explicitly governs IPR,
the IT Act strengthens its enforcement in cyberspace.

14. Protection Against Data Theft

Section 43(b) penalizes the unauthorized downloading, copying, or extraction of data from a
computer or network. This ensures that businesses and individuals are protected from data
theft, which is particularly crucial in the era of big data and cloud computing.

15. Security Practices for Corporations (Section 43A)

Section 43A imposes liability on corporations handling sensitive personal data if they fail to
implement reasonable security practices and procedures, resulting in wrongful loss or
gain. This provision ensures accountability among organizations and promotes the adoption
of robust cybersecurity measures.

16. Provisions for Blocking Websites

Under Section 69A, the Act empowers the government to issue directions for blocking public
access to websites or online content if it is deemed necessary for:

• Sovereignty and integrity of India.

 • Security of the state.

• Friendly relations with foreign states.

• Public order.

This provision was famously invoked in cases like the blocking of TikTok and other apps
due to national security concerns.

17. Interception and Monitoring of Communication

Section 69 permits government authorities to intercept, monitor, or decrypt digital

communications under specific circumstances, such as national security, public order, or
prevention of crime. This provision aims to strike a balance between individual privacy and
the state's need for surveillance in the public interest.

18. Provisions for E-Commerce

The Act facilitates e-commerce by legitimizing electronic contracts, signatures, and records,
allowing businesses to operate online efficiently. It also addresses challenges related to fraud,
online payments, and the protection of consumer rights.

19. Regulation of Cyber Cafes

Section 67C mandates cyber cafes to maintain logs and records of users accessing their
services, ensuring accountability in the use of public internet services.

20. Regulation of Electronic Contracts

The Act recognizes electronic contracts as legally enforceable, provided they comply with
conditions laid out under Section 10A. This includes contracts formed through electronic
means such as emails, online forms, or e-signatures. Businesses and individuals can enter into
legally binding agreements without physical documentation, making transactions faster and
more efficient.

Challenges and Limitations

While the IT Act is a comprehensive piece of legislation, it has certain limitations:

• Evolving Technology: The rapid pace of technological advancement often outpaces the
provisions of the Act, necessitating frequent updates.

• Limited Scope of Data Privacy: The Act’s provisions on data protection are inadequate
compared to global standards like the GDPR.

• Enforcement Issues: Implementing the provisions effectively requires significant

resources, trained personnel, and coordination between agencies.

• Jurisdictional Conflicts: Cyberspace operates beyond borders, making it challenging to

address cross-border cybercrimes effectively.

Conclusion
The Information Technology Act, 2000, is a cornerstone of India’s legal framework for
regulating digital activities, promoting e-governance, and addressing cybercrimes. Its salient
features, such as legal recognition of electronic records, regulation of certifying authorities,
and provisions against cyber offenses, have significantly contributed to the growth of the
digital economy and enhanced cybersecurity.

7. Examine the development and importance of e-commerce. 10 or Note on e-

commerce. 6

Ans) E-commerce, or electronic commerce, refers to the buying and selling of goods and
services over the internet. It encompasses a wide range of activities, including online
shopping, electronic payments, digital banking, supply chain management, and online
marketing. The development of e-commerce has revolutionized global trade, breaking
geographical barriers and enabling businesses to reach consumers in the remotest corners of
the world. E-commerce is not merely an economic phenomenon but also a legal and
regulatory challenge, as the digital landscape raises issues of data security, contract
enforcement, consumer protection, and jurisdiction.

In India, the Information Technology Act, 2000, plays a pivotal role in facilitating the
growth of e-commerce by providing a legal framework for electronic transactions, digital
signatures, and electronic records. The IT Act ensures the validity of e-contracts, promotes
trust in digital commerce, and addresses issues like cybersecurity and consumer protection,
which are integral to the development of e-commerce.

I. Development of E-Commerce

The evolution of e-commerce can be attributed to advancements in technology, increased

internet penetration, and changing consumer behavior. Globally, e-commerce began in the
early 1990s with the advent of the internet and has since grown exponentially. In India, the
development of e-commerce can be categorized into the following phases:

a) Early Stages (1990s to Early 2000s): During the initial stages, e-commerce in India was
limited to business-to-business (B2B) transactions. With low internet penetration and
limited technological infrastructure, consumer-facing platforms like online shopping were
still nascent. Companies such as Rediff.com and Indiatimes were among the pioneers in
providing limited e-commerce services.

b) Growth Phase (Mid-2000s to Early 2010s): The growth of e-commerce accelerated

with the introduction of affordable smartphones, improved internet connectivity, and the
entry of global players like Amazon. Indian companies such
as Flipkart and Snapdeal also began to emerge as significant players. Payment systems
like Paytm and digital wallets gained traction, enabling secure online transactions.

c) Mature Phase (2015 Onwards): The rapid penetration of 4G services, driven by

providers like Jio, significantly increased access to the internet. The government’s
initiatives, such as Digital India, further boosted e-commerce by encouraging online
transactions and digital literacy. The emergence of sectors like online grocery delivery
(BigBasket), food delivery (Zomato, Swiggy), and online education (Byju’s) marked a
diversification of e-commerce platforms.
d) Post-Pandemic Boom (2020 Onwards): The COVID-19 pandemic accelerated the
adoption of e-commerce as businesses and consumers shifted to digital platforms due to
lockdowns and social distancing. The reliance on platforms such as Amazon, Flipkart,
and Myntra for essential goods, as well as the growth of smaller regional e-commerce
platforms, demonstrated the resilience of the sector.

II. Importance of E-Commerce

E-commerce has become an indispensable part of the global economy, transforming

traditional business models and consumer behavior. Its importance can be examined from
economic, consumer, and regulatory perspectives.

1. Economic Growth and Business Expansion

E-commerce has significantly contributed to economic growth by providing businesses with

access to larger markets. It has reduced the costs associated with physical stores, allowing
startups and small businesses to compete with established players. For instance, platforms
like Amazon and Flipkart enable local vendors to sell their products nationally and
internationally.

2. Convenience for Consumers

E-commerce offers unparalleled convenience to consumers, enabling them to shop from the
comfort of their homes. With features like 24/7 availability, personalized recommendations,
and quick delivery services, e-commerce has revolutionized the retail experience.

3. Promoting Financial Inclusion

Digital payment systems, which are integral to e-commerce, have contributed to financial
inclusion by providing banking access to underserved populations. Platforms
like Paytm, Google Pay, and UPI (Unified Payments Interface) have transformed the way
transactions are conducted, even in rural areas.

4. Employment Generation

E-commerce has created millions of jobs in logistics, warehousing, technology, and customer
service. The growth of ancillary sectors like digital marketing and data analytics is also
closely tied to the rise of e-commerce.

5. Technological Advancements

The growth of e-commerce has driven innovation in areas such as artificial intelligence (AI),
machine learning (ML), and blockchain. Personalized marketing, predictive inventory
management, and secure payment gateways are examples of technologies developed to
enhance the e-commerce experience.

6. Environmental Benefits

By promoting paperless transactions and optimizing supply chains, e-commerce can

contribute to environmental sustainability. For instance, the reduction in the use of paper
receipts and catalogs is a direct benefit of online retail.
III. Role of the Information Technology Act, 2000, in E-Commerce

The Information Technology Act, 2000, provides the necessary legal foundation for the
development of e-commerce in India. By recognizing electronic records, digital signatures,
and online contracts, the Act ensures that e-commerce transactions are legally valid and
enforceable. Key provisions of the IT Act relevant to e-commerce include:

1. Legal Recognition of Electronic Records and Contracts

Under Sections 4 and 10A, electronic records and electronic contracts are granted the same
legal validity as physical records and written agreements. This provision is crucial for e-
commerce platforms where transactions are conducted entirely online.

For instance, when a customer purchases a product on Amazon and accepts the terms and
conditions, the electronic contract between the buyer and seller is legally binding.

2. Digital Signatures

Section 5 of the Act recognizes digital signatures as a valid method of authentication for
electronic transactions. This ensures the authenticity and integrity of e-commerce activities,
such as signing agreements or verifying identities.

3. Regulation of Certifying Authorities

The IT Act establishes the framework for Certifying Authorities (CAs) that issue digital
signature certificates. This enhances trust in e-commerce by ensuring that digital signatures
are secure and reliable.

4. Penalties for Cyber Offenses

To safeguard e-commerce platforms and consumers, the Act prescribes penalties for
cybercrimes such as hacking (Section 66), identity theft (Section 66C), and phishing
(Section 66D). This ensures a secure environment for online transactions.

5. Data Protection

Although the IT Act does not have comprehensive data protection provisions, Section
43A imposes liability on entities handling sensitive personal data if they fail to implement
reasonable security practices. This is particularly relevant for e-commerce platforms that
collect consumer data.

6. Consumer Protection

The IT Act complements the Consumer Protection Act, 2019, by ensuring accountability
and transparency in e-commerce transactions. For instance, platforms must disclose product
information, terms of sale, and grievance redressal mechanisms.

7. Cyber Appellate Tribunal

Disputes related to e-commerce transactions can be resolved through the Cyber Appellate
Tribunal, established under the IT Act. This provides a faster and more efficient alternative
to traditional courts.
IV. Challenges in E-Commerce Despite the IT Act

Despite the supportive legal framework provided by the IT Act, certain challenges persist in
the e-commerce ecosystem:

• Data Privacy Concerns: The lack of comprehensive data protection legislation poses
risks to consumer privacy, as e-commerce platforms collect vast amounts of personal
data.

• Cross-Border Transactions: Jurisdictional issues arise in international e-commerce

transactions, making dispute resolution complex.

• Cybersecurity Threats: E-commerce platforms remain vulnerable to hacking, data

breaches, and online fraud despite the provisions of the IT Act.

• Consumer Awareness: Many consumers are unaware of their rights in e-commerce

transactions, leading to exploitation.

Conclusion

E-commerce has transformed the global and Indian economies, offering unprecedented
opportunities for businesses and consumers alike. The Information Technology Act, 2000,
has been instrumental in facilitating the growth of e-commerce by providing legal recognition
to electronic transactions, ensuring cybersecurity, and addressing cybercrimes.The IT Act,
along with complementary legislation like the Consumer Protection Act, 2019, lays a strong
foundation for e-commerce in India.

8. What are the essential of E-contract? 10 or Note on E-contracts. 6 (2)

Ans) With the rapid advancements in technology and the rise of the digital economy,
traditional methods of entering into contracts have evolved to include electronic contracts,
commonly referred to as e-contracts. E-contracts are agreements created and executed
electronically, without the need for physical presence or documentation. These contracts are
legally recognized under Indian law, thanks to the provisions of the Information Technology
Act, 2000, and the Indian Contract Act, 1872.

E-contracts have gained significant importance in the era of e-commerce, enabling businesses
and consumers to form legally binding agreements over the internet. Examples of e-contracts
include terms and conditions agreed to while purchasing goods online, click-wrap
agreements, and service-level agreements entered into by businesses electronically.

The Information Technology Act, 2000, provides the legal foundation for e-contracts in
India by recognizing the validity of electronic records and digital signatures, ensuring that
electronic agreements are enforceable in the same way as traditional paper-based contracts.

I. Definition of E-Contract

An e-contract is a legally binding agreement created, executed, and enforced electronically.

These contracts may involve email exchanges, online forms, or platforms where users accept
terms and conditions by clicking “I Agree.” E-contracts are governed by the general
principles of contract law under the Indian Contract Act, 1872, but their formation and
enforceability are facilitated by provisions in the Information Technology Act, 2000.
II. Legal Recognition of E-Contracts Under the IT Act, 2000

The Information Technology Act, 2000, provides a legal framework for the recognition and
enforceability of e-contracts. The following sections are particularly relevant:

1. Section 4: Legal recognition is given to electronic records, stating that if a law

requires a document to be in writing, it is satisfied by an electronic record as long as it
is accessible for subsequent reference.

2. Section 10A: This section explicitly validates electronic contracts, stating that
agreements formed electronically cannot be denied enforceability solely because they
were created electronically.

3. Section 5: Digital signatures are recognized as a valid means of authentication for

electronic agreements, ensuring the authenticity and integrity of e-contracts.

4. Section 11: Outlines the requirements for attribution of electronic records, confirming
the identity of the parties involved in e-contracts.

5. Section 12: Deals with the acknowledgment of electronic records, ensuring clarity in
communication between parties entering into an e-contract.

III. Essentials of E-Contracts

E-contracts must fulfill the basic requirements of a valid contract as stipulated under
the Indian Contract Act, 1872. Additionally, the IT Act, 2000, provides specific provisions
for their recognition and enforcement. The essential elements of e-contracts are as follows:

1. Offer and Acceptance

An e-contract must involve a valid offer and an unconditional acceptance of the offer. In the
context of e-contracts, this process often takes place through:

• Email communication.

• Clicking on an “I Agree” button in click-wrap agreements.

• Filling out and submitting online forms.

For example, when a user purchases goods on Amazon, the terms of the sale displayed on the
website constitute the offer, and the user’s act of clicking “Buy Now” constitutes acceptance.

2. Lawful Consideration

As with traditional contracts, an e-contract must be supported by lawful consideration. This

means that something of value must be exchanged between the parties, such as goods,
services, or money. Consideration in e-contracts is usually agreed upon electronically, such as
agreeing to pay an amount for an online subscription.

3. Competency of Parties
The parties entering into an e-contract must be legally competent as per Sections 11 and 12
of the Indian Contract Act, 1872. For instance:

• Both parties must be of sound mind.

• They must not be minors.

• They must not be disqualified by law from entering into contracts.

In the case of e-contracts, verifying the competency of parties electronically can be

challenging and often requires authentication mechanisms like digital signatures.

4. Free Consent

The consent of the parties must be free and not obtained through coercion, fraud,
misrepresentation, undue influence, or mistake, as per Section 13 of the Indian Contract Act.
In the digital context, click-wrap agreements often include clauses stating that the user
consents freely to the terms by clicking “I Agree.”

However, courts have scrutinized whether such agreements truly ensure free consent,
especially in cases where users are not given the opportunity to negotiate or understand the
terms fully.

5. Lawful Object

An e-contract must be created for a lawful purpose. Agreements for activities prohibited by
law, such as gambling or sale of illegal goods, are void even if entered into electronically.

6. Certainty and Clarity

The terms of the e-contract must be clear, definite, and certain. Ambiguity or vagueness in the
terms may render the contract unenforceable.

7. Intention to Create Legal Obligations

The parties must intend to create legal relations. This intention is often expressed explicitly in
the terms and conditions of the e-contract.

8. Authentication Through Digital Signatures

Section 5 of the IT Act recognizes digital signatures as a valid form of authentication for e-
contracts. Digital signatures ensure the authenticity of the document and the identity of the
parties involved.

For example, a digital signature may be used to sign employment contracts or lease
agreements electronically.

9. Record-Keeping and Accessibility

Section 7 of the IT Act emphasizes that electronic records must be capable of being stored
and reproduced for subsequent reference. This ensures that e-contracts are accessible and
verifiable in case of disputes or enforcement actions.
10. Compliance with IT Act Provisions

An e-contract must comply with the provisions of the IT Act to ensure its validity. For
instance:

• The contract must not involve prohibited content under Section 67 (such as obscene or
illegal material).

• It must meet the attribution and acknowledgment requirements under Sections 11 and 12.

IV. Types of E-Contracts

E-contracts can take various forms depending on their nature and the medium through which
they are executed. Common types include:

• Click-Wrap Agreements:
These agreements require the user to click on an “I Agree” button to accept the terms and
conditions of the contract. For example, when installing software or signing up for a
service.

• Browse-Wrap Agreements:
These agreements are implied by the user’s continued use of a website. The terms are
usually available through a hyperlink, and no explicit acceptance is required.

• Shrink-Wrap Agreements:
These agreements are used in software licensing, where the terms are included in the
packaging, and the user accepts them by opening the package or using the software.

• E-Mail Contracts:
Contracts formed through email exchanges where the offer and acceptance are
communicated electronically.

• Electronic Data Interchange (EDI):

Used in B2B transactions, EDI involves the exchange of structured data between
businesses to form contracts.

V. Legal Challenges and Concerns in E-Contracts

While e-contracts have facilitated the growth of e-commerce and digital transactions, they
also pose several legal challenges:

• Lack of Free Consent:Click-wrap and browse-wrap agreements often raise questions

about whether the user’s consent was truly informed and free.

• Authentication and Security: Verifying the identity of parties and ensuring the integrity
of electronic records is critical, especially in the absence of robust digital signature
mechanisms.

• Jurisdictional Issues: Cross-border e-contracts often raise jurisdictional disputes,

particularly regarding the applicable law and forum for resolving disputes.
• Consumer Awareness: Many consumers may not fully understand the terms of e-
contracts, leading to potential exploitation.

Conclusion

E-contracts are an integral part of the digital age, enabling businesses and individuals to enter
into agreements seamlessly and efficiently. The Information Technology Act, 2000,
provides a robust legal framework for the recognition and enforcement of e-contracts,
ensuring their validity and authenticity. By incorporating provisions for electronic records,
digital signatures, and secure communication, the Act has facilitated the growth of e-
commerce and digital transactions in India.

9. Note on protection of computer software. 6 or Note on Copyright in Micro software.

6

Ans) The protection of computer software has become an essential aspect of intellectual
property law in the digital era. With the increasing reliance on software for personal,
business, and governmental functions, safeguarding the rights of creators and preventing
unauthorized use, duplication, or distribution has gained paramount importance. Software,
being an intangible asset, poses unique challenges for legal protection, as it involves both
creative and functional elements.

In India, computer software is primarily protected under the Copyright Act, 1957, which was
amended in 1999 to include provisions specific to software. Additionally, the Information
Technology Act, 2000, addresses certain issues concerning software security, cybercrime,
and unauthorized access to software systems. Together, these legal frameworks aim to
provide robust protection to software creators while balancing public access and innovation.

I. Legal Framework for Software Protection in India

1. Copyright Protection Under the Copyright Act, 1957

The primary legal mechanism for protecting computer software in India is the Copyright
Act, 1957, as amended in 1999. Software is classified as a literary work under Section 2(o)
of the Act and is entitled to copyright protection.

• Rights Granted to Software Owners:

Copyright protection grants software creators exclusive rights, including:

o The right to reproduce the software.

o The right to distribute copies.

o The right to modify or adapt the software.

o The right to publicly communicate or display the software.

• Duration of Protection:
Copyright protection for software lasts for 60 years, starting from the year following
the death of the creator in the case of individual ownership, or from the year of
publication in the case of corporate ownership.
 • Infringement and Remedies:
Unauthorized copying, distribution, or modification of software constitutes
infringement. Remedies include civil actions for injunctions, damages, or account of
profits, as well as criminal penalties under Section 63 of the Copyright Act.

2. Protection Under the Information Technology Act, 2000

The Information Technology Act, 2000, complements the Copyright Act by addressing
issues related to cybersecurity and unauthorized access to software systems.

• Unauthorized Access (Section 43):

Section 43 imposes penalties for unauthorized access to computer systems, including
software. Any person who accesses, downloads, or extracts data without permission is
liable to pay compensation.

• Hacking (Section 66):

Unauthorized access with the intent to cause harm or damage is classified as hacking
under Section 66. This includes gaining unauthorized access to software systems or
altering the code without permission.

• Data Protection (Section 43A):

Section 43A requires companies to implement reasonable security practices to protect
sensitive data, including software stored or processed on their systems. Failure to do
so may result in liability for damages.

• Cybercrime Provisions:
The IT Act also addresses cybercrimes like software piracy, identity theft, and
phishing, which indirectly affect software protection.

II. Challenges in Protecting Computer Software

Despite the legal mechanisms in place, several challenges persist in the protection of
software:

• Piracy and Counterfeiting: Software piracy, involving unauthorized copying and

distribution, remains a significant issue. Websites offering pirated software and cracks are
easily accessible, making enforcement difficult.

• Jurisdictional Issues: The global nature of software distribution and online piracy
complicates jurisdictional enforcement. A pirated copy hosted on a server in another
country may not be easily actionable under Indian law.

• Technological Evolution: Rapid advancements in technology, such as cloud computing

and software-as-a-service (SaaS), have created new challenges for protecting software.
The traditional copyright framework may not adequately address these innovations.

• Difficulty in Patent Protection: The exclusion of software per se from patentability in

India limits the options for protection. While copyright safeguards the expression of
software, it does not protect its underlying algorithms or functionality.
• Open-Source Software Issues: Open-source software, while promoting collaboration
and innovation, poses challenges in ensuring compliance with licensing terms and
preventing misuse.

• Cybersecurity Threats: Cyberattacks targeting software systems, including ransomware

and malware, highlight the need for robust cybersecurity measures alongside intellectual
property protection.

III. Judicial Interpretation and Case Law

Indian courts have played a significant role in interpreting the scope of software protection:

a) Tata Consultancy Services v. State of Andhra Pradesh (2005): The Supreme Court
held that software can be classified as goods if it is supplied on physical media like CDs.
This decision highlighted the dual nature of software as both intellectual property and a
tangible product.

b) Eastern Book Company v. D.B. Modak (2008): The Supreme Court clarified that
originality in copyright law requires a "modicum of creativity." This principle applies to
software, emphasizing the need for creativity in coding.

c) Yahoo! Inc. v. Akash Arora (1999): The Delhi High Court addressed issues of passing
off in the digital domain, emphasizing the importance of protecting software-related
trademarks.

Conclusion

The protection of computer software is vital for fostering innovation, promoting economic
growth, and ensuring fair competition in the digital economy. In India, the Copyright Act,
1957, and the Information Technology Act, 2000, together provide a robust legal framework
for safeguarding software. While copyright protects the creative expression of software, the
IT Act addresses issues like unauthorized access, piracy, and cybersecurity.

10. Explain E-governance and electronic signature certificate. 10

Ans) E-governance and electronic signature certificates have revolutionized the functioning
of governments and businesses by enabling efficient, transparent, and secure digital
interactions. E-governance refers to the use of information and communication technology
(ICT) by governments to enhance the delivery of services, ensure transparency, and promote
the active participation of citizens. It is a cornerstone of the Digital India initiative, aimed at
digitizing governance processes.

Electronic signature certificates, on the other hand, play a crucial role in ensuring the
authenticity, integrity, and security of electronic transactions. The Information Technology
Act, 2000 (IT Act) provides a legal framework for both e-governance and electronic
signatures, ensuring their validity, recognition, and enforceability in India.

I. E-Governance: Definition and Scope

E-governance refers to the application of digital tools and electronic means to streamline
governance processes, promote transparency, and deliver services efficiently to citizens and
businesses. It encompasses the digitization of government functions, including record-
keeping, communication, and service delivery. Under the Information Technology Act,
2000, Sections 6, 7, and 8 deal with the implementation of e-governance and the legal
recognition of electronic records and signatures in governance processes.

The scope of e-governance extends to:

a. Electronic Service Delivery: Digital platforms are used to provide public services, such as
issuing certificates, processing tax returns, and managing welfare schemes.
b. Government-to-Citizen (G2C) Interaction: E-governance facilitates direct
communication between the government and citizens, enhancing accessibility and reducing
bureaucratic hurdles.
c. Government-to-Business (G2B) Interaction: Digital platforms simplify regulatory
compliance for businesses, such as filing taxes and obtaining licenses.
d. Government-to-Government (G2G) Interaction: E-governance promotes seamless
communication and collaboration between different departments and levels of government.

II. Legal Framework for E-Governance Under the IT Act, 2000

The IT Act, 2000, lays down specific provisions to enable and regulate e-governance:

a. Legal Recognition of Electronic Records (Section 4)

Section 4 states that any law requiring information to be in written, typewritten, or printed
form is satisfied if the information is provided in the form of an electronic record, as long as
it is accessible for future reference. This ensures that electronic documents are treated on par
with physical documents in legal and administrative processes.

For example, electronic copies of property registration documents or tax filings are legally
valid under this provision.

b. Legal Recognition of Digital Signatures (Section 5)

Section 5 provides that digital signatures are legally valid if they are affixed in a manner
consistent with the provisions of the Act. This allows the authentication of electronic records,
ensuring their integrity and origin.

c. Use of Electronic Records and Digital Signatures in Government (Section 6)

Section 6 specifically enables the government to accept applications, issue licenses, and
maintain records electronically. It provides the legal foundation for digitizing governance
processes, such as:

• Filing income tax returns online.

• Applying for driving licenses through digital platforms.

• Accessing public services on e-governance portals like DigiLocker.

d. Retention of Electronic Records (Section 7)

Section 7 ensures that electronic records can be retained in digital form as long as:
 • The information remains accessible for future reference.

• The records are preserved in the format in which they were originally generated or
transmitted.

This provision facilitates the maintenance of digital archives and eliminates the need for
physical storage.

e. Publication of Official Gazette in Electronic Form (Section 8)

Section 8 allows the publication of official government documents, such as notifications and
rules, in electronic form. This promotes transparency and ensures timely dissemination of
information to the public.

III. Advantages of E-Governance

E-governance offers several benefits to both citizens and governments:

a. Efficiency: Digital platforms reduce administrative delays, making government services

faster and more efficient.
b. Transparency: Citizens can track applications and grievances online, reducing
opportunities for corruption.
c. Accessibility: E-governance platforms, such as MyGov and UMANG, provide citizens
with 24/7 access to services, irrespective of their location.
d. Cost-Effectiveness: Digitization reduces reliance on paper-based processes, saving
resources for governments and citizens.

IV. Electronic Signature Certificate: Definition and Importance

An electronic signature certificate is a digital equivalent of a handwritten signature, used to

authenticate the identity of an individual or entity in electronic transactions. It ensures that
the electronic record or document has not been tampered with and that it originates from a
verified source.

Under the IT Act, 2000, Sections 2(ta), 3, and 5 deal with electronic and digital signatures.
A certifying authority, licensed under the Act, issues digital signature certificates to verify
the authenticity of the signature.

V. Legal Provisions for Electronic Signature Certificates Under the IT Act, 2000

a. Electronic and Digital Signatures (Section 3)

Section 3 defines the use of digital signatures to authenticate electronic records. A digital
signature is created using an asymmetric cryptosystem and a hash function. This ensures:

• Authentication: Verifying the identity of the signatory.

• Integrity: Ensuring that the document has not been altered after signing.

For example, when filing tax returns on the Income Tax Department’s portal, users are
required to authenticate their filings with a digital signature certificate.
b. Legal Recognition of Digital Signatures (Section 5)

Section 5 provides that electronic records authenticated using a digital signature are
considered valid and enforceable. This ensures that agreements, contracts, or filings signed
electronically are legally binding.

c. Role of Certifying Authorities (Sections 17-34)

Certifying authorities (CAs) are licensed entities authorized to issue digital signature
certificates. They ensure that the digital signature is securely linked to the signatory and can
be verified using public key infrastructure (PKI).

d. Classes of Digital Signature Certificates

The IT Act allows the issuance of different classes of digital signature certificates for varied
purposes:

• Class 1: For individuals and low-assurance transactions.

• Class 2: For business-level transactions, such as income tax filing.

• Class 3: For high-security transactions, such as e-tendering or online auctions.

VI. Importance of Electronic Signature Certificates

Electronic signature certificates play a vital role in enabling secure and trustworthy electronic
transactions:

a. Authentication and Security: Digital signatures confirm the identity of the signatory and
protect against forgery.
b. Legal Enforceability: Digital signatures ensure that electronic agreements are legally
binding under the IT Act.
c. Data Integrity: The use of cryptographic techniques ensures that signed documents cannot
be tampered with after signing.
d. Time and Cost Savings: Digital signatures eliminate the need for physical documentation,
reducing administrative delays and costs.

VII. Examples of E-Governance and Digital Signature Usage

India has implemented several e-governance initiatives that rely on electronic records and
digital signatures:

a. DigiLocker: A cloud-based platform for storing and sharing digital documents, such as
driving licenses and educational certificates.
b. E-Tendering: Government procurement processes, such as filing bids online, require Class
3 digital signature certificates.
c. Income Tax Filing: Taxpayers must use digital signatures to electronically authenticate
their returns.

VIII. Challenges in E-Governance and Digital Signatures

Despite their advantages, e-governance and digital signatures face certain challenges:
a. Digital Divide: Limited internet access and digital literacy in rural areas hinder the
widespread adoption of e-governance.
b. Cybersecurity Threats: Digital systems are vulnerable to hacking, phishing, and data
breaches.
c. Interoperability Issues: Compatibility between different government platforms and
private systems can pose challenges.
d. Cost of Digital Signature Certificates: The cost of obtaining and renewing digital
signature certificates can deter individuals and small businesses.

Conclusion

E-governance and electronic signature certificates are transformative tools that have
enhanced the efficiency, transparency, and accessibility of governance processes in India.
The Information Technology Act, 2000, provides a robust legal framework for their
implementation, ensuring that electronic records and signatures are recognized and
enforceable. While challenges such as the digital divide and cybersecurity risks remain,
initiatives like Digital India aim to address these issues and promote the adoption of digital
tools across the country.

11. Note on data protection in cyberspace. 6 (2)

Ans) Data protection in cyberspace refers to the safeguarding of personal and sensitive data
in the digital realm, where information is created, stored, processed, and transmitted
electronically. With the increasing reliance on digital technologies for communication,
commerce, and governance, the volume of data generated and shared online has grown
exponentially. However, the borderless nature of cyberspace has also given rise to significant
concerns about data breaches, unauthorized access, cybercrimes, and privacy violations.

In India, data protection in cyberspace is primarily governed by the Information Technology

Act, 2000 (IT Act), supplemented by sectoral regulations and judicial precedents. While the
IT Act addresses the protection of sensitive personal data and imposes obligations on
intermediaries and businesses, the absence of a comprehensive data protection law remains a
pressing challenge. However, developments such as the proposed Digital Personal Data
Protection Bill, 2023, signal India’s intent to adopt a robust legal framework for data
protection.

I. Legal Framework for Data Protection in Cyberspace: The IT Act, 2000

The Information Technology Act, 2000, serves as the cornerstone of India’s legal
framework for cybersecurity and data protection. Although the IT Act does not
comprehensively address data protection like laws such as the EU General Data Protection
Regulation (GDPR), it includes several provisions to safeguard personal and sensitive
information in cyberspace.

