Intellectual property rights

Meaning of Intellectual property

• Intellectual property (IP) refers to the creations of the human mind like inventions, literary
and artistic works, and symbols, names, images and designs used in commerce. Intellectual
property is divided into two categories: Industrial property, which includes inventions
(patents), trademarks, industrial designs, and geographic indications of source; and
Copyright, which includes literary and artistic works such as novels, poems and plays, films,
musical works, artistic works such as drawings, paintings, photographs and sculptures, and
architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of broadcasters in
their radio and television programs. Intellectual property rights protect the interests of
creators by giving them property rights over their creations.
• In India Patent Act was introduced in the year 1856 which remained in force
for over 50 years, which was subsequently modified and amended and was
called "The Indian Patents and Designs Act, 1911". After Independence a
comprehensive bill on patent rights was enacted In the year 1970 and was
called "The Patents Act, 1970".
• Specific statutes protected only certain type of Intellectual output; till
recently only four forms were protected. The protection was in the form of
grant of copyrights, patents, designs and trademarks. In India, copyrights
were regulated under the Copyright Act, 1957; patents under Patents Act,
1970; trade marks under Trade and Merchandise Marks Act 1958; and
designs under Designs Act, 1911.
• With the establishment of WTO and India being signatory to the Agreement
on Trade-Related Aspects of Intellectual Property Rights (TRIPS), several
new legislations were passed for the protection of intellectual property
rights to meet the international obligations.
• New legislations on geographical indications and plant varieties were also
enacted. These are called Geographical Indications of Goods (Registration
and Protection) Act, 1999, and Protection of Plant Varieties and Farmers’
Rights Act, 2001 respectively.
 Importance of IPR in business

• IPRs are important for free flow for energy for enhancing invention and research. IPRs provide
incentive to the individuals for new creations. IPRs provide due recognition to the creators and
inventors. These laws provide them both the means and incentive to create newer works, products
and services Intellectual Property Rights enhance innovation and creativity by protecting the
rights of inventors and artists. Since the filing of patents requires the disclosure of information that
would enable others to replicate the inventor’s discovery, others can use and build upon this
shared knowledge to create newer and/or better products. IPRs ensure material reward for
intellectual property. IPRs ensure the availability of the genuine and original products. Intellectual
Property rights, such as Patent and copyrights, are an important means used by firms to help
protect their investments in innovation.
• IPRs may be helpful in the solution to global challenges like in the field of
alternate sources of energy, new products to the farmers and development of
low cost drugs for poor people. IPRs are necessary to stimulate economic
growth. Protection of intellectual property rights is essential in maintaining
economic growth. They encourage fair trading which would contribute to
economic and social development. Effective enforcement of intellectual
property rights is critical to sustaining economic growth across all industries
and globally.
 TYPES of IPR

• Copyright
• Copyright as the name suggests arose as an exclusive right of the author to copy the literature
produced by him and stop others from doing so. There are well-known instances of legal
intervention to punish a person for copying literary or aesthetic out put of another even before the
concept of copyright took shape. The concept of idea was originally concerned with the field of
literature and arts. In view of technological advancements in recent times, copyright protection
has been expanded considerably. Today, copyright law has extended protection not only to
literary, dramatic, musical and artistic works but also sound recordings, films, broadcasts, cable
programmes and typographical arrangements of publications. Computer programs have also been
brought within the purview of copyright law.
• Section 14 of the Act defines the term Copyright as to mean the exclusive right to do or
authorise the doing of the following acts in respect of a work or any substantial part thereof,
namely In the case of literary, dramatic or musical work (except computer programme):
• (i) reproducing the work in any material form which includes storing of it in any medium by
electronic means;
• (ii) issuing copies of the work to the public which are not already in circulation; (iii)
performing the work in public or communicating it to the public;
• (iv) making any cinematograph film or sound recording in respect of the work; making any
translation or adaptation of the work. Further any of the above mentioned acts in relation to
work can be done in the case of translation or adaptation of the work.
• In the case of a computer programme:
• (i) to do any of the acts specified in respect of a literary, dramatic or musical work; and
• (ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of
the computer programme. However, such commercial rental does not apply in respect of
computer programmes where the programme itself is not the essential object of the rental..
• In the case of an artistic work:
• (i) reproducing the work in any material form including depiction in three dimensions
of a two dimensional work or in two dimensions of a three dimensional work;
• (ii) communicating the work to the public;
• (iii) issuing copies of work to the public which are not already in existence; (iv)
including work in any cinematograph film; making adaptation of the work, and to do
any of the above acts in relation to an adaptation of the work.
• In the case of cinematograph film and sound recording:
• (i) making a copy of the film including a photograph of any image or making any other
sound recording embodying it;
• (ii) selling or giving on hire or offer for sale or hire any copy of the film/sound recording
even if such copy has been sold or given on hire on earlier occasions; and (iii)
communicating the film/sound recording to the public.
• In the case of a sound recording: • To make any other sound recording
embodying it • To sell or give on hire, or offer for sale or hire, any copy of the
sound recording • To communicate the sound recording to the public.
• The main objective of the Act is to give protection to the owner of the copyright
from the dishonest manufacturers, who try to confuse public and make them
believe that the infringed products are the products of the owner. Further, it
wants to discourage the dishonest manufacturers from enchasing the goodwill
of the owner of the copyright, who has established itself in the market with its
own efforts.
 Who can apply for a copyright