Key Provisions of the IT Act, 2000

a. Section 43A: Compensation for Failure to Protect Sensitive Personal Data

Section 43A of the IT Act imposes liability on any body corporate that fails to implement
reasonable security practices and procedures to protect sensitive personal data or information
(SPDI). If such negligence causes wrongful loss or wrongful gain, the affected individual is
entitled to compensation.

The term "sensitive personal data or information" (SPDI) is further defined in the rules
issued under this section, known as the Information Technology (Reasonable Security
Practices and Procedures and Sensitive Personal Data or Information) Rules, 2011.
SPDI includes data such as passwords, financial information, medical records, and biometric
data.

Businesses handling SPDI must comply with industry-standard security practices, such as
ISO/IEC 27001.

b. Section 72: Breach of Confidentiality and Privacy

Section 72 penalizes unauthorized disclosure of information obtained during the course of
exercising powers under the IT Act. If a person gains access to any information and discloses
it without the consent of the person to whom it pertains, they can be punished with
imprisonment for up to two years, or a fine of up to ₹1 lakh, or both.

c. Section 72A: Punishment for Disclosure of Information in Breach of Lawful Contract

Section 72A specifically addresses cases where an individual entrusted with personal
information under a lawful contract discloses such information without consent, causing
wrongful loss or gain. The penalty includes imprisonment of up to three years, a fine, or both.

d. Section 69: Interception, Monitoring, and Decryption of Information

Section 69 empowers the government to intercept, monitor, or decrypt any information
transmitted through any computer resource in cases where it is necessary for the sovereignty,
integrity, or security of India, public order, or to prevent offenses. While this provision aims
to ensure national security, it raises concerns about surveillance and the right to privacy.

e. Section 79: Intermediary Liability and Due Diligence

Intermediaries such as internet service providers, social media platforms, and e-commerce
websites are protected from liability for third-party content under Section 79, provided they
comply with certain conditions. These conditions include:

• Implementing due diligence.

• Responding to takedown notices for content that violates laws. The Intermediary
Guidelines and Digital Media Ethics Code Rules, 2021, issued under this section,
impose additional obligations on intermediaries, such as appointing grievance officers
and enabling traceability of messages.

II. Data Protection Challenges in Cyberspace

Despite the legal safeguards under the IT Act, the protection of data in cyberspace faces
several challenges:

• Cybersecurity Threats: The rise in cyberattacks such as phishing, ransomware, and

hacking poses a constant threat to the integrity and confidentiality of personal data. For
example, large-scale data breaches at companies like Facebook and LinkedIn have
exposed millions of users' personal information.
• Cross-Border Data Flows: The global nature of cyberspace complicates jurisdictional
enforcement and creates challenges for cross-border data transfers. Without harmonized
laws, sensitive data may be transferred to jurisdictions with weaker protection
frameworks.

• Surveillance and Privacy Concerns: Provisions like Section 69 of the IT Act grant the
government extensive powers to monitor and intercept data. While intended for national
security, these powers raise concerns about mass surveillance and potential misuse.

• Lack of Comprehensive Data Protection Legislation: India lacks a standalone data

protection law comparable to the EU GDPR. While the IT Act addresses specific aspects
of data protection, it does not provide a comprehensive framework for protecting personal
data, ensuring user consent, or penalizing misuse.

• Emerging Technologies: Technologies like artificial intelligence (AI), big data analytics,
and the Internet of Things (IoT) generate and process vast amounts of personal data.
These innovations outpace existing legal frameworks, creating gaps in regulation.

III. Judicial Recognition of Data Protection

Indian courts have played a crucial role in advancing the concept of data protection,
especially in the context of the right to privacy. Key judicial developments include:

a. Justice K.S. Puttaswamy v. Union of India (2017)

In this landmark case, the Supreme Court of India recognized the right to privacy as a
fundamental right under Article 21 of the Constitution. The judgment emphasized the need
for a robust data protection framework to safeguard personal information in the digital age.

b. Shreya Singhal v. Union of India (2015)

The Supreme Court struck down Section 66A of the IT Act, which criminalized offensive
online speech, on the grounds of vagueness and violation of free speech. The judgment
highlighted the importance of balancing state powers and individual freedoms in cyberspace.

IV. Proposed Developments: Digital Personal Data Protection Bill, 2023

To address the gaps in the IT Act, India has proposed the Digital Personal Data Protection
Bill, 2023. The bill introduces several key features:

• Consent-Based Data Processing: Organizations must obtain clear and informed

consent before processing personal data.

• Data Principal Rights: Users, referred to as "data principals," will have rights such
as the right to access, correct, and erase their data.

• Data Localization: The bill promotes cross-border data flow but mandates specific
conditions for processing data outside India.

• Penalties for Non-Compliance: Stringent fines are proposed for data breaches and
non-compliance with the law.

While the bill is a significant step forward, its implementation will require careful
consideration of enforcement mechanisms and alignment with global standards.
Conclusion

Data protection in cyberspace is an essential aspect of ensuring privacy, security, and trust in
the digital economy. While the Information Technology Act, 2000, provides a foundational
framework for safeguarding personal and sensitive data, it falls short of addressing the
complexities of modern data protection challenges. Judicial pronouncements and legislative
developments, such as the Digital Personal Data Protection Bill, 2023, reflect India’s
commitment to evolving its data protection regime.

12. Note on certifying authority. 6

Ans) A certifying authority (CA) plays a crucial role in the digital ecosystem by ensuring
trust and security in electronic transactions. Under the Information Technology Act, 2000 (IT
Act), certifying authorities are entities authorized to issue, manage, and revoke digital
signature certificates. These certificates are essential for verifying the identity of individuals
and entities, thereby ensuring the authenticity and integrity of electronic communications and
records.

I. Definition and Role of Certifying Authorities

A certifying authority is a trusted third party that issues digital signature certificates to
individuals, organizations, or systems, thereby verifying their identity and enabling secure
digital communication. The IT Act recognizes digital signatures as a legitimate means of
authentication under Section 3, and certifying authorities are responsible for issuing these
certificates in accordance with the rules and regulations laid down under the Act.

The primary role of a certifying authority is to:

• Verify the identity of applicants for digital signature certificates.

• Issue, suspend, and revoke digital signature certificates.

• Maintain a repository of digital certificates for public reference.

• Ensure compliance with security and operational guidelines.

II. Legal Framework for Certifying Authorities Under the IT Act, 2000

The IT Act, 2000, extensively regulates certifying authorities under Chapter VI (Sections 17
to 34). The framework establishes the responsibilities, operational procedures, and oversight
mechanisms for certifying authorities in India.

1. Appointment of the Controller of Certifying Authorities (CCA)

Under Section 17, the Central Government appoints a Controller of Certifying Authorities
(CCA) to oversee the activities of certifying authorities. The CCA functions as the regulatory
authority responsible for:

• Licensing certifying authorities.

• Establishing and enforcing compliance with rules and standards.

 • Acting as the central repository of digital signatures.

The CCA operates under the authority of the Ministry of Electronics and Information
Technology (MeitY) and serves as the apex body for ensuring the reliability and security of
digital signature systems in India.

2. Licensing of Certifying Authorities (Section 21)

No entity can function as a certifying authority without obtaining a license from the
CCA. Section 21 outlines the procedure for licensing, which includes:

• Submission of an application in the prescribed form.

• Payment of the required fees.

• Meeting the eligibility criteria, such as possessing adequate infrastructure, financial

stability, and expertise in digital signature systems.

The license is granted for a specified period and may be renewed or revoked under certain
conditions.

3. Functions of Certifying Authorities (Section 23)

Section 23 specifies the core functions of certifying authorities, which include:

• Issuing digital signature certificates to applicants after verifying their identity.

• Publishing the certificates in a public repository for reference.

• Maintaining accurate records of issued, suspended, and revoked certificates.

• Ensuring the confidentiality and security of the data used for digital signatures.

Certifying authorities must follow the procedures and guidelines prescribed by the CCA to
ensure the integrity and reliability of the certificates they issue.

4. Suspension and Revocation of Certificates (Sections 24 and 25)

Certifying authorities have the authority to suspend or revoke a digital signature certificate
under specific circumstances:

• Suspension (Section 24): A certificate may be temporarily suspended if there is a

breach of terms or a dispute regarding its validity.

• Revocation (Section 25): A certificate may be permanently revoked if the subscriber’s

private key is compromised or if the subscriber fails to comply with the terms of
issuance.

The CA is required to notify the affected parties and update the certificate repository to reflect
the suspension or revocation.

5. Duties of Certifying Authorities (Section 30)

Section 30 outlines the general duties of certifying authorities, including:

• Ensuring the accuracy of the information contained in the digital signature

certificates.

• Adopting industry-standard security measures to protect subscriber information.

• Providing access to information about issued certificates and their validity status.

6. Liability of Certifying Authorities (Section 34)

Certifying authorities are held liable for any loss or damage caused due to their failure to
comply with the provisions of the IT Act. For example:

• Issuing a certificate without proper verification.

• Negligence in securing private keys. The liability ensures accountability and

reinforces trust in the digital signature system.

7. Recognizing Foreign Certifying Authorities (Section 19)

Section 19 allows the CCA to recognize foreign certifying authorities, enabling cross-border
transactions and facilitating international trade. However, such recognition is subject to
conditions prescribed by the Central Government.

III. Importance of Certifying Authorities

Certifying authorities play a vital role in the digital economy by ensuring trust and security in
electronic transactions. Their importance can be highlighted in the following contexts:

a. E-Governance

Certifying authorities enable the implementation of e-governance initiatives by providing

secure and verifiable digital signature certificates. For example, digital signatures are used in
platforms like DigiLocker and the e-filing portal for income tax returns.

b. E-Commerce

In the realm of e-commerce, certifying authorities ensure the authenticity of online

transactions, protecting businesses and consumers from fraud. For example, digital signature
certificates are used to authenticate payment gateways and secure online communications.

c. Legal Validity

Certifying authorities ensure the enforceability of digital signatures under Section 5 of the IT
Act. This is crucial for digital contracts, agreements, and other legally binding documents.

d. Cybersecurity

By adopting robust security standards, certifying authorities protect sensitive data from
cyberattacks and unauthorized access. Their role is critical in preventing identity theft and
data breaches.
In Tata Consultancy Services v. State of Andhra Pradesh (2005), the Supreme Court
recognized the role of digital technologies in modern commerce, indirectly highlighting the
importance of certifying authorities in securing electronic transactions.

IV Challenges Faced by Certifying Authorities

Despite their importance, certifying authorities face several challenges:

a. Cyber Threats: Certifying authorities are attractive targets for cyberattacks, as

compromising their infrastructure can undermine the entire digital signature system.
b. Compliance Costs: Maintaining compliance with stringent regulations and adopting
advanced security measures can be resource-intensive for certifying authorities.
c. Lack of Public Awareness: Many users are unaware of the importance of digital signature
certificates or how to obtain them, limiting the adoption of secure digital practices.
d. Cross-Border Issues: Recognizing foreign certifying authorities and ensuring
interoperability between different jurisdictions can be complex.

Conclusion

Certifying authorities are the backbone of the digital signature ecosystem, enabling secure
and trustworthy electronic transactions in governance, commerce, and other sectors.
The Information Technology Act, 2000, provides a comprehensive legal framework for their
regulation, ensuring that they operate with accountability and transparency.

13. Discuss emergence of cyber crimes. 10

Ans) The emergence of cybercrimes is one of the most significant challenges posed by the
rapid digitization of the modern world. With the proliferation of the internet, digital
technologies, and interconnected devices, criminal activities have transcended physical
boundaries, giving rise to cybercrimes. Cybercrime refers to any illegal activity committed
using computers, networks, or the internet. These crimes range from hacking, identity theft,
and online fraud to cyber terrorism and data breaches.

The increasing reliance on cyberspace for communication, commerce, governance, and

critical infrastructure has amplified the scope and impact of cybercrimes, making them a
global issue that transcends jurisdictions. The Information Technology Act, 2000 (IT Act),
serves as the primary legal framework in India for addressing cybercrimes, aiming to protect
users, businesses, and government entities from such threats.

What is Cybercrime?

Cybercrime involves any illegal act where a computer or network is used as a tool, target, or
medium to commit an offense. It can broadly be categorized into:

• Crimes Against Individuals: Identity theft, phishing, stalking, defamation, etc.

• Crimes Against Businesses or Organizations: Hacking, ransomware attacks, corporate

espionage, intellectual property theft, etc.

• Crimes Against Government or National Security: Cyber terrorism, hacking

government networks, and spreading misinformation.
Emergence of Cybercrimes: Causes and Development

The emergence of cybercrimes can be attributed to the exponential growth of digital

technologies and the internet, along with the vulnerabilities that accompany them. The
following factors have contributed to the rise of cybercrimes:

a. Increasing Digital Dependence

The widespread use of digital technologies for communication, commerce, education, and
governance has created an environment where vast amounts of data are stored and exchanged
electronically. This digital dependency makes cyberspace an attractive target for criminals
seeking to exploit vulnerabilities.

b. Anonymity and Lack of Physical Boundaries

Cyberspace offers anonymity, allowing criminals to operate without revealing their identities.
This anonymity, combined with the borderless nature of the internet, complicates detection
and enforcement, enabling cybercriminals to target victims across jurisdictions.

c. Advanced Technology

The advent of sophisticated technologies like artificial intelligence (AI), blockchain, and the
Internet of Things (IoT) has expanded the scope of cybercrimes. Cybercriminals use
advanced tools to breach systems, launch ransomware attacks, or conduct phishing
campaigns.

d. Increase in Data Generation

The digital economy generates vast amounts of personal and sensitive data, making data theft
a lucrative activity. Cybercriminals exploit security gaps in databases to steal or ransom data.

e. Lack of Awareness

Many individuals and businesses lack awareness about cybersecurity measures, making them
vulnerable to cyberattacks. Weak passwords, unsecured networks, and a lack of knowledge
about phishing scams contribute to the rise of cybercrimes.

f. Weak Legal Frameworks

While countries like India have laws to address cybercrimes, enforcement is often hindered
by jurisdictional issues, technical complexities, and lack of resources. Cybercriminals exploit
these gaps to commit offenses with minimal risk of detection or prosecution.

Conclusion

The emergence of cybercrimes is an inevitable consequence of the increasing digitization of

society. While the Information Technology Act, 2000, provides a foundational framework for
addressing cybercrimes, the ever-evolving nature of technology demands continuous updates
to the legal framework. The rise of sophisticated threats like ransomware, phishing, and cyber
terrorism underscores the need for robust cybersecurity measures and international
cooperation.
14. Note on Internet service provider. 6

Ans) An Internet Service Provider (ISP) plays a critical role in the modern digital
ecosystem by providing individuals, businesses, and organizations access to the internet. ISPs
act as intermediaries between end-users and the global network infrastructure, enabling
connectivity and data transmission. In addition to providing internet access, ISPs also offer
ancillary services such as email hosting, domain registration, and server management.

With the rapid growth of the internet and its integration into various facets of life, ISPs have
become essential players in the digital economy. However, their role as intermediaries has
also exposed them to legal and regulatory challenges, particularly concerning the misuse of
the internet for illegal activities, cybersecurity issues, and data privacy concerns.

In India, the regulatory framework governing ISPs includes the Information Technology
Act, 2000 (IT Act), along with licensing requirements under the Telecom Regulatory
Authority of India (TRAI). The IT Act imposes certain obligations and liabilities on ISPs
while also providing them with safe harbor protection under specific circumstances.

I. Role and Functions of Internet Service Providers

An ISP provides users with access to the internet by maintaining and operating the necessary
hardware and infrastructure, such as servers, routers, and data centers. Their primary
functions include:

• Internet Access: ISPs enable users to connect to the internet through broadband, fiber
optic, DSL, or wireless technologies.

• Data Transmission: ISPs facilitate the transfer of data packets between users and
websites or other servers.

• Domain Hosting and Email Services: Many ISPs offer additional services, such as
hosting websites, managing email accounts, and registering domain names.

• Content Distribution: Some ISPs also serve as content distributors by caching

frequently accessed data to improve delivery speed and efficiency.

• Network Security: ISPs implement security measures to protect users from cyber threats
such as malware, phishing, and denial-of-service attacks.

As intermediaries, ISPs must balance their responsibility to provide unrestricted internet

access with their obligation to monitor and address illegal or harmful online activities.

II. Legal Framework Governing ISPs in India

The regulatory framework for ISPs in India is shaped by the Information Technology Act,
2000, and the licensing conditions imposed by the Department of Telecommunications
(DoT) under the Indian Telegraph Act, 1885. The IT Act, in particular, defines the
obligations and liabilities of ISPs, as well as the circumstances under which they can claim
safe harbor protection.

1. Definition of Intermediary Under the IT Act

Under Section 2(w) of the IT Act, an "intermediary" is defined as any person who receives,
stores, or transmits electronic records on behalf of another person, or provides any service
with respect to such records. This broad definition includes ISPs, as they transmit and
facilitate access to electronic content over the internet.

2. Intermediary Liability and Safe Harbor Protection (Section 79)

Section 79 of the IT Act provides safe harbor protection to ISPs, shielding them from
liability for third-party content hosted or transmitted through their platforms, provided they
comply with certain conditions. This provision ensures that ISPs are not held responsible for
illegal or harmful content unless they actively participate in or contribute to its creation or
dissemination.

However, ISPs must meet the following criteria to avail themselves of safe harbor protection:

• The ISP must act as a neutral intermediary and not initiate, select, or modify the
content being transmitted.

• The ISP must exercise due diligence and comply with guidelines issued by the
government.

• Upon receiving actual knowledge or notification of unlawful content, the ISP must
take prompt action to remove or disable access to such content.

For example, if an ISP is notified of pirated content being shared on its network, it must
promptly block access to the content to avoid liability.

3. Intermediary Guidelines and Digital Media Ethics Code Rules, 2021

The Intermediary Guidelines and Digital Media Ethics Code Rules, 2021, issued under
Section 79, impose additional obligations on ISPs and other intermediaries. Key requirements
include:

• Appointment of a grievance officer to address user complaints.

• Ensuring traceability of messages for certain types of content, such as those related to
national security or public order.

• Taking down illegal content within 36 hours of receiving a government or court order.

These guidelines aim to enhance accountability and transparency among intermediaries,

including ISPs, while balancing user privacy and freedom of expression.

4. Data Privacy and Protection (Section 43A)

Section 43A of the IT Act imposes a duty on ISPs to implement reasonable security
practices and procedures to protect sensitive personal data stored or transmitted through
their systems. Failure to comply with this provision can result in liability for compensation in
cases of data breaches or unauthorized access.

5. Role in Preventing Cybercrime (Section 66)

Under Section 66, ISPs may be required to cooperate with law enforcement agencies in
investigating cybercrimes. This includes providing logs, metadata, or other technical
information necessary for tracing perpetrators of online offenses.

III. Obligations of ISPs

ISPs in India are subject to various legal and regulatory obligations to ensure the secure and
lawful operation of their services. These obligations include:

• Compliance with Licensing Terms: ISPs must obtain a Unified Access Service License
(UASL) or an Internet Service Provider License from the Department of
Telecommunications (DoT) and adhere to the terms specified in the license.

• Content Regulation: ISPs are required to monitor and restrict access to illegal or harmful
content, such as child pornography, hate speech, or content threatening national security.

• Data Retention: ISPs must retain user data, such as IP logs and usage records, for a
specific period to assist in investigations or legal proceedings.

• Network Security: ISPs must implement robust security measures to prevent

unauthorized access, hacking, or misuse of their networks.

• Transparency: ISPs must inform users about terms of service, data usage policies, and
measures taken to address complaints.

IV. Judicial Interpretation

Indian courts have recognized the critical role of ISPs in the digital ecosystem while
emphasizing the need for accountability. Key cases include:

a. Shreya Singhal v. Union of India (2015):

The Supreme Court struck down Section 66A of the IT Act, which criminalized offensive
online speech, for being vague and unconstitutional. The judgment clarified the role of
intermediaries, holding that they are not obligated to take down content unless directed by a
court or government authority.

b. MySpace v. Super Cassettes Industries Ltd. (2017):

In this case, the Delhi High Court upheld the safe harbor protection granted to ISPs under
Section 79, emphasizing that intermediaries cannot be held liable for third-party content
unless they fail to act upon receiving specific knowledge of its illegality.

V. Importance of ISPs in Cyberspace

ISPs are the backbone of the internet, enabling connectivity, communication, and commerce.
Their importance can be summarized as follows:

• Facilitating Access: ISPs ensure that users can access digital content and participate in
the digital economy.
• Promoting Innovation: By providing the infrastructure for online services, ISPs enable
the growth of e-commerce, education, and entertainment platforms.

• Ensuring Security: ISPs implement measures to protect users from cyber threats and
ensure the safe transmission of data.

Conclusion

Internet Service Providers are indispensable intermediaries in the digital age, providing the
infrastructure and services necessary for internet connectivity. The Information Technology
Act, 2000, and subsequent regulations recognize their pivotal role while imposing obligations
to ensure accountability, security, and transparency

15. Note Software patent. 6

Ans) A software patent refers to the legal protection granted for an invention related to
computer software. In India, the Patents Act, 1970, governs the protection of inventions,
including software-related inventions. However, software per se (software in isolation) is
explicitly excluded from patentability under Section 3(k) of the Patents Act. Despite this,
software can be patented in India if it is combined with hardware or demonstrates a technical
effect or technical contribution.

I. Legal Framework for Software Patents in India

The legal regime for software patents in India is shaped by the Patents Act, 1970, and
guidelines issued by the Indian Patent Office. The key provisions relevant to software
patents include:

1. Section 3(k): Exclusion of Software Per Se

Section 3(k) of the Patents Act states that “a mathematical or business method, a computer
program per se, or algorithms” are not patentable inventions. This means that software in
isolation, which performs abstract or computational tasks, cannot be patented.

The rationale behind this exclusion is that mathematical methods, business processes, and
software programs often lack tangible, technical effects and are considered intellectual
creations rather than inventions.

2. Software with Technical Contribution

While software per se is excluded, software may be patented if it:

• Is embedded in a hardware device.

• Demonstrates a technical effect or technical contribution beyond mere software

functionality.

For instance, a software that controls a washing machine, medical device, or industrial robot
can be patented because it is tied to a specific hardware and provides a technical solution to a
problem.

3. The 2016 Patent Office Guidelines

In 2016, the Indian Patent Office issued revised guidelines for examining computer-related
inventions (CRIs). These guidelines clarified that:

• Software cannot be patented in isolation.

• A computer program combined with hardware, which provides a technical solution or

improvement in technology, may be considered patentable.

For example, if software improves the efficiency of a hardware device or enhances its
functionality, it may qualify for patent protection.

III. Criteria for Patentability of Software in India

To qualify for a software-related patent in India, an invention must meet the following
criteria:

1. Novelty

The software or computer-related invention must be novel, meaning it has not been disclosed
or used publicly before the filing date of the patent application.

2. Inventive Step

The invention must involve an inventive step, demonstrating a non-obvious technical

improvement over existing technology. For instance, a software algorithm that enhances the
processing speed of a hardware device might satisfy this requirement.

3. Industrial Applicability

The invention must have industrial applicability, meaning it can be used or applied in a
practical and useful way.

4. Technical Effect

The software must produce a technical effect, such as improved hardware functionality,
enhanced data security, or efficient resource utilization. For example, software that reduces
energy consumption in a device or enhances its accuracy might be patentable.

IV. Examples of Patentable Software in India

a) Software Integrated with Hardware:

A computer program that operates an ATM machine or a medical imaging device (e.g.,
MRI scanners) can be patented because it is combined with hardware and provides a
technical effect.

b) Process Improvements:
Software that enhances the efficiency of a manufacturing process or improves data
compression techniques may qualify for a patent.

c) Embedded Systems:
Software that controls embedded systems, such as a program managing the functioning of
an automobile engine, can be patented.
V. Global Perspective on Software Patents

The approach to software patents varies significantly across jurisdictions:

a) United States:
In the U.S., software patents are granted if the software demonstrates a practical
application and passes the Alice/Mayo test established by the Supreme Court in
the Alice Corp. v. CLS Bank International (2014) case. The test requires the invention
to go beyond an abstract idea and offer a concrete technological solution.

b) European Union:
The European Patent Convention (EPC) excludes software per se from patentability.
However, if software demonstrates a technical effect, such as improving hardware
performance, it may be patentable.

c) Japan:
Japan allows software patents if they are tied to a technical field and provide industrial
applicability.

India’s approach aligns more closely with the European framework, focusing on technical
contribution and hardware integration.

VI. Advantages of Software Patents

1. Encouraging Innovation

Software patents incentivize innovation by providing legal protection to developers and

companies, ensuring they can reap the benefits of their inventions without fear of copying.

2. Competitive Edge

Patents provide a competitive advantage to businesses by granting exclusive rights to use and
commercialize the invention, creating barriers for competitors.

3. Licensing Opportunities

Patent holders can monetize their inventions by licensing them to other businesses or
developers, generating additional revenue streams.

4. Promoting Research and Development

Patents encourage investment in research and development by ensuring that businesses can
protect and profit from their innovative efforts.

VII. Criticism and Challenges of Software Patents

1. Ambiguity in Patentability:- The exclusion of "software per se" under Section 3(k)
creates ambiguity, making it challenging for developers to determine whether their software
inventions are patentable.
2. Risk of Monopolies:- Granting patents for software may lead to monopolies, stifling
innovation and competition in the software industry. For instance, broad patents on
algorithms or programming techniques can hinder technological progress.

3. High Costs :- The process of obtaining and enforcing software patents can be expensive,
especially for startups and individual developers. This may limit access to patent protection
for smaller players in the industry.

4. Rapid Technological Advancements:- Software evolves rapidly, and by the time a patent
is granted, the technology may become obsolete. This raises questions about the relevance of
software patents in a fast-paced industry.

5. Patent Trolls:- In jurisdictions like the U.S., patent trolls—entities that acquire patents
solely to sue others for infringement—exploit software patents, leading to costly litigation for
genuine developers.

VIII. Judicial Interpretation of Software Patents in India

Indian courts have addressed the issue of software patents in several cases:

a) Ericsson v. Intex (2015): The Delhi High Court upheld the patentability of software
integrated with hardware, emphasizing that technical advancements in telecommunication
systems deserve protection.

b) Ferid Allani v. Union of India (2019): The Delhi High Court clarified that software
demonstrating a technical effect or technical contribution is not excluded from
patentability under Section 3(k). The case highlighted the need to examine the
functionality and technical impact of the software when determining its patentability.

Conclusion

The protection of software through patents remains a contentious and evolving area of
intellectual property law. In India, the exclusion of software per se under Section 3(k) of
the Patents Act, 1970, ensures that abstract ideas and algorithms are not monopolized,
fostering competition and innovation. At the same time, the allowance for patenting software
integrated with hardware or demonstrating technical effects provides a balanced approach to
incentivize technological advancements.

16. Explain Internet policy of government of India. 10

Ans) The Internet Policy of India is not encapsulated in a single document but is spread
across various legislative frameworks, guidelines, and programs. It includes regulations under
the Information Technology Act, 2000, directives from the Department of
Telecommunications (DoT), initiatives like Digital India, and upcoming data protection
legislation.

India's internet policy focuses on three major aspects:

1. Accessibility and Digital Inclusion

2. Data Security and Privacy

 3. Cybersecurity and Regulation

I. Key Objectives of the Indian Internet Policy

The internet policy of the Indian government is guided by the following objectives:

1. To ensure affordable and equitable access to the internet for all sections of society.

2. To promote digital literacy and bridge the urban-rural digital divide.

3. To encourage innovation and economic growth through e-governance and e-

commerce platforms.

4. To ensure data security, user privacy, and ethical use of the internet.

5. To safeguard national security through robust cybersecurity measures and regulate

online content to curb misuse.

II. Components of India's Internet Policy

1. Digital India Initiative

The Digital India initiative, launched in 2015, is one of the most significant policy
frameworks aimed at transforming India into a digitally empowered society and knowledge
economy. It encompasses several key objectives:

• Universal Internet Access: The initiative seeks to connect rural and remote areas
with broadband services through the BharatNet Project and expand mobile
connectivity across the country.

• Digital Literacy: Programs like the Pradhan Mantri Gramin Digital Saksharta
Abhiyan (PMGDISHA) aim to provide digital literacy to millions of rural citizens.

• E-Governance and Online Services: Digital India promotes the use of the internet
for delivering government services through platforms like DigiLocker, UMANG,
and Aadhaar-based authentication.

• Make in India for Electronics: Encourages the local manufacturing of internet-

enabled devices and telecom equipment.

2. Information Technology Act, 2000

The Information Technology Act, 2000, serves as the cornerstone of India's internet policy
by providing a legal framework for electronic governance, cybersecurity, and the regulation
of internet use. Key aspects include:

• Section 66A (now struck down): Earlier criminalized offensive messages online but
was declared unconstitutional in Shreya Singhal v. Union of India (2015).

• Section 69: Empowers the government to intercept, monitor, and decrypt any
information in the interest of national security, sovereignty, or public order.
 • Section 79: Provides safe harbor protection to intermediaries like internet service
providers (ISPs) and social media platforms, subject to compliance with government
guidelines.

• Section 43A: Imposes liability on entities for failure to protect sensitive personal
data.

3. Intermediary Guidelines and Digital Media Ethics Code Rules, 2021

The Intermediary Guidelines and Digital Media Ethics Code Rules, 2021, were
introduced to regulate the role of intermediaries like social media platforms, ISPs, and over-
the-top (OTT) platforms. The rules include:

• Requiring intermediaries to appoint grievance officers, compliance officers, and nodal

officers.

• Imposing time limits for the removal of illegal or harmful content.

• Enabling traceability of encrypted messages on platforms like WhatsApp for law

enforcement purposes.

• Establishing a code of ethics for digital media platforms.

4. Net Neutrality Policy

India has adopted a strong stance on net neutrality, ensuring that ISPs treat all data equally
and do not discriminate based on content, platform, or user. In 2018, the Telecom
Regulatory Authority of India (TRAI) issued regulations upholding net neutrality and
prohibiting practices like throttling, blocking, or paid prioritization.

5. Cybersecurity Initiatives

The government has taken several steps to strengthen cybersecurity:

• National Cyber Security Policy (2013): This policy aims to protect critical
information infrastructure, promote cybersecurity awareness, and develop indigenous
cybersecurity technologies.

• Indian Computer Emergency Response Team (CERT-In): Acts as the national

nodal agency for responding to cybersecurity incidents, including malware attacks
and data breaches.

• Personal Data Protection Bill (now evolving into Digital Personal Data
Protection Act): Focuses on ensuring the privacy and security of user data.

6. Data Protection and Privacy

The government has recognized the importance of protecting user data in cyberspace.
Provisions under the IT Act, 2000, impose obligations on entities handling sensitive personal
data. Additionally, the proposed Digital Personal Data Protection Bill, 2023, aims to:

• Provide users with rights over their personal data.

 • Ensure informed consent for data collection and processing.

• Regulate data transfers to foreign jurisdictions.

• Impose penalties for data breaches and non-compliance.

7. E-Commerce Regulations

The rapid growth of e-commerce platforms like Amazon, Flipkart, and others has led to the
introduction of guidelines to protect consumer interests and ensure fair practices. Key
provisions include:

• Mandating the display of product details, return policies, and pricing transparency.

• Ensuring data protection for online transactions.

• Preventing monopolistic practices and ensuring competition in the e-commerce sector.

8. Internet Accessibility and BharatNet Project

The BharatNet Project is one of the world’s largest rural broadband initiatives, aiming to
connect 2.5 lakh gram panchayats with high-speed internet. This project is a cornerstone of
India's internet policy, ensuring affordable access in underserved regions.

III. Challenges in India's Internet Policy

• Digital Divide: Despite significant progress, a large section of the rural population
remains unconnected or has limited access to high-speed internet.

• Data Localization: Policies requiring data to be stored within India (under the Data
Protection Bill) pose challenges for global companies operating in multiple jurisdictions.

• Cybersecurity Threats: The increasing frequency of cyberattacks, data breaches, and

online fraud highlights the need for robust cybersecurity measures.

• Balancing Privacy and Surveillance: Provisions like Section 69 of the IT Act raise
concerns about mass surveillance and privacy violations.

• Content Regulation: Regulating harmful or illegal content on social media and digital
platforms while upholding freedom of speech is a complex challenge.

Conclusion

The Internet Policy of the Government of India is a dynamic and evolving framework aimed
at fostering digital inclusion, safeguarding user rights, and addressing emerging challenges in
cyberspace. With initiatives like Digital India, a focus on net neutrality, and the introduction
of data protection laws, the government is laying the foundation for a robust digital economy.
 UNIT IV

1. Explain the protection available for geographical indications in India. 10

Ans) Geographical Indications (GIs) are a form of intellectual property that identify goods as
originating from a specific geographical location, where their quality, reputation, or other
characteristics are intrinsically linked to their place of origin. In India, the protection for GIs
is primarily governed by the Geographical Indications of Goods (Registration and
Protection) Act, 1999, which came into force on 15th September 2003. The Act aims to
protect the unique identity of region-specific goods, preserve cultural heritage, prevent
unauthorized use of GIs, and promote economic growth for producers in specific regions.

The GI framework in India is consistent with the country’s obligations under the TRIPS
Agreement (Trade-Related Aspects of Intellectual Property Rights), which mandates member
states to provide legal means for the protection of GIs.

I. Legal Framework for GI Protection in India

The Geographical Indications of Goods (Registration and Protection) Act, 1999 provides
a comprehensive framework for the registration, protection, and enforcement of GIs. Key
aspects of protection under this Act include:

1. Definition and Scope of Geographical Indications

Under Section 2(1)(e) of the Act, a GI is defined as:

"An indication that identifies goods as originating from a specific territory, region, or locality,
where a given quality, reputation, or characteristic of the goods is essentially attributable to
their geographic origin."

The scope of GIs includes agricultural products (e.g., Darjeeling Tea, Basmati Rice),
manufactured goods (e.g., Kancheepuram Silk), and handicrafts (e.g., Channapatna Toys).

2. Registration Process

The Act establishes a procedure for GI registration, which is crucial for obtaining statutory
protection. Only an association of persons, producers, organizations, or authorities
representing the interest of producers can apply for registration under Section 11. The
registration provides:

• Part A of the GI Register: Registration of the GI itself.

• Part B of the GI Register: Registration of authorized users, such as individual

producers or businesses.

Registration grants exclusive rights to the GI holders, preventing others from using the
indication without authorization.

3. Rights Conferred to Registered Users

Under Section 21, registered GI holders and authorized users gain exclusive rights to use the
GI for their goods. These rights include:
 • The ability to take legal action against unauthorized users.

• The right to prevent the misuse or imitation of the GI.

The registration is valid for 10 years and can be renewed indefinitely for successive periods
of 10 years.

4. Protection Against Infringement

The Act explicitly prohibits the unauthorized use of a registered GI. Under Section 22,
infringement occurs if:

• A person uses the GI without authorization in a way that misleads consumers.

• The GI is applied to goods that do not conform to the standards or characteristics

associated with it.

Remedies for infringement include:

• Civil Remedies: Injunctions, damages, or accounts of profits.

• Criminal Penalties: Fines or imprisonment for willful misuse.

5. Prohibition on Assignment and Licensing

Under Section 24, a GI cannot be assigned, transmitted, licensed, or transferred. This ensures
that the GI remains tied to the geographic region and its producers, preserving its collective
nature.

6. Special Protection for Certain GIs

Under the TRIPS Agreement, wines and spirits receive a higher level of protection, even in
cases where misuse does not cause public confusion. India has extended this enhanced
protection to certain GIs, ensuring stricter enforcement.

II. International Protection for Indian GIs

India’s GI protection extends beyond its borders through international treaties and bilateral
agreements. Notable measures include:

a) TRIPS Agreement: GIs registered in India are eligible for protection in other WTO
member countries.

b) Bilateral Agreements: India has entered into agreements with the European Union and
other countries for the mutual recognition of GIs.

c) Global Recognition: Many Indian GIs, such as Darjeeling Tea, are recognized globally
due to proactive measures by India.

III. Significance of GI Protection

The protection of GIs serves multiple purposes:

• Preservation of Cultural Heritage: GIs safeguard the traditional knowledge and cultural
practices associated with specific goods.

• Economic Benefits for Producers: By ensuring authenticity and exclusivity, GIs help
producers command premium prices in domestic and international markets.

• Consumer Protection: GIs prevent consumer deception by ensuring that only genuine
goods are marketed under the registered indication.

• Promotion of Rural Development: GIs create economic opportunities in rural areas by

promoting region-specific industries.

IV. Judicial Precedents and Case Studies

1. Tea Board of India v. ITC Ltd. (2011)

The Tea Board challenged ITC's use of "Darjeeling" for a lounge, arguing that it diluted the
GI’s reputation. The Calcutta High Court emphasized the importance of protecting GIs to
preserve their reputation and goodwill.

2. Basmati Rice Dispute

The Indian government actively opposed RiceTec Inc.'s patent for Basmati rice in the U.S.,
asserting that Basmati is a GI intrinsically linked to the Indian subcontinent. This case
underscored the importance of GI protection in international trade.

3. Tirupati Laddu GI Case

The Madras High Court upheld the GI registration for "Tirupati Laddu," recognizing its
unique characteristics linked to the Tirumala Tirupati Devasthanam.

V. Challenges in GI Protection

Despite the robust legal framework, several challenges persist:

• Lack of Awareness: Many producers, especially in rural areas, are unaware of the
benefits of GI registration.

• Counterfeit Products: The proliferation of counterfeit goods undermines the value of

GIs.

• International Enforcement: Protecting Indian GIs in foreign jurisdictions requires

significant effort and resources.

• Limited Benefits for Producers: Small producers often lack the infrastructure to
capitalize on the economic benefits of GIs.

Conclusion

The protection available for Geographical Indications in India under the GI Act, 1999, is a
vital mechanism for preserving cultural heritage, promoting economic development, and
ensuring authenticity in trade. By granting exclusive rights to producers and preventing
misuse, the Act fosters trust among consumers and incentivizes the production of high-quality
goods. However, to fully realize the potential of GI protection, greater awareness, stronger
enforcement, and international collaboration are essential. The successful registration and
protection of GIs like Darjeeling Tea, Basmati Rice, and Kancheepuram Silk exemplify
the Act’s significance in safeguarding India’s rich cultural and economic legacy.

2. Define geographical indications. Explain the conditions for registration of

geographical indications. 10 (2)

Ans) Geographical Indications (GIs) are a form of intellectual property that signify goods
originating from a specific geographic region, where the goods derive their unique qualities,
reputation, or characteristics from the region. GIs serve to protect the distinctiveness of
regionally specific products and ensure that producers in the specified areas enjoy exclusive
rights over the use of such indications. In India, the Geographical Indications of Goods
(Registration and Protection) Act, 1999 (hereinafter referred to as the GI Act), provides the
legal framework for the registration and protection of GIs.

I. Definition of Geographical Indications

Under Section 2(1)(e) of the GI Act, a Geographical Indication is defined as:

“An indication which identifies such goods as agricultural goods, natural goods, or
manufactured goods as originating, or manufactured in the territory of a country, or a
region or locality in that territory, where a given quality, reputation, or other
characteristic of such goods is essentially attributable to its geographical origin, and in
case where such goods are manufactured, one of the activities of either the production
or of processing or preparation of the goods concerned takes place in such territory,
region or locality.”

From this definition, the following key elements of a GI can be derived:

1. Indication of Origin: The goods must be associated with a specific territory, region,
or locality.

2. Essential Characteristics: The unique qualities, reputation, or other attributes of the

goods must be directly linked to their geographical origin.

3. Categories of Goods: GIs can apply to:

o Agricultural goods (e.g., Basmati Rice, Darjeeling Tea).

o Natural goods (e.g., Makrana Marble).

o Manufactured goods (e.g., Kancheepuram Silk, Channapatna Toys).

II. Conditions for Registration of Geographical Indications

The registration of a GI under the GI Act requires specific statutory conditions to ensure that
the goods meet the necessary standards and are genuinely linked to the designated
geographical region. These conditions are outlined primarily in Sections 9 to 12 of the Act.

1. Representation of Producers or Stakeholders (Section 11(1))

The application for registration must be filed by:

• Associations of persons or producers, or

• Organizations or statutory authorities representing the producers' interests.

An individual producer cannot apply unless they represent a collective interest. The
applicant must prove they represent the stakeholders of the GI and act on behalf of the
community that produces the goods.

2. Non-Generic Nature (Section 9(f))

The GI must not have become a generic term or descriptor for the goods it represents.

A generic GI is a term that, while originally referring to the geographical origin, has lost its
distinctiveness and is now commonly used for the type or category of goods.
For example:

"Champagne" is protected as a GI for sparkling wine from the Champagne region of France,
but terms like "Cheddar" (cheese) or "Thermos" (insulated bottles) have become generic in
some contexts.

Explanation 1 of Section 9 defines generic names as those that no longer indicate the origin
of the goods and have become the common name for such goods.

3. Geographical Link and Specific Qualities (Section 11(2))

The goods must derive their:

• Unique qualities,

• Reputation, or

• Characteristics from the geographical environment, including natural (e.g., soil, climate)
and human factors (e.g., traditional knowledge, production methods).

The applicant must provide:

• A statement explaining how the GI designates the goods’ unique link to the region.

• Evidence of the goods' reputation, consumer recognition, or historical significance.

For instance:

• Darjeeling Tea derives its unique flavor and aroma from the climatic conditions of
the Darjeeling hills, coupled with the traditional expertise of the tea growers.

4. Defined Geographic Boundaries (Section 11(2))

The region or locality where the goods are produced must be clearly defined in the
application. A map of the geographic area must accompany the application, showing the
exact boundaries.
For example: The GI for Pokkali Rice is restricted to specific coastal areas of Kerala.

5. Prohibition on Misleading or Deceptive GIs (Section 9)

Under Section 9, certain categories of GIs are explicitly excluded from registration. These
include:

(a) the use of which would be likely to deceive or cause confusion [Section 9(a)]:

(b) the use of which would be contrary to any law for the time being in force [Section 9(b)]:

(c) which comprises or contains scandalous or obscene matter [Section 9(c)]:

(d) 57 which comprises or contains any matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India [Section 9(d)]:

(e) which would otherwise be disentitled to protection in a court [Section 9(e)]:

(f) which are determined to be generic names or indications of goods etc., [Section 9(f)]:

g) which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons [Section 9(g)]:For example:

A GI that uses religious symbols on goods like alcohol or footwear could be denied
registration.

6. Submission of Required Documentation (Section 11(2))

The application must include:

1. The name and description of the goods.

2. Details of the class of goods based on international classification.

3. The geographic map defining the area of origin.

4. A statement describing:

o The unique qualities or reputation of the goods.

o The methods of production, traditional techniques, and raw materials used.

5. Documentary evidence proving the historical and cultural association of the goods
with the region.

A detailed Statement of Case must also be submitted, highlighting:

• The product's uniqueness.

• Historical evidence.

• Methods of quality control and standards set for production.

7. Special Provisions for Homonymous GIs (Section 10)

When two or more GIs are homonymous (similar in name or appearance), the Registrar must
ensure that:

• Consumers are not confused or misled.

• Producers of all homonymous GIs are treated equitably.

For example:

• If two regions produce goods with similar names, the Registrar may allow both GIs to
be registered, provided distinctions between them are clearly stated.

8. Authorized Users (Section 17)

After a GI is registered, producers of the goods within the designated region must apply to be
recognized as authorized users. Authorized users gain exclusive rights to use the GI for their
goods and to take legal action against infringers.

III. Process of Registration

While the conditions for GI registration are distinct, they are part of a larger process that
includes:

• Filing an application with the Registrar of Geographical Indications.

• Examination of the application to verify compliance with the Act.

• Publication of the application in the Geographical Indications Journal.

• Addressing opposition, if any, before registration is granted.

Conclusion

The Geographical Indications of Goods (Registration and Protection) Act, 1999, sets
forth detailed conditions for the registration of GIs. These conditions ensure that only
authentic, region-specific goods are granted protection. By requiring a clear geographical
link, compliance with quality standards, and proof of distinctiveness, the Act safeguards the
cultural and economic value of GIs. The legal framework provided by Sections 9 to 11
ensures that GIs remain a collective asset, promoting rural development and protecting
India’s rich heritage on both domestic and global platforms.

3. Examine the procedure for the registration of geographical indications. 10 (2) or

Discuss conditions for and procedure of registration of geographical indications. 10

Ans) The registration of Geographical Indications (GIs) in India is governed by the

Geographical Indications of Goods (Registration and Protection) Act, 1999 (hereinafter
referred to as the GI Act). The Act provides a detailed legal framework to secure and
safeguard GIs, ensuring the economic benefits and cultural heritage of region-specific
products. The procedure for registration, outlined in Sections 11 to 19, involves multiple
stages to ensure only genuine GIs are registered and protected.
I. Registrar and Registry of Geographical Indications

Under Section 3, the Controller-General of Patents, Designs, and Trade Marks serves as
the Registrar of Geographical Indications. The Registrar is responsible for overseeing the
registration process and managing the Geographical Indications Registry, established in
Chennai, with branch offices across India (Section 5). The Register of Geographical
Indications, maintained as per Section 6, contains two parts:

1. Part A: Details of registered GIs.

2. Part B: Information on authorized users.

The registry operates under the supervision of the Central Government, ensuring transparency
and accessibility. It allows public inspection of the register and related documents as per
Section 78.

II. Steps in the Procedure for Registration of Geographical Indications

a) Eligibility and Filing of Application

Who Can Apply (Section 11(1))

The application for registering a GI can only be made by:

1. Associations of persons, producers, or organizations representing the producers’

interests.

2. Statutory authorities established by law.

The applicant must be a legal entity and demonstrate that it represents the interests of the
producers of the goods linked to the GI.

Contents of the Application (Section 11(2))

The application, filed in the prescribed format, must include:

1. The name and description of the goods for which GI registration is sought.

2. The class of goods as per international classification.

3. A clear statement showing how the GI designates the goods’ origin and its unique
qualities, reputation, or characteristics attributable to the geographic region.

4. A map of the defined territory or region.

5. Details of production methods, standards, and uniqueness of the product.

6. Documentary evidence proving the historical and reputational link of the goods to the
geographic region.

7. Details of the inspection body to monitor the use of the GI.

The application must also include a ‘Statement of Case’, specifying:

 • Unique characteristics and quality benchmarks.

• Proof of origin, supported by historical records or documents.

• Details of the current market scenario and economic importance.

Applications must be filed at the appropriate office of the Geographical Indications Registry
and must be accompanied by a prescribed fee.

b) Examination and Preliminary Scrutiny (Section 12)

Once an application is submitted, the Registrar examines it to verify:

1. Compliance with the conditions of Section 11.

2. The authenticity of the GI and its link to the region.

3. Whether the GI falls under any prohibited categories under Section 9, such as:

o GIs likely to deceive or cause confusion.

o Generic names or indications.

o GIs containing scandalous, obscene, or religiously offensive content.

The Registrar may require the applicant to amend or modify the application if it is found
deficient. If the application is deemed unacceptable, the Registrar must record the reasons in
writing.

c) Advertisement of GI (Section 13)

Section 13 provides that where an application has been accepted, the Registrar shall cause the
same to be advertised in the prescribed manner together with conditions or limitations, if any.
The Registrar has been vested with the power to re-advertise an application where an error
has been corrected or where the application has been permitted to be amended under section
15. Section 15 empowers the Registrar to carry out correction of any error or permit an
amendment of the application whether before or after acceptance.

d) Opposition to Registration (Section 14)

Any person may, within three months from the date of advertisement or re-advertisement of
an application or within such further period not exceeding one month, as the Registrar allows,
file a notice of opposition in writing to the Registrar. The Registrar shall serve a copy of the
notice so received on the applicant who shall send to the Registrar a counter- statement of the
grounds on which he relies within two months, failing which his application shall be deemed
to have been abandoned. If the applicant sends a counter statement, the Registrar shall serve a
copy of it on the person giving notice of opposition. The Registrar shall, after providing an
opportunity of hearing to the parties and considering the materials on record and the
evidences, decide whether and subject to what conditions or limitations, if any, the
registration is to be permitted.

e) Registration of the Geographical Indication (Section 16)

When an application has been accepted unopposed after advertisement or has been opposed
but decided in favour of the applicant, the Registrar shall, unless the Central Government
directs otherwise, register the geographical indication and the authorized user, if any,
mentioned in the application. The date of filing of the application shall be the date of
registration. The Registrar shall issue to each of the applicants and the authorized user a
certificate with the seal of the Geographical Indications Registry. Where the registration of a
geographical indication is not completed within 12 months from the date of application by
reasons of the applicant's defaults, the Registrar may after giving notice, treat the application
as abandoned unless it is completed within the time specified in the notice.

The Registrar enters the GI in the Register of Geographical Indications under Part A for
the GI and Part B for the authorized users. The date of filing the application is deemed the
date of registration.

A Certificate of Registration, bearing the official seal, is issued to the applicant and
authorized users.

f) Duration and Renewal of Registration (Section 18)

The registration of a GI is valid for 10 years from the date of registration. It can be renewed
indefinitely for successive periods of 10 years by paying the prescribed fee. Failure to renew
results in the removal of the GI from the register, although restoration is possible under
certain conditions.

g) Prohibition and Refusal of Registration

Under Section 9, the following GIs cannot be registered:

(a) the use of which would be likely to deceive or cause confusion [Section 9(a)]:

(b) the use of which would be contrary to any law for the time being in force [Section 9(b)]:

(c) which comprises or contains scandalous or obscene matter [Section 9(c)]:

(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India [Section 9(d)]:

(e) which would otherwise be disentitled to protection in a court [Section 9(e)]:

(f) which are determined to be generic names or indications of goods etc., [Section 9(f)]:

g) which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons [Section 9(g)]:

h) Registration of Authorized Users (Section 17)

Producers, manufacturers, or traders who wish to use a registered GI must apply to the
Registrar to be recognized as authorized users. Authorized users gain exclusive rights to use
the GI for their goods and to take legal action against infringers. They can also independently
renew or restore the GI registration if the original applicant fails to do so.
The process for registering an authorized user is similar to the registration of a GI, requiring
evidence that the applicant produces goods conforming to the GI’s standards.

III. Administrative Safeguards

a) Withdrawal of Acceptance (Section 12)

The Registrar may withdraw the acceptance of an application if it was accepted in error or if
additional conditions are necessary.

b) Correction of Errors and Amendment of Applications (Section 15)

The Registrar can correct errors or allow amendments to applications, provided they do not
fundamentally alter the nature of the GI.

Examples

Darjeeling Tea:- Darjeeling Tea became one of the first GIs registered in India,
demonstrating the importance of ensuring a strong link between the product and its
geographic origin. The case highlighted the meticulous documentation required for GI
registration.

Tirupati Laddu:- The registration of "Tirupati Laddu" under the GI Act showcased how
goods with cultural and religious significance could qualify for GI protection, provided their
unique characteristics and reputation were adequately demonstrated.

Conclusion

The procedure for the registration of Geographical Indications under the Geographical
Indications of Goods (Registration and Protection) Act, 1999, is a structured process
designed to ensure that only authentic, region-specific goods benefit from GI protection. By
establishing robust mechanisms for examination, opposition, and registration, the Act
safeguards the cultural and economic interests of producers while preserving the integrity of
GIs.

4. Note on Basmati rice case. 6 (3)

Ans) The Basmati Rice Case is a landmark dispute in the domain of intellectual property
rights, involving issues of patents, geographical indications (GIs), and biopiracy. The case
arose when RiceTec Inc., a U.S.-based multinational corporation, was granted a patent (No.
5663484) by the United States Patent and Trademark Office (USPTO) in 1997 for new
"lines and grains" of rice under the name "Basmati." This decision led to significant
controversy, with India and Pakistan, the traditional producers of Basmati rice, vehemently
opposing the patent and RiceTec’s claims regarding the name and qualities of Basmati rice.

The dispute is noteworthy as it brought to the forefront the global challenges of protecting
traditional knowledge, safeguarding cultural heritage, and addressing the misuse of
geographical indications in international trade.

I. Background of the Dispute

Basmati rice is an iconic product of the sub-Himalayan region, cultivated for centuries in
India and Pakistan. Renowned for its long grain, aromatic fragrance, and unique flavor,
Basmati holds immense economic and cultural significance. Its reputation is closely tied to
the traditional farming methods and geographical conditions of the Indo-Gangetic plains.

a) RiceTec’s Claims

RiceTec Inc. claimed that it had developed new hybrid strains of Basmati rice that exhibited
improved characteristics, such as enhanced aroma and adaptability to North American
climates. The company also marketed these strains under trademarks such as "Texmati,"
"Jasmati," and "Kasmati." Their contention was twofold:

• The term "Basmati" was a generic name for aromatic rice and not a geographical
indication tied exclusively to the Indian subcontinent.

• RiceTec’s innovations were patentable because they represented an improvement over

existing Basmati varieties.

b) India’s Objections

India challenged RiceTec’s claims on multiple grounds:

• Geographical Indication: India argued that "Basmati" qualified as a geographical

indication under the TRIPS Agreement, as its reputation and unique qualities were
intrinsically linked to its place of origin.

• Biopiracy: RiceTec’s patent was seen as an act of biopiracy, where traditional knowledge
and resources were appropriated without acknowledgment or benefit-sharing.

• Consumer Deception: India contended that marketing rice as "Basmati" in the United
States would mislead consumers and dilute the reputation of authentic Basmati rice.

II. The Legal and Trade Implications

Patent and Biopiracy Concerns

The grant of the patent to RiceTec in 1997 raised concerns about the exploitation of
traditional agricultural knowledge. India argued that RiceTec’s claims lacked novelty and that
the qualities of Basmati rice had been long established through traditional farming practices.
After rigorous efforts, India formally challenged RiceTec’s patent in 2000, presenting
substantial data to contest the claims.

In response, the USPTO conducted a re-examination and ultimately invalidated 17 out of 20

claims made by RiceTec. The remaining three claims, pertaining to hybrid strains, were
deemed patentable because they were substantially different from traditional Basmati. This
decision was seen as a partial victory for India, as it limited the scope of RiceTec’s patent and
prevented the company from monopolizing Basmati rice.

Geographical Indications

The second aspect of the dispute revolved around the use of "Basmati" as a geographical
indication. Unlike products such as Champagne (France) or Darjeeling Tea (India), Basmati
had not been formally registered as a GI in India at the time. RiceTec argued that Basmati
was a generic term, citing examples of American, Uruguayan, and Thai Basmati rice. This
contention was based on the assumption that the name had entered the public domain due to
the lack of proactive international protection.

To strengthen its position, India enacted the Geographical Indications of Goods

(Registration and Protection) Act, 1999, which came into force in 2003. Under this Act,
Basmati rice was registered as a geographical indication, covering regions in Punjab,
Haryana, Himachal Pradesh, Uttarakhand, western Uttar Pradesh, Jammu & Kashmir, and
Delhi. This ensured legal protection for Basmati as a GI and prevented its unauthorized use
by foreign entities.

Impact on International Trade

The controversy gained significance in the context of global trade, particularly in Europe,
where Basmati rice enjoys high demand. The reduction of duties on Indian Basmati rice in
European markets after the establishment of the World Trade Organization (WTO)
increased its competitiveness, making the protection of the GI even more critical for India’s
economic interests.

III. Resolution and Outcome

The Basmati rice dispute culminated in a partial victory for India. The key outcomes
included:

• The USPTO revoked most of RiceTec’s patent claims, significantly limiting its scope.

• The USPTO ruled that RiceTec could not use "Basmati" to describe its rice in a way that
would mislead consumers.

• India’s enactment of the Geographical Indications Act, 1999, provided a robust

framework for protecting Basmati as a GI and bolstered its position in international
markets.

While the dispute highlighted gaps in the global intellectual property regime, it also
underscored the importance of proactive measures to protect traditional products.

IV. Significance of the Basmati Case

The Basmati Rice Case has profound implications for intellectual property rights, particularly
in the context of geographical indications and traditional knowledge:

• Protection of Traditional Knowledge: The case emphasized the need to safeguard

traditional agricultural practices and cultural heritage from exploitation by foreign
entities.

• Strengthening GI Frameworks: It spurred the development of robust legal frameworks

for GI protection, both in India and internationally.

• Biopiracy Awareness: The case highlighted the risks of biopiracy and the importance of
ethical practices in patenting biological resources.
• Economic Benefits: Protecting Basmati as a GI has enhanced its market value, benefiting
farmers and rural communities in India and Pakistan.

Conclusion

The Basmati Rice Case is a landmark in the field of intellectual property, exemplifying the
complexities of protecting traditional knowledge and geographical indications in a globalized
economy. By successfully challenging RiceTec’s patent and securing GI registration for
Basmati, India demonstrated the importance of proactive legal measures and international
cooperation. As a symbol of cultural and economic identity, Basmati rice continues to
highlight the need for robust frameworks to preserve and protect traditional heritage in the
face of evolving global challenges.

5. Note on/state difference between geographical indications and trademarks. 6 (2) or

10

Ans) The table below provides a comprehensive comparison between Geographical

Indications (GIs) and Trademarks, based on their definitions, purposes, functions, and legal
protections:

Aspect Geographical Indications (GIs) Trademarks

A Geographical Indication is a sign

A Trademark is a distinctive sign,
used to identify goods originating from
word, logo, or combination thereof
a specific geographic location, where
Definition used to identify and distinguish
the product possesses qualities,
goods or services of one party from
reputation, or characteristics inherently
those of others in the marketplace.
tied to that location.

To identify and differentiate the

To highlight the geographical origin of
Primary goods or services of a specific
a product and link its quality or
Purpose business or individual from
reputation to that origin.
competitors.

Owned collectively by groups such as

Nature of producers, cooperatives, or Owned by an individual, a
Ownership associations from the geographic company, or a business entity.
region.

Focuses on a unique identifier

Focuses on the geographical location
(e.g., brand name or logo)
Focus as the source of qualities or
associated with a specific producer
characteristics (e.g., Darjeeling Tea).
or service provider.

Darjeeling Tea, Champagne,

Examples Nike, Coca-Cola, Apple, Tata.
Kanchipuram Silk, Basmati Rice.

Territorial Valid only for goods produced within No territorial limitations; a

Limitation the specified geographical location. trademark can cover the
Aspect Geographical Indications (GIs) Trademarks

goods/services wherever it is
registered and used.

Protected as long as the geographical Registration is typically valid for

Duration of
characteristics and reputation remain ten years, renewable indefinitely as
Protection
intact. long as the mark is in use.

The Geographical Indications of Goods

Governing The Trademarks Act, 1999 governs
(Registration and Protection) Act, 1999
Laws trademarks in India.
governs GIs in India.

Protects the collective identity of

Legal Protects the brand identity of a
goods tied to a geographical origin;
Protection specific owner, including logos,
prevents unauthorized use by non-
Scope symbols, and brand names.
locals.

Focuses on brand identity,

Focuses on promoting traditional
consumer loyalty, and market
Key Features knowledge, culture, and local
recognition of an individual
economies tied to specific regions.
business or entity.

Infringement occurs when the GI is Infringement occurs when the

used falsely, indicating that goods mark is used without authorization,
Infringement
originate from the protected region creating confusion, deception, or
when they do not. dilution.

Registration The GI Registry, under the Controller The Trademark Registry, under the
Authority General of Patents, Designs, and Trade Controller General of Patents,
(India) Marks (Chennai). Designs, and Trade Marks.