•The following people are entitled to submit an application to get a copyright:

•The author
•The author of the work is:
1.
Either the person who actually created the work, or
2.
If made during the scope of employment, then the employer. This is considered as ‘work made for hire’.
3.
Such an author is legally allowed to get a copyright for his/her work.
•The owner of exclusive rights
•The copyright law can grant a person exclusive rights to control and use and distribution of an original
work. These rights include the right to reproduce or make copies of the original work, the right to distribute
copies of the work, the right to publicly display the work, the right to perform the work and the right to
alter the work and make derivatives of the original work. The owner of such exclusive rights is permitted to
apply for registering his or her claim in the work. 
The copyright claimant
•This is either:
1.
The author, or
2.
A person or an organization that has obtained ownership rights from the author through a written contract, will etc.
•The authorized agent
•This refers to any person authorized to act on behalf of either:
1.
The author, or
2.
The copyright claimant, or
3.
The owner of an exclusive right.
•It must also be mentioned here that there is no age bar for getting a copyright and a minor is also entitled to register a
copyright. This is because copyright law recognised creativity and understands that age cannot be a restriction on
creativity. Also, in case the work is created by two or more people then the creators of the work are co-owners unless they
have agreed otherwise.
 Essential documents required for copyright
registration

• 3 copies of the work if the work is published;

• If the work is not published, then 2 copies of manuscripts;
• If the application is being filed by an attorney, then special power of attorney or vakalatnama signed by the attorney and the
party;
• Authorization in respect of work, if the work is not the work of the applicant;
• Information regarding the title and language of the work;
• Information regarding the name, address and nationality of the applicant;
• Applicant must also provide his mobile number and email address;
• If the applicant is not the author, a document containing the name, address and nationality of the author, and if the author is
deceased, the date of his death;
• If the work is to be used on a product, then a no-objection certificate from the trademark office is required;
• If the applicant is other than the author, a no-objection certificate from the author is required. In this case, an authorization
of the author may also be required;
• If a person’s photo is appearing in the work, then a no-objection
certificate from such person is required;
• In case the publisher is not the applicant, a no-objection
certificate from the publisher is required;
• If the work is published, the year and address of first publication
is also required;
• Information regarding the year and country of subsequent
publications;
• In case of copyright is for software, then source code and object
code are also required.
 Procedure for registering a copyright

• Step 1: File an Application

• The author of the work, copyright claimant, owner of an exclusive right for the work or an authorized agent
file an application either physically in the copyrights office or through speed/registered post or through e-filing
facility available on the official website (copyright.gov.in).
• For registration of each work, a separate application must be filed with the registrar along with the particulars
of the work. Along with this, the requisite fee must also be given, Different types of work have different fees. 
• or example, getting the copyright for an artistic work registered, the application fees is INR 500, while for
getting the copyright for a cinematograph film registered is INR 5000. The application fees range from INR.
5000 to INR. 40000. It can be paid through a demand draft (DD) or Indian postal order (IPO) addressed to
the Registrar of Copyright Payable at New Delhi or through e-payment facility. This application must be filed
with all the essential documents. 
• At the end of this step, the registrar will issue a dairy number to the applicant.
• Step 2: Examination
• In the next step, the examination of the copyright application takes place.
• Once the dairy number is issued, there is a minimum 30 days waiting period. In this time
period, the copyright examiner reviews the application. This waiting period exists so that
objections can arise and be reviewed. Here the process gets divided into two segments:
• In case no objections are raised, the examiner goes ahead to review and scrutinize the
application to find any discrepancy.

• If there is no fault and all the essential documents and information is provided along with the application, it is a
case of zero discrepancies. In this case, the applicant is allowed to go forward with the next step.
• In case some discrepancies are found, a letter of discrepancy is sent to the applicant. Based upon his reply, a
hearing is conducted by the registrar. Once the discrepancy is resolved, the applicant is allowed to move
forward to the next step.

• In case objections are raised by someone against the applicant, letters are sent out to both
parties and they are called to be heard by the registrar.
• Upon hearing if the objection is rejected, the application goes ahead for scrutiny and the above-mentioned
discrepancy procedure is followed. 
• In case the objection is not clarified or discrepancy is not resolved, the application is rejected and a rejection
letter is sent to the applicant. For such applicant, the copyright registration procedure ends here.
• Step 3: Registration
• The final step in this process can be termed as registration. In this
step, the registrar might ask for more documents. Once completely
satisfied with the copyright claim made by the applicant, the
Registrar of Copyrights would enter the details of the copyright into
the register of copyrights and issue a certificate of registration. 
• The process registration of copyright completes when the applicant
is issued the Extracts of the Register of Copyrights (ROC).
 Term of Copyright

• The term copyright protection varies on different parameters and is not the same for all
classes or types of the trademark which is based on the publication of the original work.
1.Published Work of Literature (Literary Work) or music work or artistic work other than photographs are
protected for a term of copyright the lifetime of the author of the original work and 60 years after that. In
other words, the copyright subsists for a period of up to 60 years from the death of the author of the work.
2.Work of Literature (Literary Work) or music work or artistic work other than photographs
which have not been published, performed or offered for sale or for broadcast during the
lifetime of the author, shall have a validity of the copyright on the original work for a period of
60 years after of the death of the author from the end of the year in which the work was first
published or performed or offered for sale.
3.Cinematograph Film, Photographs, and computer programs have the protection of
copyright for a period of 60 Years beginning the end of the year in which the work is
published or made available to the public with the specific consent of the author or
creator of the work.
4.However in the case of unpublished Cinematograph films, Photographs, and
computer programs the copyright in the original work subsites up to 60 Years from
the year in which the original work was for the first time created.
5.The sound recordings have the validity of its copyright for 60 years from the end
of the year in which such a sound recording is published for the first time.
 Remedies for Copyright Infringement
• Remedies for Copyright Infringement
• Civil remedy– A copyright owner can take legal action against any person
who infringes the copyright in the work. The copyright owner is entitled to
remedies by way of injunctions, damages and accounts against the Infringer.
• Criminal Remedy– Copyright infringement is a criminal offence under Section
63 of the Copyright Act  which envisages that any person who knowingly
infringes or abets the infringement of the copyright in a work shall be
punishable with imprisonment for a term which shall not be less than six
months but which may extended to three years and with fine which shall not
be less than fifty thousand rupees but which may extend to two lakh rupees.
 Case laws
• An important case in this regard is that of RG Anand v. Deluxe Films. The plaintiff was the
author of a play called Hum Hindustani. In 1954, the defendant Mohan Sehgal sent a letter
to the plaintiff expressing his desire to make a movie based on the play. The plaintiff and
the defendant met and discussed the entire play. The defendant did not commit anything,
but the plaintiff later came to know that the defendant released a movie titled New Delhi.
After watching the movie, the plaintiff was of the opinion that it is based on the story of
his play. So he filed a suit against the defendant for permanent injunction and damages.
Both the District Court and the High Court ruled against the plaintiff on a finding of the
facts. The case finally reached the Supreme Court of India.
• The Supreme Court held that the movie cannot be considered to be an infringement of
the script of the play. The reason it gave was that though the idea behind both the stories
was the same, the manner in which both had been expressed were vastly different from
each other. Therefore it cannot be held to be copyright infringement.
 Patent
A patent is an exclusive right granted by the Government to
the inventor to exclude others to use, make and sell an
invention is a specific period of time. A patent is also available
for improvement in their previous invention. The main motto to
enact patent law is to encourage inventors to contribute more
in their field by awarding them exclusive rights for their
inventions. In modern terms, the patent is usually referred to
as the right granted to an inventor for his Invention of any
new, useful, non-obvious process, machine, article of
manufacture, or composition of matter. The word “patent” is
referred from a Latin term “patere” which means “to lay open,”
i.e. to make available for public inspection.
 Three basic tests for any invention to
be patentable
• Firstly,the invention must be novel, meaning thereby that the
Invention must not be in existence. 
• Secondly, the Invention must be non-obvious, i.e. the Invention
must be a significant improvement to the previous one; mere change
in technology will not give the right of the patent to the inventor. 
• Thirdly, the invention must be useful in a bonafide manner, meaning
thereby that the Invention must not be solely used in any illegal work
and is useful to the world in a bonafide manner.
• An invention considered as new if, on the date of filing the
application, any such invention is not known to the public in
any form, i.e. oral, writing, or any other form. Anything shall
not be termed as inventive if such a thing is already known to
the public domain. The patent has a limited term of 20 years,
which is counted from the date of filing of the patent
application. A patent is a territorial right. Thus it can only be
applied in the country where it has been granted. A patent is
a territorial right. Thus it can only be applied in the country
where it has been granted. Therefore, any legal action
against infringement or infringement of patent rights can only
be taken in that country.
To obtain patent protection in different countries, each country must
apply for a patent. The Patent Cooperation Treaty (PCT) provides a
way to file an international patent application in which a patent can be
filed through a single patent application in a large number of
countries. However, the PCT of a patent remains discretionary of the
individual patent office only after the application is filed.
Under the Indian patent law, a patent can be obtained only for an
invention which is new and useful. The invention must relate to the
machine, article or substance produced by a manufacturer, or the
process of manufacture of an article. A patent may also be obtained
for innovation of an article or of a process of manufacture. In respect
to medicine or drug and certain classes of chemicals, no patent is
granted for the substance itself even if it is new, but the process of
manufacturing and substance is patentable. The application for a
patent must be true and the first inventor or the person who has
derived title from him, the right to apply for a patent being assignable.
• Some inventions cannot be patented. In the European Patent
Convention (EPC) law there is the list of non-patentable
subject-matter which includes methods of medical treatment
or diagnosis, and new plant or animal varieties. Further
information on such fields can be obtained from a patent
attorney. Nor many patents be granted for inventions whose
exploitation would be contrary to public order or morality
(obvious examples being land-mines or letter-bombs).The
following are not regarded as inventions, discoveries,
innovations, scientific theories and mathematical methods,
aesthetic creations, such as art or literature works or art of
writing, schemes, rules and methods for performing mental
acts, playing games or doing business, presentations of
information, computer software. 
 Application for Patent