Explanation

• Geographical Indications:
GIs are rooted in the collective heritage of a region. For example, Darjeeling Tea
derives its global reputation from its specific environmental conditions and traditional
cultivation practices unique to Darjeeling. Similarly, Kancheepuram Silk is known for
its unique weaving patterns and cultural heritage.

• Trademarks:
Trademarks are identifiers tied to businesses or individuals aiming to build a unique
brand identity in competitive markets. For instance, the trademark Coca-Cola is
globally associated with a specific soft drink manufacturer, ensuring that the brand
stands apart in the global marketplace.

This distinction highlights how GIs and trademarks serve different yet complementary
purposes, with the former preserving cultural and traditional ties, and the latter focusing on
commercial branding and differentiation. Both forms of intellectual property are crucial for
protecting rights and fostering economic growth.

6. Explain the salient features of geographical indication act, 1999. 10 (3)

Ans) The Geographical Indications of Goods (Registration and Protection) Act, 1999 is a
legislative framework in India enacted to provide protection for Geographical Indications
(GIs), which are distinctive signs used to identify goods as originating from a specific
geographic region. These indications signify that the product possesses qualities, reputation,
or characteristics inherently linked to its place of origin. The Act was introduced to align
India’s legal framework with its obligations under the Agreement on Trade-Related Aspects
of Intellectual Property Rights (TRIPS).

I. Salient features of the act

The salient features of the Geographical Indications of Goods (Registration & Protection)
Act, 1999 are as under:

(i) Important Definitions: This Act gives Definitions and interpretations of several
important terms like "geographical indication", "goods", "producers", "packages", "registered
proprietor", "authorized user", deceptively similar, etc.

Section 2(1)(e) defines Geographical Indications as “an indication which identifies such
goods...as originating, or manufactured in the territory of country, or a region or locality in
that territory, where a given quality, reputation or other characteristic of such goods is
essentially attributable to its geographical origins.” In case of such goods being manufactured
goods, “one of the activities of either the production or of processing or preparation of the
goods concerned” has to take place in such territory, region or locality, as the case may be.

● Section 2(1)(f) defines goods as “agricultural, natural or manufactured goods or any goods
of handicraft or of industry and includes foodstuff.”

● Section 2(1)(g) defines indications to include “any name, geographical or figurative

representation or any combination of them conveying or suggesting the geographical origin
of goods to which it applies.

● Section 2(1)(n) defines a registered proprietor as “any association of persons or of producer

or any organization for the time being entered in the register as proprietor of the geographical
indication.”

● Section 2(1)(b) defines an authorized user to mean “the authorized user of a GI Registered
under Section 17.”

“Any person claiming to be a producer of the goods in respect of which a geographical

indication has been registered may apply for registration as an authorized user.”

(ii) Goods for which geographical indications can be registered: Under the Act, the GI
cannot be registered for all goods. As per Section 2(1)(f) goods mean any agricultural(tea),
natural(ore), or manufactured goods (silk), or any goods of handicraft(phulkari) or industry
and includes foodstuff (Resgulla). Therefore, the GI can be registered regarding such goods.
The Act provides for registration of goods mentioned in specified classes and such
classification is to be done by the Registrar as per international classification. There are 34
classes of goods regarding which GI can be registered.

(iii) Prohibition of registration of certain geographical indications; The Act also mentions
grounds where GI cannot be registered. Section 9 mentions certain grounds where
registration can be refused. Some examples of such grounds are: the use of which would be
likely to deceive or cause confusion; or the use of which would be contrary to any law for the
time being in force; or which comprises or contains scandalous or obscene matter; or which
comprises or contains any matter likely to hurt the religious susceptibilities of any class or
section of the citizens of India.

(iv) Registration of GI relating to goods: Registration of the GI is a lengthy process that

involves various steps such as, Filing of application; Preliminary scrutiny and examination;
Show cause notice; Publication in the geographical indications Journal; Opposition to
Registration; Registration; Renewal, and Additional protection to notified goods.

(v) Compulsory advertisement; Under the Act, the procedure for registration of GI is
mentioned. Once the application for registration is given then there must be a compulsory
advertisement of all accepted geographical indication applications and for inviting objections.
Therefore, where any objection is raised then such GI will not be registered unless the
Register after hearing both the parties decides that it can be registered.

(vi) Registration of authorized users of registered geographical indications: Also there

are provisions under the Act for registration of authorized users of registered geographical
indications.

(vii) Register of GI & E-Register: Under the Act, there are provisions for the maintenance
of a Register of Geographical Indications. The Register of Geographical Indications is an
important document that is kept at the head office of the trademarks registry where important
particulars like the names, addresses, and description of the proprietors, notifications of
assignment, and transmissions are mentioned in the register. The register is to be open for
inspection. Significantly, it is maintained in two parts-Part A and Part B and use of
computers, etc. for maintenance of such Register. While Part A will contain all registered
geographical indications with the names, addresses and descriptions of the proprietors.Part B
will contain particulars of registered authorized users, i.e, the names, addresses and
descriptions of authorised users and such other matters relating to registered geographical
indications as may be prescribed and such registers may be maintained wholly or partly on
computer.

(viii) Infringement action: Under the Act, an infringement action can be taken either by a
registered proprietor or an authorized user.

(ix) Protection of the Notified Goods: The Act mentions certain provisions for a higher
level of protection for notified goods.

(x) Prohibition of assignment etc. of a geographical indication: Generally, under law, IPRs
like copyright, patent, and trademark can be assigned. But assignment etc. of a geographical
indication is prohibited under the Act as it is public property.

(xi) Prohibition of registration of geographical indication as a trademark: Significantly,

where the GI is registered then that sign or indication cannot be registered as TM.
(xii) Appeal: Appeal against Registrar's decision would be to the Intellectual Property
Appellate Board established under the Trade Mark legislation. However, in April 2021 The
Tribunal Reforms (Rationalisation and Conditions of Service) Ordinance¹, 2021, issued by
the Ministry of Law and Justice, was notified on April 4, 2021, has resulted in shutting down
the Intellectual Property High Court (IPAB). Now appeals from orders or decisions of
Registrar shall lie to the High Court having the jurisdiction in that case.

(xiii) Offences and penalties: The Act mentions certain acts which are offences and are
punishable.

(xiv) Power to formulate GI Rules: The Act mentions certain provisions for framing of
rules by the Central Government for filing of the application, its contents, and matters
relating to the substantive examination of geographical indication applications.

(xv) Effects of registration and the rights conferred by registration: The registration
confers the following rights:

(a) to the registered proprietor of the geographical indication and the authorised user or users
thereof the right to obtain relief in respect of infringement of the geographical indication in
the manner provided by this Act; (b)to the authorised user thereof the exclusive right to the
use of the geographical indication in relation to the goods in respect of which the
geographical indication is registered.

(xvi) Other important features: Provision for reciprocity powers of the registrar,
maintenance of Index, protection of homonymous geographical indications, etc.

II. Significance of the Act

The Geographical Indications Act is a critical tool for safeguarding India’s diverse cultural
heritage and traditional knowledge. Its significance lies in:

• Promoting Economic Development: By protecting the reputation of regional goods, the

Act enhances their market value and provides economic benefits to rural and artisanal
communities.

• Encouraging Quality Standards: Producers are incentivized to maintain high standards

associated with the GI, ensuring consumer trust and satisfaction.

• Preventing Misuse: The Act prevents the unauthorized use of GIs, preserving the
integrity of products and the livelihoods of producers.

• Global Recognition: The Act strengthens India’s position in the global market by
ensuring that its GIs are recognized and protected internationally.

III. Judicial Precedents

Indian courts have interpreted the provisions of the Geographical Indications Act in landmark
cases

Tea Board v. ITC Ltd. (2011): The Calcutta High Court emphasized the importance of
protecting the reputation of Darjeeling Tea as a GI.
Champagne v. Chandon India (1994): The case highlighted the global significance of
protecting GIs under international conventions.

IV. Challenges in Implementation

Despite its robust framework, the Act faces challenges, including:

• Lack of Awareness: Many producers are unaware of the benefits and process of GI
registration.

• Inadequate Enforcement: Limited resources and coordination hinder effective

protection against infringement.

• Global Competition: Competing GIs from other countries may dilute the value of Indian
GIs in international markets.

Conclusion

The Geographical Indications Act, 1999, is a cornerstone of India’s intellectual property

framework, safeguarding the identity and reputation of its traditional goods. By providing
legal protection, the Act fosters economic growth, cultural preservation, and consumer trust.
However, its full potential can only be realized through greater awareness, stronger
enforcement mechanisms, and effective international cooperation. As India continues to
leverage its rich cultural and geographic diversity, the Act remains a vital tool for promoting
its heritage and protecting the interests of its producers.

7. What are the prohibition imposed on the registration of geographical indication

under the geographical indications of goods act, 1999? 10

Ans) The Geographical Indications of Goods (Registration and Protection) Act, 1999
(hereinafter referred to as the GI Act) provides a robust legal framework for the registration
and protection of Geographical Indications (GIs) in India. However, the Act also includes
strict prohibitions under Section 9, ensuring that only genuine, region-specific, and socially
acceptable GIs are registered. These prohibitions serve to maintain the integrity of the GI
registration process and safeguard the interests of producers, consumers, and the public.

Under Section 9, certain types of GIs are explicitly prohibited from registration. This
provision ensures that GIs that may deceive, mislead, offend societal norms, or have become
generic are not granted legal protection.

(a) the use of which would be likely to deceive or cause confusion [Section 9(a)]:

(b) the use of which would be contrary to any law for the time being in force [Section 9(b)]:

(c) which comprises or contains scandalous or obscene matter [Section 9(c)]:

(d) 57 which comprises or contains any matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India [Section 9(d)]:

(e) which would otherwise be disentitled to protection in a court [Section 9(e)]:

(f) which are determined to be generic names or indications of goods etc., [Section 9(f)]:
g) which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons [Section 9(g)]:

I. Prohibitions Imposed Under Section 9 of the GI Act

1. Likely to Deceive or Cause Confusion [Section 9(a)]

A GI cannot be registered if its use is likely to deceive or cause confusion among consumers.

Deceptive GIs: These may include indications that falsely suggest a connection between the
goods and a particular geographic origin. For instance, if a GI implies that the goods originate
from a reputed region but are actually produced elsewhere, it may deceive consumers.

Confusion: The GI may also create confusion due to its similarity (phonetic or visual) with
another registered GI or trademark. For example, a GI that closely resembles "Darjeeling
Tea" but refers to tea produced outside Darjeeling could mislead consumers.

The Registrar assesses the potential for deception or confusion based on the circumstances of
each case, including the nature of the goods and the consumers' perception.

2. Contrary to Law [Section 9(b)]

A GI cannot be registered if its use would contravene any law for the time being in force.

For example, a GI that violates the Emblems and Names (Prevention of Improper Use)
Act, 1950, which prohibits the use of certain names and symbols, would be ineligible for
registration.

Similarly, a GI that breaches public health regulations, such as one implying false medicinal
benefits, would also be barred.

This provision ensures that GIs do not undermine existing legal frameworks.

3. Scandalous or Obscene Matter [Section 9(c)]

A GI comprising or containing scandalous or obscene matter is prohibited from registration.

Scandalous Content: A GI may be considered scandalous if it offends public morality or

decency.

Obscene Content: This includes any vulgar or explicit language or imagery.

The determination of what constitutes scandalous or obscene matter depends on the

prevailing social norms and the context in which the GI is applied. For instance, a GI
containing offensive language or imagery would be refused registration.

4. Likely to Hurt Religious Susceptibilities [Section 9(d)]

A GI is prohibited from registration if it contains any matter likely to hurt the religious
susceptibilities of any class or section of Indian citizens.
For instance, using the names or images of deities, sacred symbols, or religious leaders on
products like alcoholic beverages, meat, or footwear could offend religious sentiments and
would be barred from registration.

The Registrar evaluates whether the GI may cause offense based on its potential impact on
specific communities.

This provision is particularly important in a culturally and religiously diverse country like
India.

5. Disentitled to Protection in a Court [Section 9(e)]

A GI that would otherwise be disentitled to protection in a court of law cannot be registered.

This provision ensures that only truthful and equitable claims are granted protection.

For example, a GI associated with fraud, misrepresentation, or unfair practices would be

ineligible for registration.

The Registrar assesses whether the GI would stand up to judicial scrutiny based on principles
of fairness, justice, and public policy.

6. Generic Names or Indications [Section 9(f)]

A GI cannot be registered if it has become a generic name or indication of the goods it

represents.

Generic Terms: These are names or indications that were once associated with a specific
geographic origin but have become commonly used to describe a type or category of goods,
regardless of their origin.
For example:

"Cheddar" (cheese) or "Bourbon" (biscuits) may be considered generic in some contexts and
lose their geographic specificity.

Explanation 1 of Section 9 defines generic names as those that have lost their original
meaning and now serve as general descriptors for goods of a particular kind, nature, or type.

Explanation 2 provides that determining whether a name is generic depends on factors such
as:

• The current situation in the region of origin.

• Public perception and the extent of usage of the name.

This provision ensures that GIs retain their distinctiveness and are not diluted over time.

7. False Representation [Section 9(g)]

A GI that, although literally true about the goods' territory, region, or locality, falsely
represents their origin in another territory, region, or locality is prohibited.
For example: A product labeled with a GI indicating origin in "Region A" but marketed as
originating from "Region B" would mislead consumers and fail to meet the authenticity
criteria.

This provision aims to prevent deceptive practices and protect consumers from false claims.

II. Judicial Precedents

Tea Board of India v. ITC Ltd. (2011) The case emphasized the importance of safeguarding
GIs like "Darjeeling Tea" against misleading or deceptive uses, even in unrelated contexts
(e.g., a lounge named "Darjeeling").

R. S. Praveen Raj vs Tirumala Tirupati Devasthanams, Tirupati Laddu Case:- The GI

for "Tirupati Laddu" was challenged on grounds of exclusivity. The Madras High Court
upheld its registration, noting the laddus’ unique association with the Tirumala Tirupati
Devasthanam.

Conclusion

The prohibitions under Section 9 of the GI Act, 1999, are integral to maintaining the integrity
of the GI registration system in India. By addressing issues such as deception, genericity,
false representation, and societal concerns, Section 9 ensures that GIs remain a reliable
indicator of authenticity and regional pride. These provisions not only protect producers and
consumers but also preserve the cultural and economic heritage associated with geographical
indications.

8. Note on Infringement of geographical indications. 6 (3)

Ans) The Geographical Indications of Goods (Registration and Protection) Act, 1999
provides protection to registered Geographical Indications (GIs) by prohibiting unauthorized
use that misleads consumers or constitutes unfair competition. Infringement under the Act
occurs when a registered GI is used in a manner inconsistent with its registration, harming the
reputation or goodwill of the GI. Section 22 of the Act defines infringement, while Sections
66 and 67 specify the procedure for addressing infringement and the remedies available to
plaintiffs.

I. INFRINGEMENT OF REGISTERED GEOGRAPHICAL INDICATION (section 22)

A person, who is not an authorized user of a registered geographical indication, infringes it

when he-

(i) uses such geographical indication by any means in the designations or presentation of
goods that indicates or suggests that such goods originate in a geographical area other than
the true place of origin of such goods in a manner which misleads the persons as to the
geographical origin of such goods; or

(ii) uses any geographical indication in such manner which constitutes an 'act of unfair
competition" including passing off in respect of registered geographical indication; or

(iii) uses another geographical indication to the goods which, although literally true as to the
territory, region or locality in which the goods originate, falsely represents to the persons that
the goods originate in the territory, region or locality in respect of which such registered
geographical indication relates.

II. Jurisdiction and Institution of Suits (Section 66)

Under Section 66, suits for infringement or related matters must be filed in a District Court.
The District Court having jurisdiction is determined based on where the plaintiff resides,
carries on business, or personally works for gain. This provision is distinct from the general
jurisdiction rules under the Code of Civil Procedure, 1908, which usually consider the
location of the defendant.

Suits Covered under Section 66

1. Infringement of a registered GI.

2. Disputes relating to rights in a registered GI.

3. Passing off claims arising from the use of identical or deceptively similar GIs.

III. Civil Remedies for Infringement (Section 67)

Section 67 provides the remedies available to a plaintiff in a suit for infringement or passing
off. The reliefs include:

(i) Injunction

(ii) Damages or account of profits

(iii) Delivery-up of the infringing labels and indications.

These remedies are inclusive, not exhaustive and the court may provide some other remedies
in addition to the aforesaid.

Injunction

Injunction includes temporary injunction and permanent injunction. Further, the court may
also order an ex parte injunction for:

(a) discovery of documents;

(b) preserving of infringing goods, documents or other evidence which are related to the
subject-matter of the suit; and

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

The aforesaid remedy of injunction is more effective and can prevent a greater harm to the
plaintiff.

In the Pochampally Ikat Case, the court granted a perpetual injunction against the
unauthorized use of "Pochampally" for non-authentic sarees.
Damages or account of profits

The remedy of damages or account of profits is not cumulative but alternative. The plaintiff
has to elect one of the two remedies at an earlier stage of the suit. The remedy of damages
(other than nominal damages) or account of profits may be denied where defendant satisfies
the court that he was unaware and had no reasonable ground for believing that the
geographical indication of the plaintiff was registered when he commenced to use it; and that
when he became aware of the existence and nature of the plaintiff's right in the geographical
indication, he forthwith ceased to use it.

Delivery-up of the infringing labels and indications

It is in the discretion of the court to order the defendant to deliver-up the infringing labels and
indications for destruction and erasure. The court by taking relevant circumstances into
account may or may not order for such remedy.

III. Criminal Remedies

The GI Act also provides criminal remedies for infringement under Section 39, including
imprisonment and fines. This ensures a deterrent effect against willful misuse of GIs.

Conclusion

The GI Act provides a comprehensive framework to address infringement of geographical

indications, ensuring that registered proprietors and authorized users are protected against
unauthorized use. Through remedies such as injunctions, damages, and the delivery-up of
infringing goods, the Act prevents the misuse of GIs and preserves their authenticity and
economic value. By empowering District Courts to adjudicate disputes and granting both
civil and criminal remedies, the Act effectively deters infringement and upholds the rights of
genuine producers.

9. ‘M’ an authorized user holding a right in a registered geographical indication dies.

On whom does this right devolve? 6 (2)

Ans) When 'M,' an authorized user holding rights in a registered Geographical Indication
(GI), dies, the devolution of their rights is governed by Section 24 of the Geographical
Indications of Goods (Registration and Protection) Act, 1999.

Section 24 states:

"Notwithstanding anything contained in any law for the time being in force, any right to a
registered geographical indication shall not be the subject matter of assignment, transmission,
licensing, pledge, mortgage, or any such other agreement:
Provided that on the death of an authorised user his right in a registered geographical
indication shall devolve on his successor in title under the law for the time being in
force."

Devolution of Rights

Upon the death of 'M,' the rights to the GI will devolve to the Successor in Title
The rights held by 'M' as an authorized user will pass to their legal heir(s) or successor(s)-in-
title according to the law of inheritance applicable to 'M'.

Qualification as an Authorized User

The successor must meet the requirements of an authorized user under the GI Act.
Specifically, the successor must be:

• A producer of the goods for which the GI is registered.

• Compliant with the terms and conditions of the GI registration.

Updating the GI Register

The successor must apply to the Registrar of Geographical Indications to have their name
entered in the GI Register as an authorized user. This ensures official recognition of their
rights and protects the GI from misuse.

Conclusion

On the death of 'M,' the rights held in the registered GI automatically devolve upon their
successor(s)-in-title under the applicable inheritance laws. The successor must qualify as a
producer of the goods associated with the GI and apply to the Registrar for formal
recognition as an authorized user. This ensures continuity of protection while upholding the
principles of collective ownership central to geographical indications.

10. Explain the role and functions of registrar of geographical indications. 10

Ans) The Registrar of Geographical Indications plays a pivotal role in administering the
registration and protection of Geographical Indications (GIs) under the Geographical
Indications of Goods (Registration and Protection) Act, 1999. This official is responsible
for ensuring compliance with the provisions of the Act and safeguarding the interests of
producers of region-specific goods by protecting their rights over GIs. The Registrar's
authority and functions are rooted in the statutory framework of the GI Act, ensuring the
effective implementation of its provisions.

I. Role of the Registrar of Geographical Indications

The Registrar of Geographical Indications is appointed under Section 3(1) of the GI Act.
The Controller-General of Patents, Designs, and Trade Marks functions as the Registrar,
making this a specialized position designed to oversee the registration and protection of GIs.
The Registrar operates from the Geographical Indications Registry, established under
Section 5 of the Act, with its head office located in Chennai and branch offices across India.

The Registrar's role involves maintaining the integrity of the GI system by:

1. Supervising the registration process.

2. Administering the GI Registry and ensuring compliance with statutory provisions.

3. Facilitating the protection of GIs and resolving disputes related to their use.
II. Functions of the Registrar of Geographical Indications

1. Administration of the GI Register (Sections 6 and 7)

The Registrar is responsible for maintaining the Register of Geographical Indications,

divided into:

1. Part A: Contains details of all registered GIs, including their name, description,
region of origin, and particulars of their unique characteristics.

2. Part B: Contains details of authorized users of the registered GIs.

The Registrar ensures the proper entry, updating, and management of all relevant information
in the register. The register may also be maintained electronically, facilitating easier access
and transparency.

2. Examination and Registration of Applications (Sections 11 to 16)

The Registrar oversees the process of registration, ensuring that applications comply with the
conditions laid down in the Act. This includes:

1. Scrutiny of Applications (Section 12): The Registrar examines whether the GI

fulfills the statutory requirements, such as not being generic, deceptive, or contrary to
law (as per Section 9). If deficiencies are found, the Registrar may request
modifications or reject the application with recorded reasons.

2. Advertisement of Accepted Applications (Section 13): If the application is

accepted, it is published in the Geographical Indications Journal, providing an
opportunity for opposition.

3. Hearing of Oppositions (Section 14): The Registrar adjudicates disputes arising

from oppositions filed against an application and decides whether to proceed with or
refuse registration.

4. Issuance of Certificates (Section 16): Once a GI is registered, the Registrar issues a

Certificate of Registration to the applicant, granting legal protection.

3. Registration of Authorized Users (Section 17)

In addition to registering GIs, the Registrar facilitates the registration of authorized users—
producers or traders entitled to use the GI. This includes verifying their credentials, ensuring
they meet the criteria, and granting them rights to use the GI.

4. Removal and Correction of Entries (Sections 24 and 27)

The Registrar has the authority to:

1. Remove the Name of an Authorized User (Section 24): If an authorized user ceases
to qualify or fails to comply with the conditions of the Act, the Registrar can remove
their name from the register.
 2. Correct Errors in the Register (Section 27): The Registrar can rectify errors or
omissions in the GI register to maintain its accuracy.

5. Enforcement and Dispute Resolution (Sections 66 and 67)

The Registrar plays an essential role in facilitating the enforcement of GI rights:

1. The Registrar's office provides the necessary information and support for filing suits
related to infringement or passing off.

2. In cases of disputes, the Registrar may assist in resolving issues related to overlapping
GIs, authorized users, or claims of misrepresentation.

6. Classification of Goods (Section 8)

The Registrar determines the classification of goods for GI registration, ensuring that it
conforms to international standards. If disputes arise regarding the classification of goods or
the determination of the defined geographical area, the Registrar's decision is final.

7. Safeguarding the Register’s Accessibility (Sections 78 and 79)

The Registrar ensures that the GI Register, along with relevant documents such as opposition
notices, counter-statements, and affidavits, is available for public inspection. Certified copies
of these entries can also be issued upon payment of a prescribed fee, ensuring transparency.

8. Maintaining Indexes (Section 77)

The Registrar maintains indexes of:

1. Registered GIs.

2. Pending applications.

3. Proprietors and authorized users.

These indexes are vital for managing records and enabling public access to information about
registered GIs.

III. Significance of the Registrar's Role

The Registrar of Geographical Indications is instrumental in:

• Preserving the Integrity of GIs: By ensuring compliance with statutory provisions, the
Registrar safeguards the authenticity of registered GIs and prevents misuse.

• Promoting Regional Products: By facilitating registration and protection, the Registrar

helps producers secure economic benefits and promote traditional goods.

• Transparency and Accessibility: Through public access to the GI register and

documents, the Registrar ensures accountability and trust in the GI system.

Conclusion
The Registrar of Geographical Indications serves as the guardian of India’s GI system,
responsible for overseeing registration, maintaining records, and ensuring the legal protection
of GIs. The Registrar's functions, as outlined in the Geographical Indications of Goods
(Registration and Protection) Act, 1999, are critical to preserving the cultural and economic
significance of region-specific goods. By diligently administering the Act’s provisions, the
Registrar ensures that GIs remain a valuable tool for empowering producers and protecting
India’s rich heritage.

11. Note on rights of a registered geographical indication holders. 6

Ans) The Geographical Indications of Goods (Registration and Protection) Act, 1999
provides robust protection to Geographical Indications (GIs) in India. The rights granted to
registered GI holders are central to preserving the authenticity, reputation, and commercial
value of region-specific goods. These rights not only protect producers from misuse but also
ensure their economic benefits.

Under this framework, the rights of a registered GI holder (including registered proprietors
and authorized users) are well-defined. Sections 21, 22, and related provisions of the Act
enumerate these rights and protections.

I. Rights of a Registered Proprietor of a Geographical Indication

1. Exclusive Right to Use the GI (Section 21(1))

The registered proprietor of a GI has the exclusive right to use the geographical indication in
relation to the specific goods for which it is registered. This right allows producers from a
defined geographical region to maintain control over the authenticity of their products and
ensures that outsiders cannot exploit the name or goodwill associated with the GI.

For example, the registered proprietor of "Darjeeling Tea" can authorize only the tea growers
from Darjeeling to use this GI for their tea.

2. Right to Authorize Others to Use the GI (Section 21(1))

The registered proprietor has the authority to grant rights to producers within the geographic
region to use the GI. These producers, after registration as authorized users under Section
17, can also enforce their rights under the Act.

The grant of such rights ensures the collective benefit of the community associated with the
GI while maintaining compliance with its standards and specifications.

3. Protection Against Infringement (Section 22)

The registered proprietor and authorized users have the right to protect the GI from
unauthorized use, as outlined in Section 22. Infringement occurs when:

• The GI is used in a misleading manner, suggesting that the goods originate from a
geographic region other than their actual origin.

• The use of the GI constitutes unfair competition, including passing off, which harms
the reputation of the GI.
 • A GI is applied to goods falsely representing their origin or characteristics.

The registered proprietor has the right to take legal action against infringers under the
provisions of Sections 66 and 67.

4. Right to File Legal Proceedings (Sections 66 and 67)

The registered proprietor can initiate proceedings in a District Court against infringement or
passing off related to their GI. The proprietor is entitled to seek the following remedies:

1. Injunction (temporary or permanent) to restrain the infringer.

2. Damages or an account of profits for losses suffered due to the unauthorized use of
the GI.

3. Delivery-up or destruction of infringing goods or materials.

These remedies provide robust legal recourse for protecting the GI.

5. Right to Prevent Registration of Misleading Trade Marks (Section 25)

The registered proprietor has the right to oppose the registration of any trademark that
contains or consists of the registered GI and is likely to mislead the public. This ensures that
GIs are not misappropriated through trademarks.

For instance, the proprietor of the GI "Tirupati Laddu" can object to a trademark application
attempting to use "Tirupati" in a misleading manner.

6. Right to Renewal (Section 18)

The registration of a GI is valid for 10 years and can be renewed indefinitely in successive
10-year periods. The proprietor has the right to apply for renewal and preserve the exclusive
rights provided by the GI registration.

II. Rights of an Authorized User (Section 21)

An authorized user registered under Section 17 enjoys similar rights to the registered
proprietor, but specific to the goods they produce within the geographical region. These rights
include:

1. Exclusive Right to Use the GI (Section 21(1)):

An authorized user can use the GI in trade or commerce for the registered goods. For
example, a producer of "Pochampally Ikat" within the registered region can use the GI
for their products.

2. Right to Enforce the GI Rights Independently (Section 21(2)):

Authorized users can take legal action in cases of infringement or passing off without
involving the registered proprietor. This independent right empowers individual
producers and protects their interests.
 3. Renewal of Authorized User Rights (Section 18):
Authorized users can apply for renewal of their registration every 10 years, ensuring
continued use and protection.

III. Special Provisions for GI Rights

Prohibition of Assignment or Licensing (Section 24)

Rights in a GI cannot be assigned, transferred, licensed, mortgaged, or pledged. The GI is a

collective right that remains tied to the geographical region and its community of producers.

Exception: On the death of an authorized user, their GI rights devolve to their legal successor
under Section 24.

Conclusion

The Geographical Indications of Goods (Registration and Protection) Act, 1999, provides
registered proprietors and authorized users with strong rights to protect and enforce their GIs.
These rights ensure that the unique characteristics and reputation of the goods linked to the
geographical region are not diluted or misappropriated. By granting exclusive rights to use,
authorize others, and enforce protection, the Act safeguards the cultural and economic
interests of communities associated with GIs, while simultaneously promoting fair trade and
preserving India’s rich heritage.

12. Discuss the offences and penalties under geographical indication act, 1999. 10

Ans) The Geographical Indications of Goods (Registration and Protection) Act, 1999
(hereinafter referred to as the GI Act) provides a legal framework to protect and enforce the
rights of proprietors and authorized users of geographical indications (GIs). While it grants
exclusive rights to registered users, the Act also prescribes stringent penalties for violations to
prevent unauthorized use and exploitation of GIs. The penal provisions under the Act, as
detailed in Sections 38 to 50, serve as a deterrent against infringement, misrepresentation,
and any fraudulent activities connected to GIs.

I. Offences under the GI Act, 1999

The GI Act classifies several actions as offences to ensure the sanctity and protection of
registered GIs. These include the following:

1. Falsely Applying a GI (Section 38)

Under Section 38, it is an offence for any person to falsely apply a registered geographical
indication to goods. This includes situations where a person:

• Uses a registered GI without authorization, implying a false geographical origin.

• Applies the GI in a manner that suggests the goods originate from the registered
territory when they do not.

The term "falsely applying" encompasses affixing, inscribing, or labeling goods with a GI in
an unauthorized manner.
2. Falsification of GI (Section 39)

As per Section 39, falsification of a GI refers to situations where a person:

• Alters a registered GI with the intent to deceive.

• Causes a GI to be deceptively similar to an existing registered GI.

This is aimed at curbing unfair practices where counterfeit or fake labels are created to
deceive consumers.

3. Falsely Representing a GI as Registered (Section 40)

Section 40 penalizes any person who falsely represents that a geographical indication is
registered under the GI Act when it is not. This provision is directed at preventing deceptive
practices where a false claim is made about the legal status of a GI.

4. Improper Use of GI Indications or Devices (Section 41)

Section 41 prohibits the unauthorized use of any indication or device that closely resembles a
registered GI. Such actions are seen as attempts to exploit the reputation of the GI for
personal or commercial gain.

5. Making, Possessing, or Disposing of Instruments for Falsification of GIs (Section 42)

According to Section 42, manufacturing, possessing, or supplying equipment, instruments, or

tools that could be used to falsify or counterfeit a GI constitutes an offence. This section is
designed to target the root cause of infringement by penalizing individuals or entities
involved in facilitating such activities.

6. Selling or Possessing Goods Bearing False GIs (Section 43)

Under Section 43, it is an offence to:

• Sell, offer, or expose for sale any goods bearing a false GI.

• Possess goods with the knowledge that they bear a false or counterfeit GI.

This provision ensures that even distributors and retailers dealing in such goods are held
accountable.

7. Aiding or Abetting GI Infringement (Section 44)

Section 44 makes it an offence to aid or abet the commission of any act of infringement
under the GI Act. This includes assisting in the falsification, counterfeit manufacturing, or
distribution of goods bearing a false GI.

II. Penalties for Offences

The penalties for the offences mentioned above are detailed in Sections 38 to 44 of the Act.
These penalties are intended to provide strong deterrence against GI violations.

1. Punishment for Falsely Applying a GI (Section 38)

Any person found guilty of falsely applying a GI is liable to:

• Imprisonment for a term that may extend up to three years, and

• A fine that shall not be less than fifty thousand rupees, which may extend up to two
lakh rupees.

2. Penalty for Falsification and Misrepresentation (Section 39 and 40)

For offences involving falsification of GIs and misrepresenting a GI as registered, the penalty
includes:

• Imprisonment for a term that may extend up to three years, and

• A fine within the same range as Section 38.

3. Penalty for Unauthorized Devices or Possession (Section 42)

Individuals found manufacturing or supplying tools to falsify GIs face similar penalties as
detailed under Section 38:

• Imprisonment for up to three years, and

• A fine ranging from fifty thousand rupees to two lakh rupees.

4. Penalty for Selling Goods with False GIs (Section 43)

Retailers, distributors, or traders in possession or sale of goods bearing false GIs are subject
to:

• Imprisonment for a term of up to three years, and

• A fine within the prescribed range.

The penalty under Section 43 is essential to prevent the circulation of counterfeit goods in the
marketplace.

5. Enhanced Penalty for Repeat Offences (Section 45)

For repeat offenders, Section 45 prescribes enhanced penalties, with imprisonment

extending up to five years and fines extending up to two lakh rupees.

This provision aims to curb habitual offenders by imposing more severe consequences for
repeated violations.

III. Other Procedural Provisions

1. Cognizance of Offences (Section 47)

Under Section 47, offences under the GI Act are considered cognizable, meaning law
enforcement authorities can arrest an individual without a warrant and investigate the matter
without prior approval of the magistrate. This provision reflects the seriousness of GI-related
crimes.
2. Initiation of Criminal Proceedings (Section 48)

Criminal proceedings for offences under the GI Act may only be initiated by:

• The registered proprietor of the GI,

• An authorized user, or

• A duly authorized representative of the registered proprietor.

This provision prevents frivolous or vexatious claims by limiting the scope of complainants
to those directly associated with the GI.

3. Protection of Actions Taken in Good Faith (Section 49)

To protect officers or individuals enforcing the Act, Section 49 provides immunity for actions
taken in good faith under the provisions of the Act.

Conclusion

The Geographical Indications of Goods (Registration and Protection) Act, 1999, strikes a
balance between granting exclusive rights to genuine GI users and preventing misuse by
unauthorized individuals or entities. By defining offences under Sections 38 to 44 and
imposing stringent penalties, the Act provides a robust mechanism for safeguarding the
interests of producers and ensuring the integrity of GIs. These provisions also play an
essential role in preserving the cultural, economic, and social significance of GIs for India.

13. Explain the objects of geographical indications (registration and protection) Act,
1999. 10

Ans) The Geographical Indications of Goods (Registration and Protection) Act, 1999
(hereinafter referred to as the GI Act) was enacted to provide protection for geographical
indications in India in compliance with the country’s obligations under the TRIPS
Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights). The Act
seeks to safeguard goods that derive their unique qualities, reputation, or other attributes from
their geographical origin and preserve the cultural, traditional, and economic importance of
such products.

The Act ensures the rights of producers associated with such goods and provides a framework
for registering geographical indications (GIs), enforcing protection, and preventing
unauthorized use or exploitation of the GI.

Objects of the GI Act, 1999

The primary objective of the GI Act, 1999, is to establish a legal framework for the
registration and protection of geographical indications in India. Below is a detailed
explanation of its objectives, with references to relevant sections:

1. Protection of the Reputation and Identity of Region-Specific Goods

One of the foremost objectives of the GI Act is to protect the identity, uniqueness, and
reputation of goods associated with a particular geographical area. According to Section 1(3)
of the Act, its provisions extend to securing and safeguarding the intellectual property of
traditional products tied to geographic origin.

For instance, goods like Darjeeling Tea, Pochampally Ikat, and Kancheepuram Silk
derive their reputation and authenticity from their respective geographical areas, which makes
their identity highly valuable. Protecting the GI ensures that this association is preserved, and
no unfair advantage is taken by unauthorized users.

2. To Prevent Unauthorized Use and Infringement

The GI Act protects producers by preventing the unauthorized use, imitation, and
infringement of GIs, ensuring that goods not produced in the designated geographical region
are not falsely represented as such. Section 22 specifies that unauthorized users or producers
using a GI in a deceptive or misleading manner are committing infringement. For example:

• Use of "Darjeeling Tea" for tea that is not produced in the Darjeeling region would
violate the Act.

The objective here is to avoid misrepresentation and unfair competition, preserving the
goodwill and trust of consumers in the authenticity of goods.

3. Economic Development and Benefit to Producers

The GI Act promotes the economic welfare of producers and communities that depend on
GI-protected goods for their livelihoods. By granting exclusive rights to producers under
Section 21, the Act enables them to market their goods at premium prices and prevents
dilution of their unique attributes in competitive markets.

For example, the registration of Tirupati Laddu ensures that the community tied to its
production derives economic benefits without being overshadowed by counterfeit goods or
unauthorized sellers.

4. Preservation of Traditional Knowledge and Cultural Heritage

The Act plays a significant role in preserving India’s traditional knowledge, culture, and
heritage associated with specific goods. By recognizing and protecting traditional practices
tied to production, the GI Act helps sustain the cultural identity of a region and passes down
such knowledge to future generations.

Section 11(2) specifies that the application for registration must include proof of how the GI
links to the cultural and geographical environment of the region. Products such as Nagpur
Orange or Banarasi Sarees carry generations of cultural knowledge and expertise.

5. Compliance with International Obligations

The GI Act ensures India’s compliance with the provisions of the TRIPS Agreement,
specifically Article 22, which mandates the protection of GIs as an essential aspect of
intellectual property rights. The Act aligns India's legal framework with global standards
while preserving domestic rights to geographical indications.

Section 1(2) specifies that the Act extends throughout India, demonstrating India’s
commitment to global obligations under WTO agreements while ensuring domestic benefits.
6. Protection Against Genericide and Misuse

The Act also seeks to prevent the genericide of geographical indications by ensuring that
they do not become generic terms for products. Section 9(f) prohibits the registration of GIs
that have become generic names in their country of origin. This ensures that the exclusivity of
GIs like "Champagne" or "Basmati" is not diluted or exploited by becoming merely
descriptive of the product category.

This objective protects the commercial value of the GI and ensures that it continues to signify
origin, authenticity, and quality.

7. Facilitation of Trade

The GI Act contributes to enhancing domestic and international trade in GI-protected

goods by granting legal recognition and exclusive rights. The recognition of goods through
the GI registration system promotes consumer confidence, adds value to exports, and allows
India to compete on global markets.

For instance, the GI protection for Aranmula Kannadi has opened global markets for this
unique handcrafted mirror from Kerala, which otherwise might have suffered from lack of
recognition and unfair competition.

8. Encouragement of Geographical Indication Registration

The Act encourages producers and communities to register their GIs by providing legal
protections and economic incentives. As per Section 11, producers, associations, or
authorities representing the interests of a region can apply for the registration of a GI.
Registration is not mandatory but offers advantages such as:

1. Legal protection for the GI.

2. The right to initiate legal proceedings for infringement.

3. Exclusivity in using the GI.

For example, registration helps prevent misuse of goods like "Feni" from Goa or "Mysore
Sandalwood Oil."

9. Exclusive Rights of Producers

The Act establishes and protects the exclusive rights of authorized users and registered
proprietors. Once registered, the GI gives exclusive rights to use it in trade concerning the
specific goods, ensuring that the benefits are limited to the geographical region's producers as
per Sections 21 and 22.

These exclusive rights discourage unfair exploitation of GIs while empowering producers.

10. Consumer Protection

The GI Act also ensures that consumers are not deceived or misled about the true origin or
authenticity of goods. Protecting GIs provides consumers confidence in the quality and
geographic association of the goods they purchase, which is crucial for markets selling
premium products.

Section 22(1)(a) prevents the use of GIs in ways that mislead the public about the goods' true
origin.

Conclusion

The Geographical Indications of Goods (Registration and Protection) Act, 1999, serves
as an essential legal instrument for protecting geographical indications in India. Its objectives
extend beyond mere legal compliance, aiming to safeguard traditional knowledge, promote
economic development, enhance consumer trust, and preserve India’s rich cultural heritage.
Through its detailed provisions, the Act ensures fair competition, prevents misuse, and
empowers regional communities associated with GI-protected goods to sustain their
livelihoods and global reputation. By aligning with international standards, the Act positions
India as a strong advocate of intellectual property rights in a globalized world.

14. Discuss the position of geographical indications and trade related to intellectual
property rights(TRIPs) agreement.

Ans) The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement,

established under the auspices of the World Trade Organization (WTO) in 1995, is one of
the most comprehensive international agreements dealing with the protection and
enforcement of intellectual property rights (IPRs). Among the various forms of IPRs
addressed in TRIPS, Geographical Indications (GIs) hold a significant place due to their
role in preserving the cultural heritage, traditional knowledge, and economic interests of
specific regions.

Geographical Indications (GIs) are defined in Article 22(1) of the TRIPS Agreement as
"indications which identify a good as originating in the territory of a Member, or a region or
locality in that territory, where a given quality, reputation or other characteristic of the good
is essentially attributable to its geographic origin." This definition reflects the connection
between the quality or reputation of goods and their place of origin.

The TRIPS Agreement mandates WTO member countries, including India, to provide
specific levels of protection for GIs. The GI provisions under TRIPS create a framework for
international recognition, enforcement, and prevention of misuse in trade.

I. Position of Geographical Indications Under TRIPS

The TRIPS Agreement establishes a legal framework for the recognition and protection of
GIs at the international level. Its provisions focus on:

1. Defining GIs.

2. Laying down the minimum standards for protection.

3. Specifying higher protection for certain categories of goods.

4. Detailing enforcement mechanisms to prevent misuse in international trade.

1. Definition and Scope of GIs (Article 22(1))

As per TRIPS, GIs apply to goods whose quality, reputation, or other characteristics are
inherently linked to their geographical origin. Examples include:

• Darjeeling Tea from India.

• Champagne from France.

• Roquefort Cheese from France.

• Feta Cheese from Greece.

The protection of GIs under TRIPS is not limited to agricultural products; it extends to
handicrafts, industrial goods, and any other product whose unique qualities are associated
with a specific geographic region.

2. Minimum Standards for Protection (Article 22(2))

The TRIPS Agreement mandates member countries to provide minimum protections for GIs
to prevent:

1. Misleading Use: The use of GIs in a manner that misleads consumers about the true
origin of the product.

2. Unfair Competition: Practices that undermine the reputation of a GI, such as passing
off or counterfeiting.

For example, using "Darjeeling Tea" for tea not grown in the Darjeeling region would
mislead consumers and constitute an act of unfair competition under TRIPS.

3. Higher Protection for Wines and Spirits (Article 23)

TRIPS distinguishes between general GIs and those applicable to wines and spirits. Article
23 provides an additional layer of protection for wines and spirits by prohibiting the use of
GIs even in cases where there is no likelihood of consumer confusion. This means:

• Terms like "Champagne" or "Scotch" cannot be used for products not originating
from their respective regions, even if they are accompanied by disclaimers such as
"style," "type," or "imitation."

The heightened protection reflects the importance of these products in global trade and the
need to prevent dilution of their reputation.

4. Exceptions to GI Protection (Article 24)

TRIPS provides certain exceptions where GI protection may not apply:

1. Generic Terms: Terms that have become common names for specific goods, such as
"cheddar cheese," may lose their protection.

2. Prior Use: If a term has been used in a bona fide manner before the GI was protected,
its use may continue.
 3. Trademarks vs. GIs: TRIPS provides mechanisms to resolve conflicts between
previously registered trademarks and new GIs.

For example, the term "Feta" has been contested, as some countries claim it has become
generic.

5. Enforcement Mechanisms (Articles 22 to 24)

The TRIPS Agreement requires member countries to establish enforcement mechanisms to

protect GIs effectively. These include:

1. Legal remedies for preventing misuse, such as injunctions and damages.

2. Administrative procedures to facilitate registration of GIs.

Each member country must implement these mechanisms within its domestic legal
framework.

II. India’s Compliance with TRIPS on GIs

India, as a WTO member, enacted the Geographical Indications of Goods (Registration

and Protection) Act, 1999, to comply with its TRIPS obligations. Key features of India’s GI
regime in light of TRIPS are:

1. Alignment with Article 22: India’s definition of GIs under Section 2(e) of the GI Act
closely mirrors TRIPS’ definition, emphasizing the link between product qualities and
geographic origin.

2. Compliance with Article 23: India provides enhanced protection for specific
products, such as Darjeeling Tea, which was the first Indian GI registered and
recognized internationally.

3. Legal Framework for Enforcement: The GI Act allows for civil and criminal
remedies to prevent misuse and ensure compliance with TRIPS obligations.

III. Impact of TRIPS on GIs in International Trade

• Economic Gains for Producers:GI-protected goods command premium prices in global

markets. For example, Indian products like Pashmina Shawls and Malabar Pepper
benefit economically from GI recognition.

• Increased Trade and Exports:TRIPS ensures international recognition and enforcement

of GIs, facilitating smoother trade across borders. Indian GIs like Mysore Silk and
Basmati Rice have gained prominence in global markets due to TRIPS compliance.

• Preservation of Cultural Identity:The TRIPS Agreement safeguards traditional

knowledge and regional heritage tied to GIs, preventing cultural appropriation and
misrepresentation in international trade.

• International Disputes:TRIPS has led to disputes over GIs, particularly involving

products that are claimed by multiple countries or have become generic. Examples
 include disputes over "Basmati Rice" between India and Pakistan and "Feta Cheese"
between the European Union and other nations.

Conclusion

The TRIPS Agreement plays a critical role in establishing a robust international legal
framework for the recognition and protection of Geographical Indications. By ensuring
minimum protection standards, enhanced protection for specific goods like wines and spirits,
and remedies against misuse, TRIPS facilitates fair trade and promotes economic growth.
India’s Geographical Indications Act, 1999, demonstrates compliance with TRIPS while
fostering protection for culturally significant goods like Darjeeling Tea and Pashmina
Shawls. However, challenges remain in balancing global trade interests with national
concerns, particularly regarding higher-level protections for developing countries. Despite
these challenges, TRIPS has successfully elevated the significance of GIs as an essential
element of intellectual property in global trade.

15. Note on the geographical indications registered in India. 6

Ans) Geographical Indications (GIs) in India are protected under the Geographical
Indications of Goods (Registration and Protection) Act, 1999, which provides legal
recognition to region-specific products with unique qualities, reputation, or characteristics
attributed to their place of origin. Registered GIs cover diverse categories such as agricultural
goods, handicrafts, foodstuffs, and manufactured goods, showcasing India's rich cultural,
traditional, and ecological heritage.

Examples of Registered GIs

1. Agricultural Goods

• Darjeeling Tea (India’s first registered GI).

• Basmati Rice (Himalayan foothills).

• Nagpur Orange (Vidarbha, Maharashtra).

• Coorg Coffee (Karnataka).

2. Handicrafts

• Kancheepuram Silk Sarees (Tamil Nadu).

• Pashmina Shawls (Jammu & Kashmir).

• Banarasi Brocades and Sarees (Varanasi).

• Channapatna Toys (Karnataka).

3. Foodstuffs

• Tirupati Laddu (Andhra Pradesh).

• Dharwad Pedha (Karnataka).

 • Bikaneri Bhujia (Rajasthan).

• Hyderabad Haleem (Telangana).

4. Manufactured Goods

• Goan Feni (Goa).

• Kannauj Perfume (Uttar Pradesh).

• Nilgiri Tea (Tamil Nadu).

Significance of GI Registration

• Economic Benefits: Protects producers’ rights, promotes premium pricing, and boosts
exports.

• Preservation: Safeguards cultural and traditional knowledge.

• Consumer Protection: Prevents counterfeit goods and ensures authenticity.

Conclusion

The GI registration system preserves India’s cultural and economic identity while ensuring
global recognition and protection of its unique regional products.

16. What is geographical indication? Explain it’s essential attributes. 10

Ans) A Geographical Indication (GI) is a form of intellectual property that identifies goods
as originating from a specific geographical region where certain qualities, reputation, or
characteristics of the goods are attributable to their origin. Protected under the Geographical
Indications of Goods (Registration and Protection) Act, 1999, a GI emphasizes the
relationship between the product’s distinctiveness and its geographical environment, which
includes natural and human factors like climate, topography, culture, and traditional
knowledge.

GIs safeguard the socio-economic interests of communities by preventing misuse or

unauthorized usage, ensuring exclusive rights to producers within the specified region.
Examples include Darjeeling Tea, Kancheepuram Silk, and Basmati Rice, which are
internationally renowned for their quality, authenticity, and cultural significance.

I. Definition of Geographical Indication

Section 2(1)(e) of the Geographical Indications of Goods Act, 1999 defines a GI as:

"An indication that identifies goods as originating in a specific territory, region, or locality
within that territory, where a given quality, reputation, or other characteristic of the goods is
essentially attributable to its geographical origin."

This legal definition aligns with Article 22(1) of the TRIPS Agreement, ensuring India’s
compliance with international standards for GI protection.
II. Essential Attributes of a Geographical Indication

A geographical indication has several defining characteristics that distinguish it as a unique

intellectual property. These attributes are as follows:

1. Link to a Specific Geographical Region

A GI establishes a strong connection between the goods and their geographical origin, where
the natural or human environment directly influences their distinctive qualities. The specific
region is identified in the GI registration, and the product must originate only from the
mentioned area to qualify for protection.

For example:

• Darjeeling Tea derives its distinctive flavor from the unique climate of the Darjeeling
region.

• Pochampally Ikat Sarees are tied to the weaving techniques practiced in

Pochampally, Telangana.

2. Product Reputation and Quality

A GI highlights the unique quality or reputation of goods that distinguish them from similar
products available in the market. This quality or reputation must stem from the geographical
area or the traditional practices associated with it.

For instance:

• Basmati Rice is valued for its aroma, flavor, and long-grain texture, which are
inherently linked to the soil and climate of the Indo-Gangetic plains.

• Kancheepuram Silk sarees are renowned for their vibrant colors and intricate zari
work, tied to the traditional craftsmanship of weavers in Tamil Nadu.

3. Protection of Collective Community Rights

Unlike patents or trademarks, which provide protection to individuals or entities, a GI

protects the collective rights of producers or communities in a specific geographical area.
Registration ensures that only authorized users from the designated region can use the GI to
market their goods.

For example, the producers of Mysore Sandalwood Oil in Karnataka collectively benefit
from the GI protection, ensuring fair economic benefits and preserving the product’s
exclusivity.

4. Prevention of Misuse and Counterfeiting

A GI serves to prevent unauthorized parties from misusing the registered name, thereby
protecting the integrity of the product and its origin. It acts as a legal tool to prevent
counterfeiting and unfair competition, ensuring that only authentic products are marketed
under the registered GI.
For instance:

• Unauthorized use of "Nagpur Orange" or "Tirupati Laddu" labels by sellers outside

the respective regions would constitute an infringement.

5. Essential Characteristics Attributable to Geography

The unique attributes of GI products must be directly tied to their geographical origin,
whether through natural factors (climate, soil, water, etc.) or human factors (traditional
knowledge, skills, cultural practices). The production, processing, or preparation of the
product must primarily occur in the identified region.

For example:

• The creamy texture and distinct flavor of Malabar Pepper result from the fertile soil
and humid climate of Kerala.

• The reflective clarity of Aranmula Kannadi mirrors is a result of the traditional

methods of casting metal in Aranmula, Kerala.

6. Exclusive Rights for Producers

Registered GIs confer exclusive rights to producers and authorized users from the identified
geographical area. This means:

1. Producers within the region can label their products with the GI to distinguish them
from non-authentic goods.

2. Authorized users can enforce their rights in cases of infringement or passing off.

7. Time-Bound and Renewable Protection

Under the Indian GI Act, registration is valid for 10 years, after which it can be renewed
indefinitely. This time-bound framework ensures continued compliance with quality
standards and sustained efforts for preserving the product’s identity.

8. Recognition of Traditional Knowledge and Skills

GIs acknowledge and protect the traditional knowledge, skills, and cultural practices
associated with the production process. This protection incentivizes communities to sustain
their traditional expertise and promotes the socio-economic development of artisans, farmers,
and other producers.

III. Importance of Geographical Indications

• Economic Value: GI registration ensures premium pricing for authentic goods, promoting
economic well-being for local producers.

• Global Recognition: GIs act as a marketing tool, enhancing the export potential of goods
by assuring authenticity.
• Preservation of Culture: It helps preserve traditional knowledge, craftsmanship, and
cultural practices.

• Consumer Protection: GIs ensure that consumers are not misled by counterfeit goods
claiming to be from specific regions.

Conclusion

Geographical Indications are a unique form of intellectual property that bridges the link
between products, their origin, and traditional practices. By conferring exclusivity, preventing
misuse, and safeguarding traditional knowledge, GIs ensure that communities reap economic
and cultural benefits. The essential attributes of a GI, such as the connection to geographic
origin, unique quality, and collective rights, form the foundation of its protection under the
Geographical Indications Act, 1999, thereby empowering producers and enhancing global
recognition of India's diverse heritage.

17. The plaintiff challenges use of impugned name Darjeeling for the purpose of lounge
as it strengthens the commercial activity of this persons were actually in the business
of the Darjeeling tea against the defendant before the court. Decide. 6

Ans) The dispute involves the plaintiff, engaged in the business of Darjeeling tea,
challenging the defendant’s use of the name "Darjeeling" for their lounge. The plaintiff
argues that the use of the name "Darjeeling" strengthens the defendant’s commercial activity
and creates an impression of association with the Darjeeling tea business, which has
acquired a reputation and exclusivity as a Geographical Indication (GI).

The case raises issues under the Geographical Indications of Goods (Registration and
Protection) Act, 1999 (GI Act), the Trademarks Act, 1999, and the common law principles
of passing off. The court must determine whether the defendant’s use of the name
"Darjeeling" constitutes infringement, dilution, or unfair trade practices.

I. Legal Issues Involved

• Geographical Indication Infringement:

The name "Darjeeling" is a registered GI for tea under the Geographical Indications Act,
1999. The key question is whether the defendant’s use of "Darjeeling" for a lounge
infringes the exclusive rights conferred by the GI registration.

• Trademark and Passing Off:

If "Darjeeling" is used as a trademark or as a deceptive representation, it could lead to
confusion about the origin or endorsement of the lounge by the Darjeeling tea industry.

• Dilution and Misrepresentation:

The use of the term "Darjeeling" in unrelated commercial contexts might dilute its
reputation and mislead the public.

II. Analysis

1. Protection under the Geographical Indications Act, 1999

Section 21 of the GI Act prohibits unauthorized use of a registered GI for goods not
originating from the registered geographical region. "Darjeeling" is a GI recognized for its
association with high-quality tea grown exclusively in the Darjeeling region of West Bengal.
However, the GI Act protects the term only in the context of goods and services linked to the
product’s origin and reputation. The defendant’s use of "Darjeeling" for a lounge is not
directly linked to the sale or representation of tea but might indirectly create an association.

2. Likelihood of Confusion

The plaintiff could argue that the defendant’s use of "Darjeeling" creates a misleading
association, implying an endorsement or connection with Darjeeling tea.
Under Section 29 of the Trademarks Act, 1999, infringement occurs if the mark causes
confusion regarding its origin. Here, the use of "Darjeeling" for a lounge might create an
erroneous belief that it is related to or endorsed by the Darjeeling tea industry, especially if
tea is served or marketed in the lounge.

3. Passing Off

Under common law, passing off protects the goodwill associated with a product or service.
The plaintiff must prove:

• Reputation: Darjeeling tea enjoys global recognition and goodwill as a premium

product.

• Misrepresentation: The defendant’s use of "Darjeeling" misleads the public into

believing an association with Darjeeling tea.

• Damage: Such use could harm the exclusivity and reputation of the name
"Darjeeling," diluting its distinctiveness.

If these elements are proven, the court could rule in favor of the plaintiff under the doctrine of
passing off.

4. Dilution of Reputation

Even if there is no direct infringement or confusion, the unauthorized use of "Darjeeling"

could dilute its value as a GI. This is particularly relevant under Section 9(3) of the
Trademarks Act, 1999, which prohibits trademarks that harm the reputation of a well-known
GI.

III. Defendant’s Likely Defense

• Generic Use: The defendant may argue that "Darjeeling" is being used in a generic or
descriptive sense to refer to the region and not to the tea. If "Darjeeling" is not directly
associated with the sale of tea, the GI protection might not extend to the lounge's name.

• No Likelihood of Confusion: The defendant may contend that there is no likelihood of

confusion, as the lounge does not compete with the Darjeeling tea business or attempt to
misrepresent itself as connected to it.
• Freedom of Expression: The defendant could invoke freedom of expression, claiming
that the use of a geographic term for unrelated purposes is permissible unless it causes
substantial harm.

IV. Judicial Precedents

In Tea Board of India v. ITC Ltd. (2011): The Calcutta High Court ruled that unauthorized
use of "Darjeeling" for goods or services not connected to Darjeeling tea could dilute its
reputation and lead to unfair commercial practices.

In Honda Motors Co. v. Charanjit Singh (2002): The court ruled that using a well-known
mark for unrelated goods or services could lead to dilution, even if there was no direct
competition.

Conclusion

The plaintiff’s claim is likely to succeed if it establishes that the defendant’s use of
"Darjeeling" for a lounge:

• Creates an impression of association with the Darjeeling tea business, leading to

confusion.

• Dilutes the reputation and distinctiveness of the name "Darjeeling" as a GI.

The court may rule in favour of the plaintiff under the Geographical Indications Act, 1999,
and common law principles of passing off. To prevent misuse of the name, the court may
grant an injunction restraining the defendant from using "Darjeeling" for their lounge while
upholding the exclusivity and reputation of the term as a symbol of premium tea from the
Indian subcontinent.

18. ‘X’ a person wants to obtain geographical indication registration for a variety of
Chilly grown in the region to the exclusion of other. Advise him.

Ans) Geographical Indications (GIs) are a type of intellectual property that identify goods
originating from a specific geographic region, where the product's qualities, reputation, or
characteristics are essentially attributable to that location. In India, the Geographical
Indications of Goods (Registration and Protection) Act, 1999 provides the framework for the
registration, protection, and enforcement of GIs. If X wants to register a variety of chili
grown in a specific region, they must follow the legal provisions of this Act.

To advise X, it is important to consider whether the chili variety meets the criteria for GI
registration, the procedure for applying, and the benefits and limitations of GI registration.

criteria for GI registration

the procedure for applying

19. Rama and Lakshman authorized users who have registered for identical or nearly
resembling geographical indication. Rama claims an exclusive right over it. Can he
claim it. 6
Ans) The issue concerns whether Rama, who is an authorized user of a registered
Geographical Indication (GI), can claim exclusive rights over the same GI as against
Lakshman, who is also an authorized user of an identical or nearly resembling GI. The legal
framework governing this dispute falls under Section 21(3) of the Geographical Indications
of Goods (Registration and Protection) Act, 1999.

Section 21(3): Exclusive Rights of Authorized Users

As per Section 21(3) of the Act:

1. When two or more persons are authorized users of identical or nearly resembling
geographical indications, the registration of the GI does not grant any exclusive
right to one user over the other. In simpler terms:

o The registration of a GI does not give Rama (or Lakshman) the power to
exclude the other from using the GI.

o Registration does not create a hierarchy or exclusivity among multiple

authorized users.

2. Both Rama and Lakshman, being authorized users, have equal rights to use the GI in
question.

Right Against Third Parties

• While Rama cannot claim exclusive rights against Lakshman, both Rama and
Lakshman can together enforce their rights as authorized users against third
parties attempting to infringe upon or misuse the GI.

• They enjoy collective protection against unauthorized users under Section 21(1) and
Section 22.

Condition or Limitation in the Register

Section 21(3) includes a notable exception:

If the rights of authorized users are subject to specific conditions or limitations entered in
the GI register, those conditions will apply. For instance:

• If the GI register limits Rama’s rights to a specific variety of goods or geographical

area, then his claim would be valid only within the scope of such conditions or
limitations.