• Section 6 of the Act provides that an application for a patent for an invention may be
made by any of the following persons either alone or jointly with another:
• (a) by any person claiming to be the true and first inventor of the invention;
• (b) by any person being the assignee of the person claiming to be the true and first
inventor in respect of the right to make such an application;
• (c) by the legal representative of any deceased person who immediately before his
death was entitled to make such an application.
• As
 Procedure of Patent 
• Step 1: Write about inventions (idea or concept) with each and every detail.
• Collect all information about your Invention such as:
1.Field of Invention
2.What does the Invention describe
3.How does it work
4.Benefits of Invention
• If you worked on the Invention and during the research and development phase, you
should have some call lab records which are duly signed with the date by you and the
concerned authority.
• Step 2: It must involve a diagram, drawing and sketch explains the Invention
• Drawings and drawings should be designed so that the visual work can be better
explained with the invention work. They play an important role in patent applications.
• Step 3: To check whether the Invention is patentable subject
or not.
• Not all inventions can be patentable, as per the Indian Patent
Act there are some inventions which have not been declared
patentable (inventions are not patentable).
• Step 4: Patent Discovery
• The next step will be to find out if your Invention meets all
patent criteria as per the Indian Patent Act-
1.The invention must be novel.
2.The Invention must be non- obvious.
3.The Invention must have industrial applications.
Step 5: File Patent Application
• If you are at a very early stage in research and development for your Invention,
then you can go for a provisional application. It offers the following benefits:
1.Filing date.
2.12 months time for filing full specification.
3.Lesser cost.
• After filing a provisional application, you secure the filing date, which is very
important in the patent world. You get 12 months to come up with the complete
specification; your patent application will be removed at the end of 12 months.
• When you have completed the required documents and your research work is at
a level where you can have prototypes and experimental results to prove your
inventive move; you can file the complete specification with the patent
application.
• Filing the provisional specification is an optional step if you are in the stage
where you have complete knowledge about your Invention you can go straight
to the full specification.
•Step 6: Publication of the application
•Upon filing the complete specification along with the application for the patent, the
application is published 18 months after the first filing.
•If you do not wish to wait until the expiration of 18 months from the filing date to publish
your patent application, an initial publication request may be made with the prescribed
fee. The patent application is usually published early as a one-month form request.
•Step 7: Request for Examination
•The patent application is scrutinized only after receiving a request for an RFE examination.
After receiving this request, the Controller gives your patent application to a patent
examiner who examines the patent application such as the various patent eligibility
criteria:
1.
Patent subject
2.
Newness
3.
Lack of clarity
4.
Inventory steps
5.
Industrial application
6.
By enabling
• The examiner makes the first examination report of the patent application upon a
review for the above conditions. This is called patent prosecution. Everything that
happens for a patent application before the grant of a patent is usually called patent
prosecution.
• The first examination report submitted to the Controller by the examiner usually
includes prior art (existing documents prior to the filing date) that are similar to the
claimed invention and is also reported to the patent applicant.