• However, in the absence of such specific conditions, both users share equal and non-
exclusive rights to the GI.

Conclusion

In this scenario:
 1. Rama cannot claim exclusive rights over the GI as against Lakshman because
both are authorized users of identical or nearly resembling GIs, and their rights are
coequal under Section 21(3).

2. Their exclusive rights can only be exercised collectively against third parties, not
against each other.

3. Unless specific limitations or conditions are entered in the GI register (such as

granting one user exclusive rights in specific goods or areas), Rama’s claim cannot
succeed.

Thus, Rama’s claim for exclusivity is invalid under Section 21(3).

20. The petitioner challenges the grant of geographical indication to ‘Tirupati Laadus’
the Tirumala Tirupati Devastanam, a single entity neglecting community interest of
other people living in Tirupati and further causing prejudice to article 25 of the
constitution of India. Decide. 6

Ans) The petitioner challenges the grant of a Geographical Indication (GI) to "Tirupati
Laddus," alleging that the registration, granted exclusively to the Tirumala Tirupati
Devasthanam (TTD), violates the community interest of other residents in Tirupati.
Additionally, the petitioner claims that the registration infringes upon Article 25 of the
Constitution of India, which guarantees the right to freely profess, practice, and propagate
religion. This case raises questions regarding the legitimacy of GI registrations for religious
or cultural goods, their impact on community rights, and constitutional concerns.

I. Analysis

1. Legitimacy of GI Registration

The GI Act permits registration to associations, organizations, or groups representing the

producers of a good. The TTD applied for and obtained GI registration for "Tirupati Laddus"
on the grounds that:

• The laddus are exclusively prepared by the TTD in its premises.

• The laddus possess unique qualities and reputation associated with the Tirupati temple
and its religious significance.

• The preparation of the laddus involves specific methods and ingredients unique to the
temple.

While the TTD is a single entity, it represents the devotees and traditions of the temple. The
Madras High Court, in the case of Tirupati Laddu GI Case, held that the GI registration
was valid as the laddus’ qualities and reputation were intrinsically linked to the temple.
However, this does not negate the need to address potential community interests.

2. Community Interest

The petitioner’s claim that the GI registration excludes the broader Tirupati community is
worth examining. The GI Act protects goods linked to a region’s culture and geography. In
this case, the laddus’ reputation and identity are derived from the temple’s association, not the
general region. Thus, the TTD’s exclusivity is justified if:

• It reflects the specific qualities and cultural significance tied to the temple.

• It does not prevent other producers in Tirupati from marketing their own sweets,
provided they do not misuse the "Tirupati Laddu" GI.

The petitioner must demonstrate that the GI registration unfairly restricts legitimate interests
of others in the region. Otherwise, the registration aligns with the GI Act’s purpose of
safeguarding authenticity and reputation.

3. Alleged Infringement of Article 25

The petitioner contends that the GI registration infringes upon their right to freely practice
and propagate religion under Article 25. However, this claim is weak for the following
reasons:

• Article 25 does not grant a right to commercially exploit religious practices or symbols.

• The GI registration does not interfere with the petitioner’s ability to participate in temple
rituals or consume laddus.

• The registration merely protects the name "Tirupati Laddu" from misuse, ensuring its
association with the temple remains intact.

The Supreme Court, in cases like Sri Venkataramana Devaru v. State of Mysore (1958),
has held that religious practices are subject to regulations that serve public order and do not
encroach upon constitutional freedoms.

4. Constitutionality and Public Interest

The GI registration does not violate Article 14 or Article 25, as it:

• Protects the specific reputation of "Tirupati Laddus," which is linked to the temple.

• Does not deprive the community of its rights, as other producers are free to sell similar
products under different names.

• Serves the public interest by preventing counterfeit laddus, ensuring the authenticity of
the temple's offerings.

II. Judicial Precedents

Tirupati Laddu GI Case: The Madras High Court upheld the GI registration granted to
TTD, noting that the laddus’ unique qualities were inseparable from the temple. The court
also clarified that the registration did not prevent others from selling similar products under
different names.

Tea Board of India v. ITC Ltd. (2011): This case highlighted the need to balance GI
protection with community interests and fair use, ensuring that GIs are not monopolized
beyond their legitimate scope.
Conclusion

The GI registration granted to the TTD for "Tirupati Laddus" is legally valid and does not
violate the petitioner’s constitutional rights under Article 25. The registration safeguards the
specific qualities and reputation of laddus prepared in the temple, ensuring authenticity and
preventing misuse. However, the TTD must ensure that the GI does not unfairly restrict
legitimate trade by others in the region, provided they do not use the term "Tirupati Laddu."

The petitioner’s claim is unlikely to succeed unless they can demonstrate concrete harm to
the community’s interests or their constitutional rights. Based on the current facts, the GI
registration stands justified under the Geographical Indications Act, 1999, and aligns with
public and cultural interests.
 UNIT V

1. Explain organs and function of world intellectual property organization(WIPO).

10(2) or Explain the important organs of world intellectual property
organization(WIPO). 10 or Note on world intellectual property
organization(WIPO). 6

Ans) The World Intellectual Property Organization (WIPO) is a specialized agency of the
United Nations established to promote the protection of intellectual property (IP) rights
across the world. WIPO plays a pivotal role in developing a global framework for intellectual
property protection, ensuring that creators and innovators benefit from their intellectual
contributions while balancing public interest and fostering innovation.

WIPO was established on July 14, 1967, under the WIPO Convention, which came into
force in 1970. Headquartered in Geneva, Switzerland, WIPO currently has 193 member
states, making it one of the most widely represented global organizations in the intellectual
property field. WIPO's primary goal is to create a system that promotes creativity and
innovation, ensures legal certainty, and facilitates the fair use of IP for the advancement of
society.

I. Objectives of WIPO

WIPO aims to:

• Promote the protection of intellectual property globally through cooperation among

member states and collaboration with other international organizations.

• Encourage innovation, creativity, and the transfer of technology by ensuring that creators
and inventors benefit from their work.

• Develop harmonized IP laws and provide mechanisms for resolving disputes relating to IP
rights.

• Foster the use of intellectual property as a means for economic, cultural, and social
development.

II. Organs of WIPO

WIPO operates through several organs, each with distinct responsibilities. These organs
ensure the smooth functioning of the organization and the achievement of its goals. The
primary organs of WIPO include the following:

1. General Assembly

The General Assembly is the supreme decision-making body of WIPO, composed of all the
member states that are parties to the WIPO Convention. It meets biennially and is responsible
for key governance functions such as:

• Approving the organization’s budget.

• Deciding on the admission of new member states.

 • Formulating policies and general directives for the organization’s activities.

• Electing the members of the WIPO Coordination Committee and the Director-
General.

The General Assembly plays a critical role in ensuring that WIPO operates in accordance
with its objectives and aligns with the needs of its member states.

2. WIPO Coordination Committee

The Coordination Committee oversees the implementation of WIPO's policies and provides
advice to the General Assembly. It is composed of representatives from selected member
states and is responsible for:

• Recommending candidates for the post of Director-General.

• Reviewing WIPO's budget and programs before submission to the General Assembly.

• Monitoring the overall functioning of the organization.

3. Standing Committees

WIPO has established various standing committees to address specific areas of intellectual
property. These committees play an essential role in developing and harmonizing
international IP laws. Examples include:

• Standing Committee on Copyright and Related Rights (SCCR): Focuses on

copyright issues.

• Standing Committee on Patents (SCP): Addresses patent-related matters.

• Standing Committee on the Law of Trademarks, Industrial Designs, and

Geographical Indications (SCT):Works on issues related to trademarks and
industrial designs.

4. Director-General

The Director-General is the executive head of WIPO and is elected by the General Assembly
for a term of six years. The Director-General is responsible for the overall administration of
WIPO, implementing its programs, and representing the organization internationally. The
current Director-General (as of 2023) is Daren Tang, who succeeded Francis Gurry.

The Director-General also oversees the day-to-day activities of WIPO, ensures the
implementation of the General Assembly's decisions, and promotes the goals of the
organization globally.

5. Secretariat

The Secretariat, known as the International Bureau, is the administrative body of WIPO. It
provides support to the member states, committees, and other organs of WIPO.
Headquartered in Geneva, the Secretariat is responsible for:
 • Facilitating international cooperation in IP matters.

• Managing international treaties administered by WIPO.

• Providing technical and legal assistance to member states.

• Offering training and capacity-building programs.

The Secretariat employs legal, technical, and administrative professionals to support WIPO’s
operations.

6. Assemblies of Specific Treaties

WIPO administers several international IP treaties, such as the Paris Convention (1883),
the Berne Convention (1886), and the Patent Cooperation Treaty (PCT) (1970). Each
treaty has its own assembly composed of the member states that are parties to the treaty.
These assemblies oversee the implementation of the respective treaties and coordinate with
WIPO’s General Assembly to ensure consistency in policies.

III. Functions of WIPO

WIPO performs a wide range of functions aimed at promoting intellectual property

protection, fostering innovation, and resolving IP-related disputes. The core functions of
WIPO include:

1. Administration of International IP Treaties

WIPO is responsible for administering and overseeing the implementation of numerous

international IP treaties, such as:

• Paris Convention for the Protection of Industrial Property (1883): Governs the
protection of patents, trademarks, and industrial designs.

• Berne Convention for the Protection of Literary and Artistic Works

(1886): Protects copyrights and related rights.

• Patent Cooperation Treaty (PCT) (1970): Facilitates the international filing of

patent applications.

• Madrid System for International Trademark Registration: Provides a mechanism

for registering trademarks in multiple jurisdictions.

WIPO ensures that these treaties are effectively implemented and updated to address
emerging challenges in the global IP regime.

2. Dispute Resolution

WIPO provides a neutral platform for resolving intellectual property disputes. The WIPO
Arbitration and Mediation Center offers services such as arbitration, mediation, and
expedited dispute resolution for IP conflicts, particularly those involving patents, trademarks,
and domain names.
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) administered by WIPO is
a popular mechanism for resolving disputes related to domain names that infringe
trademarks.

3. Development of International IP Policies

WIPO works closely with member states to harmonize IP laws and develop international
standards. Through its standing committees, WIPO addresses complex legal and policy issues
related to patents, copyrights, and trademarks. For instance, it develops model laws and
guidelines to assist countries in framing their domestic IP laws.

4. Capacity-Building and Technical Assistance

WIPO provides technical assistance and capacity-building programs to developing and least-
developed countries (LDCs). These programs include:

• Training workshops for policymakers, IP offices, and legal practitioners.

• Support for establishing and modernizing IP offices.

• Guidance on implementing international treaties and IP laws. WIPO also works with
local governments to promote innovation and creativity as tools for economic
development.

5. Promoting Innovation and Creativity

Through its various programs, WIPO encourages innovation and the use of intellectual
property for economic growth. For example:

• The WIPO GREEN initiative promotes green technologies by connecting technology

providers with users.

• The Technology and Innovation Support Centers (TISCs) provide innovators with
access to technical resources, patent databases, and expert advice.

6. IP Data and Knowledge Sharing

WIPO serves as a repository of IP data and resources, offering free access to:

• PATENTSCOPE: A database of international patent applications filed under the

PCT.

• Global Brand Database: A tool for searching trademarks and related data.

• WIPO Lex: An online database of IP laws and treaties from around the world.

These resources facilitate research, innovation, and informed decision-making for IP

stakeholders.

7. Enforcement of IP Rights
While WIPO does not directly enforce IP rights, it assists member states in strengthening
their enforcement mechanisms. This includes training enforcement agencies, providing legal
tools, and promoting awareness about IP infringement issues.

IV. Significance of WIPO in the Global IP Regime

WIPO plays a crucial role in shaping the global intellectual property landscape. Its
contributions include:

• Facilitating Global Trade and Innovation: By providing a harmonized framework for

IP protection, WIPO promotes cross-border trade and collaboration in research and
development.

• Balancing Interests: WIPO balances the interests of creators, businesses, and the public
by promoting the fair use of IP and encouraging technology transfer.

• Enhancing Access to IP: WIPO’s tools and databases democratize access to IP

information, benefiting researchers, businesses, and policymakers.

• Promoting Sustainable Development: WIPO supports sustainable development goals by

promoting green technologies, digital innovation, and cultural heritage preservation.

Conclusion

The World Intellectual Property Organization (WIPO) serves as the global custodian of
intellectual property rights, fostering innovation, creativity, and collaboration across its
member states. Through its organs, such as the General Assembly, Director-General, and
specialized committees, WIPO develops international IP policies, administers treaties, and
provides dispute resolution services. By addressing emerging challenges in the digital age
and ensuring equitable access to IP resources, WIPO continues to play a pivotal role in
advancing global economic, social, and cultural development. Its efforts to harmonize IP laws
and promote innovation make it a cornerstone of the international intellectual property
system.

2. Explain the functions of world intellectual property organization(WIPO). 10 (3)

Ans) The World Intellectual Property Organization (WIPO) is a specialized agency of the
United Nations established in 1967 under the WIPO Convention to promote the protection
and development of intellectual property (IP) worldwide. With its headquarters in Geneva,
Switzerland, WIPO currently has 193 member states, representing almost the entire global
community. WIPO’s primary focus is to create an international framework that facilitates the
effective protection of IP rights, fosters innovation and creativity, and encourages economic
development.

Intellectual property includes creations of the mind such as inventions, literary and artistic
works, designs, symbols, and names used in commerce. WIPO provides a forum for its
member states to negotiate and develop international IP policies and treaties, administers a
range of IP services, and promotes collaboration between nations in the field of intellectual
property.
The functions of WIPO revolve around facilitating international cooperation in IP,
administering global treaties, and supporting the implementation of strong IP systems. By
providing a neutral and effective platform, WIPO enables the harmonization of laws and
policies to meet the changing needs of society.

I. Functions of WIPO

WIPO performs a wide array of functions to support its objectives of advancing intellectual
property protection, promoting innovation, and fostering cooperation among member states.
These functions can be broadly categorized into administrative, developmental, policy-
making, and dispute resolution roles.

1. Administration of International IP Treaties

One of WIPO's primary functions is to administer international treaties related to the

protection of intellectual property rights. WIPO oversees the implementation and
enforcement of several significant treaties, including:

• Paris Convention for the Protection of Industrial Property (1883): This treaty
governs the protection of patents, trademarks, and industrial designs.

• Berne Convention for the Protection of Literary and Artistic Works (1886): This
treaty focuses on copyright and related rights.

• Patent Cooperation Treaty (PCT) (1970): This treaty facilitates the international
filing of patents through a unified process.

• Madrid System for International Trademark Registration: WIPO manages this

system, which allows businesses to register trademarks across multiple countries
through a single application.

• Hague System for the International Registration of Industrial Designs: WIPO

provides a centralized system for the international protection of industrial designs.

• WIPO Copyright Treaty (1996): A treaty addressing copyright in the digital age.

WIPO ensures the efficient operation of these treaties by providing technical and legal
assistance to member states, organizing meetings, and overseeing amendments or updates as
necessary.

2. Developing and Harmonizing International IP Policies

WIPO serves as a global forum for member states to negotiate and develop international IP
laws, policies, and standards. This harmonization of IP laws ensures that intellectual property
rights are recognized and protected consistently across jurisdictions.

Through its standing committees, such as the Standing Committee on Patents (SCP) and
the Standing Committee on Copyright and Related Rights (SCCR), WIPO facilitates
discussions on emerging IP challenges. These committees address complex issues like:

• Patent law harmonization.

 • Digital copyright enforcement.

• Protection of traditional knowledge and genetic resources.

• Evolving IP concerns in the age of artificial intelligence and blockchain.

By bringing member states together, WIPO fosters cooperation and ensures that IP laws
evolve to reflect the changing technological and economic landscape.

3. Providing IP Services

WIPO provides a range of global services that simplify the process of obtaining and
protecting intellectual property rights internationally. These services include:

• Patent Cooperation Treaty (PCT): Allows inventors to file a single international

patent application that is recognized in multiple countries.

• Madrid System: Enables businesses to register and manage trademarks across

several countries through a single procedure.

• Hague System: Facilitates the registration of industrial designs internationally.

• Lisbon System: Protects geographical indications, which identify products as

originating from specific regions (e.g., Champagne for sparkling wine).

• WIPO Arbitration and Mediation Center: Offers dispute resolution services for IP
conflicts, such as those involving domain names or patent infringement.

These services reduce administrative burdens, streamline application processes, and provide a
cost-effective way for individuals and businesses to secure IP protection across multiple
jurisdictions.

4. Promoting Capacity Building and Development

WIPO supports developing countries and least-developed countries (LDCs) by providing

technical assistance, training, and capacity-building programs. These initiatives aim to
strengthen the IP systems of member states and ensure that intellectual property contributes to
economic and social development. Key efforts include:

• Capacity Building: WIPO offers training programs for IP professionals,

policymakers, and enforcement agencies.

• Technology and Innovation Support Centers (TISCs): These centers provide

researchers, innovators, and entrepreneurs in developing countries with access to
patent databases, technical resources, and expert guidance.

• Development Agenda Projects: WIPO’s Development Agenda ensures that the

benefits of intellectual property are equitably distributed and that IP policies promote
sustainable development.

5. Dispute Resolution
WIPO plays a vital role in resolving disputes related to intellectual property through
its WIPO Arbitration and Mediation Center. This neutral forum offers alternative dispute
resolution (ADR) mechanisms such as arbitration, mediation, and expert determination.
These methods are faster, more cost-effective, and less adversarial than traditional court
litigation.

A notable aspect of WIPO's dispute resolution services is the Uniform Domain Name
Dispute-Resolution Policy (UDRP), which addresses conflicts involving domain names that
infringe on trademarks. This system has been widely used to resolve cybersquatting cases and
protect brand owners from online infringement.

6. Fostering Innovation and Creativity

WIPO promotes innovation and creativity by encouraging the use of intellectual property as a
tool for economic growth. Its initiatives include:

• WIPO GREEN: A platform that connects providers of green technologies with those
seeking sustainable solutions to environmental challenges.

• WIPO Re:Search: A collaboration that facilitates research and development in

neglected diseases by providing access to IP and other resources.

• Creative Industries Sector: WIPO supports artists, musicians, and filmmakers by

promoting copyright protection and ensuring fair remuneration for their creative
work.

By fostering innovation, WIPO ensures that intellectual property contributes to global

challenges such as climate change, public health, and economic inequality.

7. Knowledge Sharing and Data Dissemination

WIPO serves as a global repository of intellectual property data and resources, offering free
access to a wide range of tools and databases. These include:

• PATENTSCOPE: A comprehensive database of international patent applications

filed under the PCT.

• Global Brand Database: A resource for searching trademarks and related

information.

• WIPO Lex: A repository of IP laws, treaties, and court decisions from member states.

These platforms enable researchers, businesses, and policymakers to access critical

information for innovation and decision-making.

8. IP Enforcement and Public Awareness

While WIPO does not directly enforce IP rights, it provides member states with the tools and
expertise needed to combat counterfeiting, piracy, and other IP infringements. WIPO
organizes training programs for enforcement agencies, develops best practices, and raises
public awareness about the importance of IP rights.
Through initiatives such as World Intellectual Property Day, WIPO educates the public
about the role of intellectual property in fostering creativity and innovation.

II. Significance of WIPO’s Functions

The functions of WIPO are critical to the global intellectual property system for several
reasons:

• Facilitating International Trade: By harmonizing IP laws and providing streamlined

application processes, WIPO simplifies cross-border trade and innovation.

• Encouraging Economic Development: WIPO’s capacity-building programs help

developing countries harness the economic benefits of intellectual property.

• Promoting Creativity and Cultural Heritage: WIPO ensures that creators and artists
are fairly rewarded, preserving cultural heritage and fostering creative industries.

• Addressing Global Challenges: WIPO leverages IP to address global issues such as

climate change, public health, and technological advancements.

Conclusion

The World Intellectual Property Organization (WIPO) plays a pivotal role in fostering a
global intellectual property ecosystem that supports innovation, creativity, and economic
growth. Through its various functions—such as administering international treaties,
providing dispute resolution mechanisms, and promoting capacity-building—WIPO ensures
that intellectual property rights are effectively protected and utilized to benefit society as a
whole.

3. Explain the salient features of world intellectual property organization (WIPO). 10

Ans) The World Intellectual Property Organization (WIPO) is a specialized agency of the
United Nations (UN) tasked with promoting the protection of intellectual property (IP) across
the globe. Intellectual property encompasses creations of the mind, such as inventions,
literary and artistic works, designs, symbols, names, and images used in commerce. WIPO
aims to encourage innovation and creativity, foster global economic development, and
provide a structured legal framework for protecting IP rights in an increasingly
interconnected world.

WIPO was established on July 14, 1967, under the WIPO Convention, which came into
force in 1970. Headquartered in Geneva, Switzerland, WIPO has 193 member states,
making it one of the largest global organizations dedicated to intellectual property. Its
significance lies in harmonizing international IP laws, facilitating cross-border cooperation,
and ensuring that creators and innovators receive adequate protection and rewards for their
contributions.

The organization operates through various treaties, services, and initiatives, which address the
needs of diverse stakeholders, including governments, businesses, creators, and the public.

Salient Features of WIPO

The World Intellectual Property Organization is a dynamic body with wide-ranging roles and
responsibilities, ensuring that intellectual property serves as a tool for economic, social, and
cultural development. Its key features highlight its structure, objectives, operations, and
initiatives.

1. A Specialized Agency of the United Nations

WIPO is one of the 15 specialized agencies of the United Nations, which means it has an
independent mandate while working under the broader framework of the UN. WIPO
contributes to the UN's goals by encouraging the use of intellectual property for sustainable
development, reducing inequalities, and fostering innovation to address global challenges.

As a specialized agency, WIPO functions autonomously but coordinates its activities with
other UN agencies, such as the World Trade Organization (WTO), the United Nations
Development Programme (UNDP), and the United Nations Conference on Trade and
Development (UNCTAD).

2. Membership and Global Reach

WIPO has 193 member states, which include almost every country in the world, making it a
truly global organization. Membership in WIPO is open to any state that is a member of the
United Nations or satisfies certain conditions under the WIPO Convention. This wide
membership ensures that WIPO serves as a platform for addressing international IP issues,
harmonizing legal standards, and facilitating cooperation among diverse jurisdictions.

3. Administration of IP Treaties

One of WIPO's core features is its administration of several key international IP treaties.
These treaties form the backbone of the global intellectual property system. Some of the most
significant treaties administered by WIPO include:

• Paris Convention for the Protection of Industrial Property (1883): Governs

patents, trademarks, and industrial designs.

• Berne Convention for the Protection of Literary and Artistic Works

(1886): Provides protection for copyrights and related rights.

• Patent Cooperation Treaty (PCT) (1970): Facilitates international patent

applications through a unified system.

• Madrid System for International Trademark Registration: Allows trademarks to

be registered in multiple countries through a single application.

• Hague System for the International Registration of Industrial Designs: Provides a

mechanism for registering industrial designs internationally.

WIPO ensures the effective implementation of these treaties, facilitates communication

among member states, and provides administrative support for treaty-related processes.

4. Policy Development and Harmonization

WIPO acts as a global forum for negotiating and developing intellectual property policies and
laws. Its role is to harmonize IP laws across jurisdictions, ensuring consistency in the
protection and enforcement of intellectual property rights. Through its standing committees
and working groups, WIPO addresses emerging IP challenges such as:

• Artificial intelligence and its intersection with IP.

• Protection of traditional knowledge and cultural heritage.

• Balancing IP rights with public interest, especially in areas like access to medicines.

This policymaking function ensures that the global IP framework remains relevant in a
rapidly evolving technological and economic landscape.

5. Provision of Global IP Services

WIPO provides a range of services to support the international protection of intellectual

property rights. These services are designed to simplify and streamline the process of
obtaining and managing IP rights across borders. Notable services include:

• Patent Cooperation Treaty (PCT): Allows inventors to file a single international

patent application that is recognized in multiple countries.

• Madrid System for Trademarks: Enables businesses to register their trademarks in

multiple jurisdictions through a centralized system.

• Hague System for Industrial Designs: Simplifies the process of obtaining design
protection in multiple countries.

• Lisbon System for Geographical Indications: Protects products with specific

geographic origins (e.g., Champagne, Darjeeling tea).

These services provide cost-effective and efficient mechanisms for businesses and innovators
seeking international protection for their intellectual property.

6. WIPO Arbitration and Mediation Center

WIPO provides alternative dispute resolution (ADR) mechanisms for resolving intellectual
property disputes. The WIPO Arbitration and Mediation Center offers mediation,
arbitration, and expert determination services, which are particularly useful for cross-border
IP disputes. The center is widely recognized for its expertise in handling disputes involving:

• Patent infringement.

• Trademark conflicts.

• Domain name disputes (under the Uniform Domain-Name Dispute-Resolution Policy,

UDRP).

This ADR platform provides a neutral, cost-effective, and efficient alternative to litigation.

7. Capacity-Building and Technical Assistance

WIPO plays a vital role in building the capacity of developing and least-developed countries
(LDCs) to utilize intellectual property for economic growth. Through its development-
oriented initiatives, WIPO provides:

• Technical Assistance: Support for establishing or modernizing IP offices and legal

frameworks.

• Training and Workshops: Capacity-building programs for policymakers, legal

practitioners, and enforcement agencies.

• Technology and Innovation Support Centers (TISCs): Resources for researchers

and innovators, including access to patent databases and expert advice.

These efforts aim to reduce the global disparity in the use and enforcement of intellectual
property rights.

8. Promotion of Innovation and Creativity

WIPO fosters innovation and creativity by encouraging the effective use of IP to address
societal challenges and promote sustainable development. Initiatives like WIPO
GREEN connect innovators with users seeking environmentally friendly technologies,
while WIPO Re:Search facilitates research partnerships to address neglected tropical
diseases.

Additionally, WIPO works to promote the creative industries (music, film, literature) by
protecting the rights of artists and ensuring fair remuneration.

9. Knowledge Sharing and IP Databases

WIPO acts as a repository of IP knowledge and offers free access to several databases and
resources. These include:

• PATENTSCOPE: An international patent database.

• Global Brand Database: A comprehensive database for trademarks.

• WIPO Lex: A repository of IP laws and treaties from around the world.

These resources democratize access to intellectual property information and support research,
innovation, and policymaking.

10. Cybersecurity and Digital IP Protection

In the digital era, WIPO addresses challenges related to cybersecurity, online IP enforcement,
and digital rights management. It develops frameworks and provides guidelines for protecting
copyrights, trademarks, and other IP in cyberspace, including combating piracy,
counterfeiting, and unauthorized use.

11. Public Awareness and Education

WIPO promotes public awareness about intellectual property rights and their importance in
fostering innovation and creativity. Campaigns like World Intellectual Property Day,
observed annually on April 26, educate the public about the role of IP in economic, social,
and cultural development.

Conclusion

The World Intellectual Property Organization (WIPO) is a cornerstone of the global

intellectual property system, ensuring that creators and innovators receive the recognition and
rewards they deserve. Its salient features, from administering international treaties and
providing dispute resolution mechanisms to promoting innovation and capacity building,
demonstrate its multifaceted approach to IP protection and promotion.

4. Discuss Salient features of Paris agreement. 10

Ans) The Paris Agreement on intellectual property refers to the Paris Convention for the
Protection of Industrial Property (1883), one of the earliest and most significant
international treaties in the field of intellectual property law. It laid the foundation for a
harmonized global system of industrial property rights protection and remains highly relevant
in regulating intellectual property (IP) on a global scale. The Paris Convention specifically
addresses industrial property, which includes patents, trademarks, industrial designs,
service marks, trade names, geographical indications, and the suppression of unfair
competition.

The Paris Convention was established with the aim of ensuring that the industrial property
rights of citizens of one member country would be recognized and protected in other member
countries. It is administered by the World Intellectual Property Organization (WIPO) and
has been ratified by more than 175 countries, making it a cornerstone of the global
intellectual property system.

The salient features of the Paris Convention reflect its focus on creating a fair, uniform, and
non-discriminatory framework for the protection of industrial property rights across national
borders. The Convention establishes principles such as national treatment, right of
priority, and independence of patents while addressing issues like trademarks, trade names,
and unfair competition.

I. Salient Features of the Paris Agreement (Paris Convention for the Protection of
Industrial Property)

The Paris Convention is renowned for introducing several fundamental principles that govern
the protection of industrial property internationally. Its key features address the
harmonization of IP laws across jurisdictions and the protection of inventors and businesses
in a globalized world.

1. National Treatment

One of the most significant features of the Paris Convention is the principle of national
treatment. Under this principle, member countries are obligated to provide the same
protection to citizens of other member countries as they provide to their own nationals. This
ensures that foreign inventors, businesses, and creators enjoy equal treatment and do not face
discrimination in terms of legal protections, filing requirements, or enforcement.
For example, if a U.S. inventor files for a patent in India (a signatory to the Paris
Convention), they will receive the same level of protection and legal rights as an Indian
inventor filing a patent within India.

2. Right of Priority

The right of priority is a cornerstone of the Paris Convention. It allows an applicant who
files a patent, trademark, or industrial design application in one member country to claim
priority in other member countries within a specific time frame:

• 12 months for patents and utility models.

• 6 months for trademarks and industrial designs.

This feature ensures that applicants do not lose their rights in other member countries even if
they file their applications at a later date. For instance, if an inventor files a patent application
in Germany on January 1, they can file applications in other member countries within 12
months (before December 31) while retaining the priority date of January 1. This eliminates
the risk of losing IP rights to competitors during this period.

3. Independence of Patents

Another significant feature of the Paris Convention is the principle of independence of

patents. This principle states that a patent granted in one member country is independent of
patents granted in other countries. The validity, scope, and enforcement of a patent in one
country are not affected by decisions made in other jurisdictions.

For example, if a patent application is rejected in one member country, this rejection does not
affect the patent application or granted patent in another member country. Similarly, the
revocation or cancellation of a patent in one country has no bearing on the status of the patent
in other countries.

4. Protection of Trademarks

The Paris Convention ensures the protection of trademarks and prohibits the refusal or
invalidation of trademarks solely because they are not filed or registered in the home country
of the applicant. It also protects well-known trademarks, meaning that even if a well-known
trademark is not registered in a particular member country, it cannot be used without
authorization.

For instance, global brands like "Apple" or "Coca-Cola" enjoy protection as well-known
trademarks under the Paris Convention even in countries where they may not yet be
registered.

5. Protection Against Unfair Competition

The Paris Convention recognizes the need to suppress unfair competition, which is defined
as any act contrary to honest commercial practices. This includes acts such as:

• Misleading consumers through false advertising.

• Imitating the trademarks or trade dress of a competitor.

 • Misappropriating trade secrets.

Member countries are obligated to take measures to prevent and address unfair competition to
ensure fair trade practices and protect businesses from deceptive or fraudulent conduct.

6. Trade Names

The Paris Convention extends protection to trade names without requiring formal
registration. Trade names refer to the names under which businesses operate. For example, if
a business is globally recognized under a particular name, such as "Microsoft," the trade
name is protected in all member countries, even if the business has not formally registered the
trade name in a specific country.

7. International Application Procedures

The Paris Convention facilitates international applications by streamlining the filing process.
It ensures that filing an application in one member country satisfies procedural requirements
in other member countries, provided the right of priority is claimed within the designated
time frame.

For example, a company filing a trademark application in Japan can use the same application
as a basis for registering the trademark in other member countries, such as France or India, by
claiming priority.

8. Flexibility for Member States

While the Paris Convention harmonizes certain aspects of IP protection, it allows member
states to retain their sovereignty in areas such as procedural requirements, the substantive
examination of patents, and the criteria for granting IP rights. This flexibility ensures that
national IP systems can adapt to local needs and priorities while adhering to the overarching
principles of the Convention.

9. Role of WIPO in Administering the Paris Convention

The World Intellectual Property Organization (WIPO) administers the Paris Convention
and plays a crucial role in its implementation. WIPO provides technical assistance to member
countries, organizes meetings for treaty amendments, and promotes awareness about the
Convention’s principles. It also offers services like the Patent Cooperation Treaty
(PCT)and the Madrid System to simplify international applications for patents and
trademarks.

II. Relevance of the Paris Convention in Modern Intellectual Property Law

The Paris Convention remains one of the most influential treaties in the field of intellectual
property. Its principles, such as national treatment and the right of priority, have been
incorporated into subsequent international agreements, including the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS) under the World Trade
Organization (WTO). TRIPS builds upon the Paris Convention’s framework, mandating
member states to adopt minimum standards of IP protection.

In today’s globalized economy, the Paris Convention continues to facilitate international

trade, innovation, and investment by providing a predictable and harmonized system of IP
protection. It ensures that inventors and businesses can safeguard their intellectual property
rights across borders without facing discrimination or procedural hurdles.

Conclusion

The Paris Convention for the Protection of Industrial Property (1883) is a foundational
treaty that has shaped the global intellectual property landscape for over a century. Its salient
features, including national treatment, the right of priority, and the independence of patents,
have established a fair and consistent framework for protecting industrial property across
member countries. By addressing trademarks, trade names, and unfair competition, the
Convention ensures that creators and businesses can operate in a competitive yet equitable
global environment.

5. Explain objects of Paris convention. 10 And Paris convention guarantees the

protection of intellectual property. Discuss. 10

Ans) The Paris Convention for the Protection of Industrial Property (1883) is one of the
most significant international treaties in the field of intellectual property (IP). It was
established to create a global framework for the protection of industrial property rights,
which include patents, trademarks, industrial designs, trade names, service marks, and the
suppression of unfair competition. The Paris Convention was the first major treaty to
recognize the international nature of intellectual property and the need for cooperation among
nations to ensure fair protection for creators and inventors worldwide.

Administered by the World Intellectual Property Organization (WIPO), the Paris

Convention has over 175 contracting states and has been instrumental in shaping modern IP
regimes. Its primary aim is to harmonize and simplify the protection of industrial property
rights across member countries, ensuring a fair and consistent system of IP protection. The
objectives of the Paris Convention reflect its commitment to fostering innovation,
encouraging cross-border trade, and promoting economic development through robust
intellectual property systems.

I. Objects of the Paris Convention

The Paris Convention is built upon a set of foundational objectives that serve as the guiding
principles for the international protection of industrial property rights. These objectives focus
on creating a uniform and equitable global framework that promotes innovation, economic
growth, and fair competition while ensuring that inventors, creators, and businesses receive
adequate protection for their intellectual property.

1. Establishing Equal Treatment for Foreign Nationals (National Treatment)

One of the primary objectives of the Paris Convention is to ensure that nationals of one
member country receive the same treatment and protection for their industrial property rights
in other member countries as that granted to the nationals of those countries. This principle
of national treatment is a cornerstone of the Convention and eliminates discrimination
based on nationality. It ensures that foreign creators and inventors are not subject to
additional barriers, restrictions, or disadvantages when seeking protection for their patents,
trademarks, or designs in another member country.
For example, an inventor from Germany applying for a patent in India under the Paris
Convention will be treated the same as an Indian inventor applying for the same rights in
India.

2. Providing a Right of Priority

The Paris Convention seeks to protect inventors and businesses from losing their rights due to
the time-consuming process of filing for protection in multiple countries. To achieve this, the
Convention introduced the right of priority, which allows applicants to claim the filing date
of their first application in one member country as the effective filing date in other member
countries, provided they file within a specified time frame.

• The time frame for claiming priority is 12 months for patents and utility
models and 6 months for trademarks and industrial designs.

• This objective ensures that applicants are not at a disadvantage due to delays in filing
applications in multiple jurisdictions and helps prevent competitors from exploiting
the delay to claim rights over the same invention or mark.

For instance, if an inventor files a patent application in the United States on January 1, they
can file for the same patent in France, India, or any other member country by December 31 of
the same year, claiming the January 1 filing date as their priority date.

3. Promoting Independence of Patents

Another crucial objective of the Paris Convention is to establish the independence of

patents granted in different member countries. This means that the validity, revocation, or
enforcement of a patent in one country does not affect its status in other countries. Each
patent is considered an independent entity subject to the national laws of the country in which
it is granted.

For example, if a patent is invalidated in Germany, it does not automatically lead to the
invalidation of the same patent in India or Japan. This independence ensures that the fate of a
patent is not tied to decisions made in other jurisdictions, thereby providing greater certainty
and security to patent holders.

4. Encouraging the Protection of Trademarks and Trade Names

The Paris Convention seeks to protect trademarks and trade names internationally. It ensures
that trademarks registered in one member country are eligible for protection in other member
countries, provided they meet the necessary legal requirements. The Convention also
prohibits member states from refusing or invalidating trademarks solely because they are not
registered in the applicant’s home country.

Additionally, the Paris Convention recognizes the importance of well-known trademarks,

offering them protection even if they are not registered in a particular member country. This
protects globally recognized brands, such as "Apple" or "Coca-Cola," from unauthorized use
by third parties.

Trade names, which identify businesses or companies, are also protected under the
Convention without the need for formal registration. This objective ensures that businesses
operating internationally can safeguard their identities and reputations.
5. Combating Unfair Competition

One of the primary objectives of the Paris Convention is to ensure that businesses operate in a
fair and competitive environment. To achieve this, the Convention obligates member
countries to take measures against unfair competition, which includes practices such as:

• Imitating the trademarks or trade dress of a competitor.

• Engaging in false or misleading advertising.

• Exploiting confidential information or trade secrets without authorization.

By suppressing unfair competition, the Convention promotes ethical business practices,

protects consumers from deception, and ensures that businesses can compete on a level
playing field.

6. Facilitating International Cooperation in IP Protection

The Paris Convention promotes international cooperation among member states to improve
and harmonize the protection of industrial property rights. It provides a common framework
for countries to develop their domestic IP laws in alignment with international standards,
ensuring consistency and reducing complexity in cross-border IP protection.

This objective is particularly relevant in a globalized economy where businesses and

inventors frequently operate across multiple jurisdictions. By fostering collaboration and
knowledge-sharing, the Convention enables member states to address emerging challenges in
intellectual property, such as the digital economy and biotechnology.

7. Simplifying International Filing Procedures

The Paris Convention seeks to simplify the process of obtaining protection for industrial
property rights in multiple countries. It provides a legal basis for international filing systems
such as the Patent Cooperation Treaty (PCT) and the Madrid System for International
Trademark Registration, both of which are administered by WIPO.

These systems allow applicants to file a single international application that is recognized in
multiple jurisdictions, reducing administrative burdens, costs, and procedural barriers. This
objective is particularly beneficial for small businesses and individual inventors seeking
global protection for their intellectual property.

8. Promoting Harmonization and Uniformity

A key objective of the Paris Convention is to promote the harmonization of intellectual

property laws across member countries. By establishing common principles, such as the
right of priority and national treatment, the Convention ensures that IP rights are protected in
a consistent and predictable manner worldwide. This uniformity reduces legal uncertainties,
facilitates international trade, and encourages innovation by providing a stable environment
for creators and businesses.

II. Impact and Relevance of the Paris Convention

The Paris Convention has had a profound and lasting impact on the global intellectual
property system. It serves as the foundation for modern IP treaties and agreements, including
the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights) under the
World Trade Organization (WTO). Many of the principles established in the Paris
Convention, such as national treatment and priority rights, have been incorporated into
subsequent international agreements.

In an increasingly globalized world, the objectives of the Paris Convention remain highly
relevant. By providing a harmonized framework for IP protection, the Convention facilitates
innovation, cross-border trade, and economic development. It ensures that inventors and
businesses can protect their intellectual property rights internationally while fostering fair
competition and ethical business practices.

Conclusion

The Paris Convention for the Protection of Industrial Property is a landmark treaty that has
shaped the global intellectual property landscape for over a century. Its objectives, which
include ensuring equal treatment for foreign nationals, providing priority rights, and
promoting the protection of trademarks and patents, have created a fair and predictable
system for protecting industrial property rights internationally.

6. Examine/discuss the provisions of Paris convention, 1883. 10 (2) or note on

provisions of Paris convention. 6 (2)

Ans) The Paris Convention for the Protection of Industrial Property, 1883, is one of the
first international treaties aimed at harmonizing intellectual property laws and ensuring fair
protection for industrial property rights. Administered by the World Intellectual Property
Organization (WIPO), the Paris Convention set a framework for protecting patents,
trademarks, industrial designs, geographical indications, trade names, and the suppression of
unfair competition across its member states. The Convention establishes principles and rights
that remain foundational to the global intellectual property system today.

The Paris Convention was established at a time when international trade was growing, and
there was a pressing need to protect intellectual property rights across national borders.
Before the Convention, inventors, trademark holders, and creators faced significant
challenges in protecting their rights in foreign jurisdictions. The Convention addressed these
challenges by creating a framework for cooperation among nations, ensuring that creators and
businesses from one member state would enjoy equal treatment in other member states.

With over 175 contracting states today, the Paris Convention continues to serve as a
cornerstone of international intellectual property law. The provisions of the Convention are
particularly notable for introducing principles like national treatment, the right of priority,
and the independence of patents, which form the basis of modern IP law.

I. Provisions of the Paris Convention, 1883

The Paris Convention contains various provisions aimed at facilitating the protection of
industrial property rights across borders. These provisions cover principles of equality,
procedures for securing protection, and specific rules for patents, trademarks, industrial
designs, and unfair competition. Some of the key provisions are as follows:
1. National Treatment (Article 2 and 3)

One of the core principles of the Paris Convention is national treatment, as outlined in
Articles 2 and 3. This provision ensures that nationals of one member country receive the
same protection for their industrial property rights in other member countries as is granted to
the nationals of those countries. It prevents discrimination based on nationality and creates a
level playing field for foreign and domestic creators and businesses.

For example, a U.S. inventor applying for a patent in India under the Paris Convention must
be treated the same as an Indian inventor seeking a patent in India. This principle applies to
all categories of industrial property, including patents, trademarks, and industrial designs.

2. Right of Priority (Article 4)

Article 4 of the Paris Convention introduces the right of priority, which allows an applicant
to claim the filing date of their first application in one member country as the effective filing
date for subsequent applications in other member countries. This priority period is 12 months
for patents and utility models and 6 months for trademarks and industrial designs.

This provision is particularly important because it allows inventors and businesses to secure
their rights globally without losing priority to competitors during the time it takes to file
applications in multiple jurisdictions. For example, if an inventor files a patent application in
Germany on January 1, they can file the same patent application in France, India, or other
member countries by December 31 and retain the January 1 priority date.

3. Independence of Patents (Article 4bis)

The Convention establishes the independence of patents across member states in Article
4bis. This principle ensures that patents granted in one member country are independent of
patents granted in other member countries. The grant, validity, or revocation of a patent in
one jurisdiction does not affect the status of the same patent in another jurisdiction.

For example, if a patent is invalidated in Japan due to non-compliance with local laws, it does
not automatically result in the invalidation of the same patent in Canada or Brazil. This
independence allows patent holders to safeguard their rights in different jurisdictions without
being affected by adverse decisions in one country.

4. Protection of Trademarks and Trade Names (Articles 6–8)

The Paris Convention includes detailed provisions for the protection of trademarks and trade
names:

• Trademarks (Article 6): The Convention requires member countries to recognize

trademarks registered in other member states, provided the marks comply with local
laws. It also protects well-known trademarks, even if they are not registered in a
specific member country. This prevents unauthorized use of globally recognized
brands like "Apple" or "Coca-Cola."

• Trade Names (Article 8): Trade names are protected under the Convention without
the need for formal registration. This provision ensures that businesses can safeguard
their reputations and prevent unauthorized use of their names in foreign jurisdictions.
5. Protection Against Unfair Competition (Article 10bis)

Article 10bis of the Paris Convention focuses on suppressing unfair competition, which is
defined as any act contrary to honest commercial practices. This provision requires member
states to prohibit activities such as:

• Misleading advertising.

• Imitation of trademarks, trade names, or trade dress.

• Misappropriation of trade secrets.

The objective of this provision is to ensure fair trade practices, protect consumers, and
maintain ethical standards in commerce.

6. Filing Procedures and International Applications (Articles 11 and 12)

The Paris Convention simplifies the process of securing IP protection in multiple jurisdictions
by providing standardized filing procedures. Articles 11 and 12 encourage member countries
to facilitate the filing and processing of applications, particularly for patents and trademarks.

Although the Paris Convention does not directly establish an international filing system, it
laid the foundation for subsequent treaties like the Patent Cooperation Treaty (PCT) and
the Madrid Agreement on Trademarks, which streamline the international registration of
patents and trademarks.

7. Patents: Compulsory Licensing and Working Requirements (Article 5)

Article 5 addresses issues related to patents, particularly regarding compulsory licensing and
working requirements. Member states may allow compulsory licenses if a patent is not being
worked (i.e., utilized) within their territory within a specified time frame. This provision
ensures that patents are not used to create monopolies or restrict access to essential
technologies.

For example, if a pharmaceutical company holds a patent on a life-saving drug but does not
make the drug available in a particular country, the government of that country may issue a
compulsory license to allow a local manufacturer to produce and distribute the drug.

8. International Exhibitions (Article 11)

The Paris Convention provides temporary protection for inventions, trademarks, and
industrial designs displayed at international exhibitions. This ensures that creators do not
lose their rights due to public disclosure during such exhibitions. For example, an inventor
showcasing their innovation at a global trade fair is given temporary protection to prevent
competitors from exploiting the invention before formal patent applications are filed.

9. Administrative Functions and Role of WIPO

The Paris Convention designates the World Intellectual Property Organization (WIPO) as
its administrative body. WIPO is responsible for:

• Organizing meetings of member states.

 • Facilitating amendments or updates to the Convention.

• Promoting awareness of the Convention's provisions.

• Providing technical assistance to member states.

II. Significance of the Paris Convention

The Paris Convention remains a cornerstone of international intellectual property law due to
its forward-looking principles and comprehensive provisions. Its impact can be observed in
several ways:

• Harmonization of IP Laws: The Convention laid the foundation for harmonizing

intellectual property laws globally, ensuring consistency and predictability in IP
protection.

• Facilitating Innovation and Trade: By providing uniform standards for IP protection,

the Convention encourages cross-border trade, investment, and innovation.

• Adaptability: The Convention has evolved to address changing global needs, influencing
subsequent treaties like the TRIPS Agreement under the World Trade Organization
(WTO).

Conclusion

The Paris Convention for the Protection of Industrial Property, 1883, is a landmark treaty
that continues to shape the global intellectual property system. Its provisions,
including national treatment, the right of priority, and the protection of trademarks and
patents, ensure a fair and harmonized framework for protecting industrial property across
borders. By fostering cooperation among member states, the Convention promotes
innovation, economic development, and fair competition.

7. Discuss briefly filing of application for international registration of marks under the
Madrid convention. 6

Ans) The Madrid System for the International Registration of Marks, established under
the Madrid Agreement (1891)and the Madrid Protocol (1989), is a unified system
administered by the World Intellectual Property Organization (WIPO). It allows
businesses and individuals to register their trademarks in multiple member countries through
a single application. As a result, the Madrid System simplifies the process of obtaining and
managing trademark protection internationally, significantly reducing the administrative
burden and costs associated with filing separate applications in individual countries.

The system is governed by two primary treaties:

1. Madrid Agreement Concerning the International Registration of Marks (1891).

2. Madrid Protocol Relating to the Madrid Agreement (1989).

The Madrid Protocol, which provides a more flexible and user-friendly approach, has become
the preferred route for international registration and is widely used by the majority of member
countries. India joined the Madrid Protocol on July 8, 2013, enabling Indian businesses to
seek trademark protection in over 130 countries using this streamlined system.

The Madrid System facilitates the centralized filing and management of international
trademark applications, enabling trademark owners to protect their marks in several
jurisdictions simultaneously, without having to file separate applications in each country.

I. Filing of an Application Under the Madrid System

Filing an application for international registration of a mark under the Madrid System
involves a well-defined process governed by the provisions of the Madrid Protocol and the
rules established by WIPO. The process begins in the applicant's country of origin and
proceeds through WIPO to the designated member countries where protection is sought.

1. Basic (National or Regional) Application or Registration

To use the Madrid System, an applicant must first file a trademark application or register the
mark in their home country. This is referred to as the basic application or registration, and
it serves as the foundation for the international registration.

For example, an Indian business wishing to file for international registration under the
Madrid Protocol must first file a trademark application with the Office of the Controller
General of Patents, Designs, and Trademarks (CGPDTM) in India. The details of the
basic application, such as the goods or services covered, the mark itself, and the classification
under the Nice Classification, will form the basis for the international application.

2. Filing the International Application Through the Office of Origin

Once the basic application or registration is in place, the applicant can file an international
application through their home trademark office, also referred to as the Office of Origin.
In India, the CGPDTM serves as the Office of Origin.

The international application must include:

• The same mark as in the basic application or registration.

• A list of goods or services that corresponds to or is narrower than the list in the basic
application or registration.

• The designation of member countries where protection is sought.

The applicant pays the necessary fees for the international application, which includes fees
for the WIPO and the designated countries.

The Office of Origin verifies that the international application matches the details of the basic
application or registration and forwards the application to WIPO. This ensures that the
application is compliant with the requirements of the Madrid Protocol.

3. Examination by WIPO and Issuance of International Registration

Once the Office of Origin submits the international application to WIPO, it undergoes formal
examination to ensure that all procedural requirements are met. WIPO does not examine the
mark for substantive issues, such as distinctiveness or conflicts with existing marks. Instead,
it checks:

• The accuracy of the application.

• Compliance with the requirements of the Madrid Protocol.

• Payment of the applicable fees.

If the application meets all formal requirements, WIPO registers the mark in
the International Register and issues an International Registration Certificate. The mark
is also published in the WIPO Gazette of International Marks, which serves as an official
notification to the member countries.

The date of the international registration is the same as the date of filing the international
application with the Office of Origin, provided the application reaches WIPO within two
months. If there is any delay, the filing date will be the date on which WIPO receives the
application.

4. Notification to Designated Member Countries

Once the international registration is granted, WIPO notifies the trademark offices of
the designated countries where protection is sought. Each designated country then examines
the application according to its national laws and procedures.

For example, if an Indian applicant designates the United States, Japan, and the European
Union in their international application, the trademark offices in these jurisdictions will
examine the mark independently.

5. Substantive Examination by Designated Countries

The trademark offices of the designated countries conduct a substantive examination to

determine whether the mark can be registered under their respective laws. This includes
examining issues such as:

• Distinctiveness of the mark.

• Conflicts with existing trademarks.

• Compliance with the local classification of goods and services.

If a designated country finds no grounds for refusal, it grants protection to the mark in that
jurisdiction, and the trademark is treated as if it were registered directly in that country.

If a refusal is issued, the applicant is notified through WIPO. The applicant has the
opportunity to respond to the refusal by directly dealing with the trademark office of the
concerned country.

6. Duration of Examination and Protection

Under the Madrid Protocol, designated countries must complete their examination and notify
WIPO of any refusal within:
 • 12 months under the Madrid Agreement.

• 18 months under the Madrid Protocol (which allows for extensions in certain cases).

Once registered, the international trademark remains valid for 10 years from the date of
registration, with the option to renew it for successive 10-year periods. Renewals are
processed centrally through WIPO, eliminating the need to renew the trademark separately in
each designated country.

7. Dependence on Basic Application (Central Attack Rule)

The Madrid System operates under the central attack rule, which means that the
international registration is dependent on the basic application or registration for the first five
years. If the basic application is refused, canceled, or invalidated during this period, the
international registration is also canceled.

However, the applicant can convert the canceled international registration into national
applications in the designated countries within three months of cancellation, retaining the
original filing date (this is known as "transformation").

II. Advantages of Filing Under the Madrid System

The Madrid System offers several advantages for applicants seeking international protection
of trademarks:

• Centralized Filing: A single application filed through the Office of Origin simplifies the
process of seeking protection in multiple countries.

• Cost-Effectiveness: The Madrid System reduces costs by eliminating the need for
separate applications in each designated country.

• Simplified Management: Renewals, modifications, and changes in ownership can be

managed centrally through WIPO.

• Global Reach: With over 130 member countries, the Madrid System provides access to a
vast network of jurisdictions.

III. Challenges and Limitations

Despite its advantages, the Madrid System has certain limitations:

• The central attack rule makes the international registration vulnerable during the first
five years if the basic application is challenged.

• Not all countries are members of the Madrid Protocol, so protection in non-member
countries requires separate applications.

• The substantive examination process in each designated country may result in varying
outcomes.

Conclusion
The Madrid System for the International Registration of Marks is a significant tool for
businesses and individuals seeking trademark protection across multiple jurisdictions. By
streamlining the filing process, reducing administrative burdens, and centralizing
management, the Madrid System fosters global trade and innovation while ensuring the
effective protection of intellectual property rights.

For applicants in India and other member countries, the Madrid Protocol provides an efficient
and cost-effective pathway to secure international trademark protection. However, its
dependence on the basic application for the first five years and the requirement to navigate
national laws in designated countries underscore the importance of careful planning and
expert legal guidance when using the Madrid System. Ultimately, the Madrid System
represents a cornerstone of international trademark law, enabling businesses to expand their
global reach and safeguard their brands.

8. Note on patent co-operation treaty (P.C.T.). 6 (3) and Note on advantages of patent
co-operation treaty(P.C.T.). 6 And Explain the objectives of patent co-operative
treaty (PCT). 10

Ans) The Patent Cooperation Treaty (PCT) is an international treaty that provides a unified
procedure for filing patent applications to protect inventions in multiple countries.
Established in 1970 and administered by the World Intellectual Property Organization
(WIPO), the PCT simplifies the process of seeking patent protection in multiple jurisdictions
by allowing applicants to file a single international application instead of filing separate
applications in each country.

The PCT does not itself grant patents but facilitates the process of obtaining patents in
designated member states. Once an application is filed under the PCT, the applicant gains
access to an international phase, during which the application is examined centrally,
followed by a national phase in individual countries where the applicant seeks protection.

The PCT currently has 157 contracting states, making it one of the most widely used
mechanisms for seeking international patent protection. It has become an essential tool for
innovators, businesses, and researchers aiming to protect their inventions globally, reducing
the complexities, costs, and time associated with filing patent applications in multiple
countries.

I. Objectives of the PCT

The PCT was designed with the following key objectives:

1. To simplify and harmonize the process of filing patent applications internationally.

2. To provide applicants with a cost-effective and time-efficient mechanism for securing

patent protection in multiple jurisdictions.

3. To assist patent offices in member states by providing high-quality search and

examination reports during the international phase.

4. To give applicants more time to decide on pursuing protection in specific countries.

By achieving these objectives, the PCT encourages innovation, facilitates international trade,
and ensures that inventors can effectively protect their rights globally.
II. How the PCT Works

The PCT operates in two main phases: the international phase and the national phase.
These phases streamline the process of filing, examining, and pursuing patent applications.

1. International Phase

The international phase begins with the filing of an international application under the PCT.
This phase includes the following steps:

a. Filing an International Application:

An applicant can file a PCT application in their national or regional patent office, which acts
as a Receiving Office (RO). The application must meet the formal requirements specified
under the PCT and can be filed in one of the accepted languages (e.g., English, French).

b. International Search:
Once the application is filed, an International Searching Authority (ISA) conducts a search
to identify prior art (existing technologies or disclosures) that may affect the patentability of
the invention. The ISA prepares an International Search Report (ISR) and a Written
Opinion on the invention’s patentability.

The ISR helps the applicant understand the novelty, inventive step, and industrial
applicability of their invention.

c. International Publication:
After 18 months from the filing date (or the priority date), the international application is
published by WIPO in the PatentScope database. This publication includes the ISR and
provides public access to the details of the invention.

d. International Preliminary Examination (Optional):

Applicants have the option to request an International Preliminary Examination (IPE) by
filing a Demand. This process is conducted by an International Preliminary Examining
Authority (IPEA) and provides a more detailed assessment of the patentability of the
invention.

The international phase provides applicants with critical information about the patentability
of their invention before entering the national phase.

2. National Phase

The national phase begins after the international phase is complete. During this phase, the
applicant must file the application in each designated country where patent protection is
sought.

a. Entry into the National Phase:

To enter the national phase, the applicant must submit translations (if required) and pay
national fees to the patent offices of the designated countries. The deadlines for national
phase entry are:

• 30 months from the filing date or priority date in most countries.

• 31 months in some jurisdictions.

b. Examination by National Patent Offices:
Each designated country’s patent office examines the application under its national laws to
determine whether a patent should be granted. The national phase examination takes into
account the ISR and, if applicable, the IPE report.

c. Grant of Patents:
Patents are granted independently by each country where the application was filed. The
scope, validity, and enforceability of the patent depend on the laws of the respective country.

III. Advantages of the Patent Cooperation Treaty (PCT)

The PCT system offers several key advantages for inventors, businesses, and legal
practitioners seeking to protect inventions in multiple countries. These benefits are not
limited to procedural convenience but also extend to cost savings, strategic decision-making,
and improved patent quality.

1. Unified Filing System for Global Protection

One of the most significant advantages of the PCT is its unified filing system. Instead of
filing individual patent applications in multiple countries, an applicant can file a single
international application under the PCT. This eliminates the need to navigate the procedural
requirements of each country separately, saving time and effort for the applicant.

For example, an inventor seeking patent protection in 20 countries can file one international
application through the PCT, which is then recognized in all designated member states. This
consolidated approach reduces the complexities involved in managing multiple applications.

2. Cost-Effectiveness

The PCT significantly reduces the initial costs of seeking patent protection internationally.
Filing a single international application is far more economical than filing separate national
applications in multiple jurisdictions at the outset. Applicants can defer major expenses, such
as translation costs, local attorney fees, and national filing fees, until the national phase,
which occurs later in the process.

This cost-effectiveness is particularly beneficial for small businesses, startups, and individual
inventors, who may not have the financial resources to file separate patent applications in
several countries simultaneously.

3. Extended Time for Decision-Making

The PCT provides applicants with up to 30 or 31 months (depending on the country) from
the filing date or priority date to enter the national phase in the designated countries. This
extended time period allows applicants to evaluate the commercial viability of their
invention, assess market conditions, and determine which countries are strategically
important for patent protection.

For example, an applicant may initially designate 15 countries in their PCT application but
later decide to pursue protection in only five key markets based on market research and
financial considerations. This flexibility is a critical advantage of the PCT.

4. High-Quality Search and Examination

Under the PCT, the International Searching Authority (ISA) conducts an International
Search Report (ISR), which identifies prior art related to the invention. The ISA also
provides a Written Opinion on the invention’s patentability, including its novelty, inventive
step, and industrial applicability.

Applicants may also request an International Preliminary Examination to receive a more

detailed evaluation of the invention's patentability. These reports provide valuable insights
into the strengths and weaknesses of the application, allowing applicants to refine their claims
before entering the national phase. This improves the chances of securing patent protection in
individual countries.

5. Centralized Management and Procedural Simplicity

The PCT simplifies the process of managing patent applications across multiple jurisdictions.
Changes to the application, such as amendments, withdrawals, or corrections, can be made
centrally through WIPO, rather than dealing with each national patent office individually.
This centralized management reduces administrative burdens and minimizes the risk of
procedural errors.

For example, if an applicant wishes to amend their claims after receiving the International
Search Report, they can do so centrally during the international phase rather than filing
separate amendments in each country.

6. Global Reach

The PCT provides access to patent protection in 157 member countries, which cover almost
all major global markets. This extensive geographical coverage ensures that inventors and
businesses can protect their inventions in key jurisdictions worldwide without filing separate
applications in each country.

For instance, an applicant filing a PCT application can simultaneously seek protection in
countries like the United States, the European Union, Japan, China, and India, among others.
This global reach makes the PCT an ideal system for multinational corporations and
businesses operating in multiple markets.

7. Early Publication and Public Disclosure

The PCT mandates the international publication of applications after 18 months from the
filing date or priority date. This publication provides public notice of the invention, creating a
legal presumption of priority. Early publication also allows businesses and competitors to
identify potentially conflicting applications and adapt their strategies accordingly.

For the applicant, publication enhances transparency and demonstrates that the invention is in
the process of securing patent protection, which can be advantageous when seeking investors
or business partners.

8. Enhanced Patent Quality

The PCT process contributes to improved patent quality through the search and examination
reports generated during the international phase. These reports help applicants identify prior
art and refine their claims before entering the national phase. This reduces the likelihood of
objections or rejections during national phase examinations, leading to stronger, more
enforceable patents.

For example, an applicant who identifies conflicting prior art during the international phase
can modify their claims to emphasize the unique aspects of their invention, increasing the
chances of securing patent protection in individual countries.

9. Support for National Patent Offices

The PCT benefits national patent offices by providing high-quality search and examination
reports that can assist in the examination process. National patent offices can use these
reports as a basis for their evaluations, reducing duplication of effort and speeding up the
grant process.

This is particularly advantageous for patent offices in developing countries, which may lack
the resources or expertise to conduct comprehensive prior art searches independently.

10. Strategic Benefits for Businesses

The PCT offers significant strategic advantages for businesses. By providing a centralized
and streamlined mechanism for filing and managing patent applications, the PCT enables
businesses to:

• Protect their inventions in key markets.

• Delay costs while evaluating commercial opportunities.

• Strengthen their intellectual property portfolios with high-quality patents.

These benefits are particularly valuable for technology companies, startups, and industries
with a global reach, such as pharmaceuticals, biotechnology, and information technology.

IV. Limitations of the PCT

While the PCT offers significant advantages, it also has certain limitations:

• No Grant of Patents:
The PCT does not grant patents; it only facilitates the process of obtaining patents in
member countries. The final decision lies with the national patent offices.

• High National Phase Costs:

Although the PCT reduces initial filing costs, the national phase can be expensive due to
translation fees, national fees, and local agent costs.

• Dependence on National Laws:

The PCT does not harmonize the substantive examination process, and each national
office examines the application based on its own laws.

• No Guarantee of Patentability:
A favorable ISR or IPE report does not guarantee that a patent will be granted in the
national phase.
V. Provisions of the PCT

The PCT includes several important provisions that govern its operation:

• Article 3: Defines the requirements for filing an international application, including the
need to designate contracting states where protection is sought.

• Article 11: Specifies the conditions for the international application to be accorded an
international filing date.

• Article 16: Identifies the role of International Searching Authorities in conducting prior
art searches.

• Article 19: Allows applicants to amend their claims after receiving the ISR.

• Article 21: Provides for the international publication of applications by WIPO.

• Article 31: Allows for an optional International Preliminary Examination to assess the
patentability of the invention.

VI. India and the PCT

India became a member of the PCT in 1998, and the Indian Patent Office acts as a
Receiving Office, an ISA, and an IPEA under the PCT. Indian inventors and businesses
frequently use the PCT to seek patent protection in global markets, particularly in industries
such as pharmaceuticals, biotechnology, and information technology.

The PCT has proven to be a valuable tool for Indian applicants seeking to expand their global
footprint by providing an efficient and cost-effective mechanism for protecting their
inventions abroad.

Conclusion

The Patent Cooperation Treaty (PCT) is a cornerstone of the international intellectual

property system, offering a streamlined and efficient mechanism for filing patent applications
across multiple jurisdictions. By providing a centralized international phase and enabling
access to national patent offices, the PCT reduces administrative burdens, delays costs, and
enhances the quality of patent applications.

Despite its limitations, the PCT plays a vital role in promoting innovation, facilitating
international trade, and ensuring that inventors and businesses can effectively protect their
inventions on a global scale. As the global economy becomes increasingly interconnected, the
PCT will continue to be a critical tool for fostering creativity, economic growth, and
technological progress.

9. Explain the salient features of patent cooperation treaty. 10

Ans) The Patent Cooperation Treaty (PCT), established in 1970 and administered by
the World Intellectual Property Organization (WIPO), is a landmark international treaty
designed to simplify and streamline the process of seeking patent protection across multiple
jurisdictions. The PCT provides a unified system for filing patent applications, enabling
inventors and businesses to protect their inventions in multiple member countries through a
single international application. As of today, the PCT has 157 contracting states, covering
nearly all major jurisdictions worldwide.

The PCT is not a mechanism for granting patents itself but facilitates the patent application
process across its member states. By creating a centralized system for filing, searching, and
examining patent applications, the PCT eliminates the need to file separate national or
regional applications in each country. This significantly reduces the administrative and
financial burdens on applicants, making it an essential tool for innovators and businesses in a
globalized economy.

The salient features of the PCT lie in its procedural simplicity, cost-effectiveness, and
ability to provide applicants with valuable insights into the patentability of their inventions
before they decide to pursue protection in specific countries.

I. Salient Features of the Patent Cooperation Treaty (PCT)

The PCT has several unique and transformative features that distinguish it from other
international patent systems. These features streamline the patent filing process, provide
applicants with critical information about their inventions, and ensure a more harmonized
approach to international patent protection.

1. Unified International Application

One of the most significant features of the PCT is its ability to allow applicants to file
a single international applicationthat is valid across all member countries. This eliminates
the need for filing separate patent applications in each country where protection is sought.

For example, an inventor in India seeking patent protection in the United States, Germany,
Japan, and China can file one international application under the PCT, instead of four
separate national applications. This simplifies the process, reduces duplication of effort, and
provides a common framework for filing patent applications globally.

The international application is filed with a Receiving Office (RO), which could be the
national patent office of the applicant's country (e.g., the Indian Patent Office) or a regional
patent office.

2. International Filing Date

A PCT application is accorded an international filing date that is recognized by all

designated member countries. This filing date is critical for determining the priority of the
invention, as it establishes the applicant's claim to the invention's novelty and inventive step
over prior art.

For example, if an inventor files a PCT application on January 1, 2024, the filing date will be
recognized in all designated member countries, even if the national phase is entered at a later
stage.

3. Right of Priority

The PCT incorporates the right of priority, which is derived from the Paris Convention for
the Protection of Industrial Property (1883). This provision allows an applicant to claim
the filing date of an earlier national or regional patent application as the priority date for the
PCT application. The priority period is 12 months from the filing date of the initial
application.

For instance, if an inventor files a patent application in India on January 1, 2024, and
subsequently files a PCT application on December 31, 2024, they can claim January 1, 2024,
as the priority date for their international application.

4. International Search Report (ISR)

After filing a PCT application, an International Searching Authority (ISA) conducts a

search to identify prior art that may affect the patentability of the invention. The ISA prepares
an International Search Report (ISR), which lists relevant prior art documents, along with
a Written Opinion on the invention's novelty, inventive step, and industrial applicability.

The ISR and Written Opinion provide applicants with valuable insights into the strengths and
weaknesses of their invention. This allows applicants to make informed decisions about
whether to pursue patent protection in specific countries during the national phase.

For example, if the ISR reveals that the invention lacks novelty due to prior art, the applicant
can modify their claims or decide not to proceed with the application, saving time and
resources.

5. International Preliminary Examination (Optional)

Applicants have the option to request an International Preliminary Examination by filing

a Demand. This process is conducted by an International Preliminary Examining
Authority (IPEA) and provides a more detailed assessment of the invention's patentability.
The IPEA issues an International Preliminary Examination Report (IPER), which further
evaluates the invention's compliance with patentability criteria.

The International Preliminary Examination is particularly useful for applicants seeking to

refine their claims and strengthen their application before entering the national phase.

6. Delayed Entry into the National Phase

One of the most practical features of the PCT is the extended time it provides applicants
before they must enter the national phase in individual countries. The national phase is the
stage where the application is examined under the laws of the designated countries, and
patent protection is sought.

Under the PCT, applicants have up to 30 months (or in some cases, 31 months) from the
filing date or priority date to enter the national phase. This extended time period allows
applicants to:

1. Evaluate the commercial viability of their invention.

2. Conduct market research to determine where patent protection is most valuable.

3. Secure funding or partnerships to cover the costs of national phase entry.

For example, an applicant who files a PCT application in 2024 has until 2026 to decide in
which countries they wish to pursue patent protection.
7. Centralized Management

The PCT provides a centralized mechanism for managing international patent applications.
Applicants can file amendments, corrections, or withdrawals centrally through WIPO during
the international phase, rather than dealing with each national patent office individually.

For example, if an applicant wishes to amend their claims based on the ISR, they can do so
during the international phase, ensuring consistency across all designated countries.

8. International Publication

After 18 months from the priority date, the PCT application is published by WIPO in
the PatentScope database. This international publication provides public notice of the
invention and establishes a presumption of priority over later-filed applications.

The publication includes the application, the ISR, and other relevant documents, making it
accessible to patent offices, businesses, and the public. This transparency fosters innovation
and helps competitors avoid infringing on the applicant’s invention.

9. Independence of National Phase

While the PCT facilitates the filing and examination process during the international phase,
the decision to grant a patent lies with the national or regional patent offices during the
national phase. Each country examines the application according to its own patent laws and
regulations.

For example, a PCT application may result in a granted patent in the United States but be
rejected in Japan based on differences in patentability standards. This independence ensures
that national patent offices retain control over the grant process.

10. Flexibility for Applicants

The PCT is designed to be flexible and accommodate the needs of applicants from diverse
backgrounds, including individual inventors, startups, and multinational corporations. By
providing a simplified and cost-effective mechanism for filing patent applications, the PCT
enables applicants to protect their inventions in a wide range of jurisdictions.

Conclusion

The Patent Cooperation Treaty (PCT) is a groundbreaking system that has transformed the
process of obtaining international patent protection. Its salient features, such as the unified
filing system, international search and examination, and extended time for national phase
entry, provide unparalleled advantages to inventors and businesses seeking to protect their
inventions globally.

10. Note on principle of national treatment. 6

Ans) a The principle of na)onal treatment is a cornerstone of interna.onal intellectual

property law, ensuring that foreign na.onals are granted the same legal protec.on and
rights for their intellectual property (IP) in a host country as the na.onals of that country.
This principle aims to eliminate discrimina.on based on na.onality and create a level playing
field for inventors, creators, and businesses opera.ng across borders. It ensures fairness in
the treatment of foreign IP holders, fostering global coopera.on and trust in the IP system.

National treatment is enshrined in major international treaties, including the Paris

Convention for the Protection of Industrial Property (1883), the Berne Convention for
the Protection of Literary and Artistic Works (1886), and the Trade-Related Aspects of
Intellectual Property Rights (TRIPS) Agreement (1994). Each of these instruments
mandates member states to accord the same protection and enforcement mechanisms to
foreign IP holders as they do to their own citizens.

I. Meaning and Scope of National Treatment

The principle of national treatment requires that a country provide foreign IP holders the
same level of protection, rights, and remedies that it provides to its own nationals under its
domestic IP laws. For example:

1. A French inventor filing for a patent in India is entitled to the same rights, procedures,
and protections under Indian patent law as an Indian inventor.

2. Similarly, a U.S. author whose literary work is used in Germany must be accorded the
same copyright protections that German authors enjoy.

National treatment applies across all stages of IP protection, including the filing, registration,
enforcement, and remedy phases. This principle does not require harmonization of
substantive IP laws between countries; instead, it ensures non-discriminatory treatment for
foreign and domestic IP holders under the laws of the country where protection is sought.

II. Application Under Key Treaties

1. Paris Convention (1883):

The principle of national treatment is explicitly stated in Article 2 of the Paris Convention. It
requires member states to accord the same protection to nationals of other member states as
they do to their own citizens concerning patents, trademarks, industrial designs, and other
forms of industrial property.

For instance, a trademark holder from Japan filing in the U.S. under the Paris Convention
must receive the same protection and access to remedies as a U.S. trademark holder.

2. Berne Convention (1886):

Under Article 5(1) of the Berne Convention, the principle of national treatment guarantees
that foreign authors receive the same copyright protection for their literary and artistic works
in member states as domestic authors. The principle applies without requiring formalities like
registration.

3. TRIPS Agreement (1994):

The TRIPS Agreement extends the principle of national treatment to all forms of IP covered
under the agreement, including patents, copyrights, trademarks, and geographical
indications. Article 3 mandates member states of the World Trade Organization (WTO) to
adhere to this principle. However, TRIPS allows certain exceptions, such as in the case of
judicial and administrative procedures.

III. Limitations and Exceptions

While the principle of national treatment is fundamental, there are certain exceptions:

1. Public Policy Exceptions: Countries may impose limitations on foreign IP holders to

address national security, public health, or cultural concerns.

2. Reciprocity Agreements: In some cases, additional benefits may be granted to

foreign nationals based on bilateral or multilateral agreements.

3. Sui Generis Protections: Certain categories of IP, such as geographical indications,

may have specific exceptions under national treatment principles.

IV. Importance of National Treatment

The principle of national treatment is vital for fostering trust and cooperation in the global IP
system. It:

• Ensures non-discrimination, promoting equality in access to IP protection.

• Encourages international trade and investment by protecting foreign businesses and

innovators.

• Aligns with broader international legal principles that emphasize fairness and equality
under the law.

Conclusion

The principle of national treatment is a fundamental pillar of international intellectual

property law, ensuring fairness, non-discrimination, and equal treatment for foreign and
domestic IP holders. Enshrined in treaties like the Paris Convention, Berne Convention, and
TRIPS Agreement, it plays a crucial role in fostering global innovation, trade, and
cooperation. While certain exceptions exist, its widespread adoption by countries underscores
its importance in creating a harmonized and equitable global IP framework

11. Discuss the features of Madrid convention for the international registration of
marks. 10 or Note on International registration of Mark. 6 And Discuss the salient
features of Madrid convention. 10 (2) And Note on Madrid convention. 6 (2)

Ans) The Madrid System for the International Registration of Marks, governed by
the Madrid Agreement (1891) and the Madrid Protocol (1989), is an international treaty
system designed to simplify the process of registering trademarks across multiple
jurisdictions. It is administered by the World Intellectual Property Organization
(WIPO) and provides a unified procedure for trademark owners to seek protection in
multiple member countries through a single application. This system eliminates the need to
file separate trademark applications in each individual country, thereby reducing the
administrative burden and costs associated with global trademark registration.
The Madrid System, as it exists today, is primarily governed by the Madrid Protocol, which
modernized and enhanced the provisions of the original Madrid Agreement. The Protocol
introduced greater flexibility and accessibility, enabling more countries to participate in the
system. As of now, the Madrid System has 114 members, covering more than 130 countries,
including major jurisdictions such as the United States, the European Union, China, and
India.

The Madrid System is a critical tool for businesses and individuals seeking to expand their
brands internationally, ensuring cost-effective and simplified trademark protection across
multiple markets. The salient features of the Madrid Convention revolve around procedural
efficiency, cost-effectiveness, and a centralized system for managing trademarks globally.

I. Features of the Madrid Convention for the International Registration of Marks

The Madrid Convention and Protocol introduced a comprehensive framework to facilitate the
registration and management of trademarks internationally. Its features reflect its purpose of
harmonizing trademark registration procedures and providing greater convenience to
trademark owners.

1. Single International Application

One of the most significant features of the Madrid System is the ability to file a single
international trademark application through the applicant’s home trademark office,
referred to as the Office of Origin. This single application can be used to seek trademark
protection in all designated member countries.

For example, a trademark owner in India wishing to register their mark in the United States,
Japan, and the European Union can file one international application with the Indian
Trademark Office under the Madrid Protocol. This eliminates the need to file separate
applications in each country, streamlining the process.

2. Designation of Member Countries

The Madrid System allows applicants to designate one or more member countries where
trademark protection is sought. These designated countries are notified of the application by
WIPO, and their respective trademark offices review the application according to their
national laws. This flexibility ensures that trademark owners can target specific markets
without incurring unnecessary costs.

For instance, a U.S. company may designate Canada, China, and India in its Madrid
application if these are the primary markets where it seeks protection.

3. Centralized Management of Trademarks

The Madrid System offers a centralized mechanism for managing international trademarks.
Changes to the international trademark, such as renewals, changes in ownership, or
amendments, can be made through WIPO rather than dealing with individual trademark
offices in each country. This centralized approach simplifies the administrative burden on
trademark owners and ensures consistency across jurisdictions.

4. International Filing Date

The Madrid System provides for an international filing date that is recognized in all
designated member countries. The international filing date is either the date of filing the
international application with the Office of Origin or, if the application is based on a prior
national application, the priority date of that earlier application.

This ensures that trademark owners have a uniform filing date across all designated countries,
which is critical for determining priority rights.

5. Dependence on Basic Application or Registration

Under the Madrid Protocol, an international trademark application must be based on a basic
application or registrationin the applicant’s home country. For the first five years, the
international registration is dependent on the validity of the basic application or registration.
If the basic application or registration is canceled or refused during this period, the
international registration will also be canceled.

However, in such cases, the applicant has the right to "transform" the international
registration into national applications in the designated countries within three months of
cancellation. This transformation retains the original filing date, ensuring that the applicant’s
priority rights are preserved.

6. Examination by Designated Countries

After filing an international application, the trademark offices of the designated countries
conduct an independent examination of the application according to their national laws. Each
designated country has the right to grant or refuse protection for the trademark within a
prescribed time frame, typically 12 to 18 months under the Madrid Protocol.

If a designated country refuses protection, the refusal is communicated to the applicant

through WIPO, and the applicant has the opportunity to respond directly to the national
trademark office to address the objections.

7. International Publication

Once an international application is filed and verified by WIPO, it is published in the WIPO
Gazette of International Marks. This publication provides public notice of the application
and the designated countries. It ensures transparency and allows third parties to monitor the
progress of trademark registrations.

8. Duration and Renewal of International Registration

An international trademark registration under the Madrid System is valid for 10 years from
the date of registration. It can be renewed indefinitely for successive 10-year periods. The
renewal process is centralized and managed through WIPO, eliminating the need for separate
renewals in each designated country.

For example, a trademark owner seeking to renew their international registration covering 10
countries needs to file one renewal application with WIPO rather than 10 separate
applications.

9. Cost-Effectiveness
The Madrid System significantly reduces the cost of obtaining and maintaining trademark
protection in multiple jurisdictions. By filing a single international application, applicants
avoid the expenses associated with filing individual applications in each country, such as
translation fees, local attorney fees, and multiple filing fees. The centralized management of
trademarks also reduces the administrative burden and costs of managing global trademark
portfolios.

10. WIPO’s Role in Administration

The Madrid System is administered by WIPO, which acts as the central authority for
processing international applications, maintaining the International Register, and coordinating
with member states. WIPO ensures that the application meets the formal requirements,
handles international publications, and communicates with designated national offices on
behalf of the applicant.

11. Global Reach

The Madrid System currently covers 114 members, representing more than 130 countries,
including major global markets such as the United States, China, the European Union, and
Japan. This extensive coverage ensures that trademark owners can protect their brands in key
jurisdictions worldwide through a single system.

II. Advantages of the Madrid System

The features of the Madrid Convention offer significant advantages for businesses,
particularly those operating internationally. These include:

• Simplification: A single international application reduces procedural complexities and

eliminates the need for filing separate applications in each country.

• Cost Savings: Filing and managing trademarks under the Madrid System is far more
economical than handling separate national applications.

• Time Efficiency: The centralized filing process allows applicants to secure trademark
protection more quickly in multiple jurisdictions.

• Strategic Flexibility: Trademark owners can designate specific countries based on

market priorities and expand protection to additional countries later.

• Centralized Management: Changes to the trademark, such as renewals or ownership

transfers, can be managed through WIPO.

III. Challenges and Limitations

Despite its advantages, the Madrid System has certain limitations:

• Dependency on Basic Application: The international registration is vulnerable to

cancellation if the basic application or registration is canceled within five years.

• Substantive Examination by National Offices: Each designated country examines the

application independently, and refusals may lead to additional legal and procedural
complexities.
• Not Universally Applicable: The Madrid System does not cover all countries, so
separate national filings may still be required in non-member countries.

Conclusion

The Madrid Convention for the International Registration of Marks is a transformative

system that simplifies and harmonizes the process of registering trademarks across multiple
jurisdictions. Its features, such as a single international application, centralized management,
and cost-effectiveness, make it an invaluable tool for businesses seeking to protect their
brands globally. Administered by WIPO, the Madrid System ensures that trademark owners
can navigate the complexities of international registration with greater ease and efficiency.

12. Note on international bureau of WIPO. 6

Ans) The International Bureau of the World Intellectual Property Organization (WIPO)
is the secretariat of WIPO, which is a specialized agency of the United Nations responsible
for promoting the protection of intellectual property (IP) rights worldwide. Established by the
WIPO Convention of 1967, the International Bureau serves as the administrative and
operational arm of WIPO, facilitating cooperation among member states and implementing
IP-related treaties. Its headquarters is located in Geneva, Switzerland.

The International Bureau plays a central role in managing WIPO’s activities, from treaty
administration to capacity-building initiatives, ensuring the harmonization and development
of IP laws and practices globally.

I. Functions of the International Bureau of WIPO

The International Bureau performs several critical functions that align with WIPO’s
objectives of promoting innovation, creativity, and the effective protection of intellectual
property rights. Key functions include:

1. Administrative Support to Member States

The International Bureau acts as the secretariat for WIPO’s governing bodies, such as the
General Assembly, Conference, and the Coordination Committee. It organizes meetings,
prepares agendas, drafts reports, and implements decisions taken by member states.

2. Administration of International Treaties

The International Bureau manages global IP systems established under WIPO-administered

treaties. These include:

• Patent Cooperation Treaty (PCT): Facilitates international patent applications by

acting as the receiving, processing, and transmitting office.

• Madrid System: Administers international trademark registrations.

• Hague System: Manages international design registrations.

• Lisbon System: Administers the protection of geographical indications and

appellations of origin.
3. Promotion and Development of IP Laws

The International Bureau promotes the development of international IP norms and standards
by facilitating negotiations and drafting new treaties or amendments to existing ones. It also
provides technical assistance to member states to harmonize their IP laws with international
standards.

4. IP Dispute Resolution

Through the WIPO Arbitration and Mediation Center, the International Bureau provides
alternative dispute resolution mechanisms, such as arbitration, mediation, and expert
determination, for resolving IP disputes.

5. Capacity-Building and Technical Assistance

The International Bureau conducts capacity-building programs to help developing and least-
developed countries (LDCs) strengthen their IP infrastructure. These programs include
training workshops, policy advice, and support for establishing IP offices.

6. Publication and Dissemination of Information

The International Bureau maintains and publishes key IP databases, such as:

• WIPO IP Portal: A centralized platform for accessing global IP services.

• WIPO Lex: A database of national and international IP laws and treaties. It also
issues reports, studies, and statistics to provide insights into global IP trends.

7. Global Public Awareness

The Bureau works to raise awareness about the importance of intellectual property for
economic growth and cultural development. It organizes events such as World Intellectual
Property Day and runs campaigns to educate the public on IP rights.

8. Support for Digital Transformation

The International Bureau spearheads initiatives to digitize IP services globally, such as the
WIPO Digital Access Service (DAS) and WIPO PROOF, which provide secure digital
solutions for managing IP documentation.

II. Structure and Governance

The International Bureau is headed by the Director-General of WIPO, who is elected by the
WIPO General Assembly. The Director-General oversees the Bureau’s activities and
represents WIPO in international forums. Supporting the Director-General are deputy
directors-general and assistant directors-general, each responsible for specific areas of
WIPO’s mandate.

III. Key Achievements of the International Bureau

• Global IP Systems: Efficient management of the PCT, Madrid, and Hague systems,
facilitating cost-effective and streamlined IP protection worldwide.
• Harmonization of IP Laws: Success in bringing countries together to adopt key treaties,
such as the Beijing Treaty on Audiovisual Performances (2012) and the Marrakesh
Treaty (2013).

• Digital Transformation: Development of tools like WIPO CASE (Centralized Access to

Search and Examination) to improve IP office collaboration.

13. Note on WIPO conference. 6

Ans) The WIPO Conference is one of the key governing bodies of the World Intellectual
Property Organization (WIPO), established under the WIPO Convention of 1967. It
serves as a platform for member states to deliberate on critical issues relating to intellectual
property (IP) and to guide the development and implementation of WIPO’s policies. The
Conference provides an inclusive forum where all WIPO member states, regardless of their
size or economic status, have equal participation in shaping the global intellectual property
framework.

The WIPO Conference is distinct from WIPO’s General Assembly and Coordination
Committee, although all three play complementary roles in overseeing WIPO’s operations
and fulfilling its objectives.

I. Composition of the WIPO Conference

The WIPO Conference comprises all 193 member states of WIPO. Each member state is
represented by one delegate, who may be accompanied by alternates, advisors, and experts.
Observers from intergovernmental organizations (IGOs), non-governmental organizations
(NGOs), and other entities may also attend, though they do not have voting rights.

The democratic composition of the Conference ensures that all member states, regardless of
their economic or political influence, can contribute to the discussion and development of
WIPO’s initiatives.

II. Functions and Responsibilities of the WIPO Conference

The WIPO Conference plays a pivotal role in steering the organization’s overall strategy and
ensuring its alignment with international intellectual property objectives. Its primary
responsibilities include:

• Adopting Treaties and Agreements:

One of the key functions of the WIPO Conference is to adopt new treaties or amendments
to existing ones. For instance, significant treaties like the Marrakesh Treaty (2013) and
the Beijing Treaty on Audiovisual Performances (2012) were adopted through
deliberations involving the Conference.

• Discussing Policy Matters:

The Conference provides a forum for member states to debate global trends and
challenges in intellectual property, such as the implications of emerging technologies,
enforcement issues, and IP rights in the digital era.

• Reviewing WIPO’s Activities and Reports:

The Conference reviews reports on WIPO’s activities and provides feedback to ensure the
 organization’s operations align with the objectives of its member states. This includes
assessing the implementation of WIPO-administered treaties and initiatives.

• Approving WIPO’s Budgetary Provisions (in conjunction with the General

Assembly):
While the General Assembly holds the primary responsibility for approving WIPO’s
budget, the Conference plays a supplementary role by discussing and reviewing financial
allocations to ensure transparency and efficiency.

• Promoting International Cooperation:

The WIPO Conference encourages member states to collaborate on initiatives that
enhance the global IP system. It fosters cooperation in areas such as capacity-building,
technical assistance, and dispute resolution.

• Facilitating Capacity-Building in Developing Countries:

Recognizing the challenges faced by developing and least-developed countries, the
Conference prioritizes discussions on initiatives aimed at strengthening their IP
infrastructure and promoting innovation.

Significance of the WIPO Conference

The WIPO Conference holds immense significance in the governance of global intellectual
property rights. It serves as a unifying platform that balances the interests of developed,
developing, and least-developed nations, ensuring that WIPO’s activities benefit all
stakeholders. Some of its key contributions include:

• Harmonization of IP Laws: Through its deliberations, the Conference plays a crucial

role in fostering the global harmonization of IP laws, ensuring consistency and
predictability in their enforcement.

• Encouraging Innovation and Creativity: By shaping policies that reward creators and
innovators, the Conference supports economic growth and cultural development.

• Addressing Emerging Challenges: The Conference provides a platform to discuss

challenges posed by new technologies, such as artificial intelligence, big data, and digital
piracy, and to propose regulatory solutions.

14. Note on Co-ordination committee of WIPO. 6

Ans) The Coordina)on Commi@ee of the World Intellectual Property Organiza)on (WIPO)
is one of its principal governing bodies, established under the WIPO Conven)on of 1967. It
serves as an advisory and supervisory body, coordina.ng ac.vi.es between WIPO’s various
organs and member states. The Coordina.on CommiGee plays a crucial role in ensuring the
effec.ve func.oning of WIPO by advising on administra.ve and financial maGers,
nomina.ng key officials, and facilita.ng collabora.on among member states.

Comprised of representatives from WIPO’s General Assembly, Conference, and Executive

Committees, the Coordination Committee provides a platform for inclusive governance
while addressing the operational challenges of the organization.

I. Composition of the Coordination Committee

The Coordination Committee consists of:

• Members of the Executive Committees of the Paris and Berne Unions: These
represent the member states of the Paris Convention for the Protection of
Industrial Property and the Berne Convention for the Protection of Literary and
Artistic Works.

• Other Elected Member States: The WIPO General Assembly elects additional
members to ensure balanced representation.

The committee’s composition ensures that all major stakeholders are represented, fostering
collaboration among states with varying economic and developmental priorities.

II. Functions of the Coordination Committee

The Coordination Committee is tasked with important advisory, administrative, and

supervisory functions to streamline WIPO’s activities and governance:

• Advisory Role in Governance:

The committee provides advice to the WIPO General Assembly and Conference on
matters related to the organization’s administration, budget, and program activities. This
ensures coherence between the strategic objectives and operational activities of WIPO.
• Nominating Key Officials:
One of the key responsibilities of the Coordination Committee is nominating candidates
for the post of Director-General of WIPO, who serves as the chief executive officer of
the organization. The nomination is subsequently approved by the General Assembly.
• Supervision of Financial Matters:
The committee reviews WIPO’s budgetary allocations and financial expenditures to
ensure transparency and efficiency. It provides recommendations to improve resource
utilization and alignment with WIPO’s goals.
• Coordination Among WIPO Organs:
By facilitating communication and collaboration among WIPO’s governing bodies, the
committee ensures that decisions and activities are harmonized. This function is critical
for maintaining organizational coherence.
• Monitoring Implementation of Programs:
The committee oversees the implementation of WIPO’s programs and activities,
particularly those aimed at capacity-building, technical assistance, and harmonization of
intellectual property laws.
III. Significance of the Coordination Committee

The Coordination Committee holds significant importance in WIPO’s governance framework

for the following reasons:

• Ensuring Accountability: By supervising administrative and financial matters, the

committee enhances transparency and accountability within WIPO.
• Balancing Diverse Interests: The representation of various member states allows the
committee to address the differing priorities of developed, developing, and least-
developed countries.
• Facilitating Strategic Decision-Making: Through its advisory role, the committee helps
shape WIPO’s policies and programs to align with global intellectual property trends.