• Step 8: Answer the objections

• Most patent applicants will receive some type of objections based on the examination
report. The best thing is to analyze the examination report with the patent
professional (patent agent) and react to the objections in the examination report.
• This is an opportunity for an investor to communicate his novelty over the prior art in
examination reports. Inventors and patent agents create and send a test response
that tries to prove that their Invention is indeed patentable and meets all patent
criteria.
Step 9: clearance of objections
• The Controller and the patent applicant is connected for ensuring that
all objections raised regarding the invention or application is resolved
and the inventor has a fair chance to prove his point and establish
novelty and inventive steps on other existing arts.
• Upon receiving a patent application in order for grant, it is the first
grant for a patent applicant.
Step 10: 
• Once all patent requirements are met, the application will be placed for
the grant. The grant of a patent is notified in the Patent Journal, which
is published periodically.
 Grounds for opposition 
• An application for a patent may be opposed by either a prior grant or a subsequent grant
by any person on the grounds specified in s 25 (1) and 25 (2) of the former Act. No other
grounds stated in the Act can be taken to oppose the patent. Some major opposition
grounds, common to both pre-grant and post-grant opposition, are mentioned below:
1.The Invention was published previously in India or elsewhere or was claimed previously in
India.
2.The Invention is the formation ofa part of the prior public knowledge or prior public use
or traditional knowledge of any community.
3.The Invention is obvious and lacks an inventive step.
4.The Invention does not constitute an invention within the meaning of the Act, or the
Invention is not patentable under the Act.
5.Failureto disclose information or furnishing false information relating to foreign by the
applicant.
 Patent Infringement
• Patent infringement is a violation which involves the unauthorized use,
production, sale, or offer of sale of the subject matter or Invention of
another’s patent. There are many different types of patents, such as
utility patents, design patents, and plant patents. The basic idea behind
patent infringement is that unauthorized parties are not allowed to use
patents without the owner’s permission.
• When there is infringement of patent, the court generally compares the
subject matter covered under the patent with the used subject matter
by the “infringer”, infringement occurs when the infringer uses patent
material from in the exact form. Patent infringement is an act of any
unauthorized manufacture, sale, or use of a patented invention. Patent
infringement occurs directly or indirectly.
• Direct patent infringement: The most common form of infringement is direct
infringement, where the Invention that infringes patent claims is actually
described, or the Invention performs substantially the same function.
• Indirect patent infringement: Another form of patent infringement is indirect
infringement, which is divided into two types:
• Infringement by inducement is any activity by any third party that causes
another person to infringe the patent directly. This may include selling parts that
can only be used realistically for a patented invention, selling an invention with
instructions to use in a certain method that infringes on a method patent or
licenses an invention that is covered by the patent of another. The inducer must
assist intentional infringement, but does not require intent to infringe on the
patent.
• Contributory infringement is the sale of components of material that are made
for use in a patented invention and have no other commercial use. There is a
significant overlap with indications, but contributor violations require a high level
of delay. Violations of the seller must have direct infringement intent. To be an
obligation for indirect violations, a direct violation must also be an indirect act.
 Remedies for Patent Infringement

• Patent infringement lawsuits can result in significantly higher losses than

other types of lawsuits. Some laws, such as the Patent Act, allow plaintiffs
to recover damages. Patent infringement is the illegal manufacture or
usage of an invention or improvement of someone else’s invention or
subject matter who owns a patent issued by the Government, without
taking the owner’s consent either by consent, license or waiver. Several
remedies are available to patent owners in the event of an infringement.
Measures available in patent infringement litigation may include monetary
relief, equal relief and costs, and attorneys’ fees.
• Monetary Relief: Monetary relief in the form of compensatory damages is available to
prevent patent infringement:
1.Indemnity compensation – A patent owner may have lost profits for infringement
when they established the value of the patent.
2.Increased damage – Up to three times, compensation charges can be charged in
cases of will or violation of will.
3.The time period for damages – The right to damages can be claimed only after the
date when the patent was issued and only 6 years before the infringement claim is
filed.
• Equitable relief: Orders are issued by the court to prevent a person from doing
anything or Act. Injections are available in two forms:
1.Preliminary injunction – Orders made in the initial stage of lawsuits or lawsuits that
prevent parties from doing an act that is in dispute (such as making a patent product)
2.Permanent injunction – A final order of a court which permanently ceases certain
activities or takes various other actions.
 Trade Mark
• A trade mark (popularly known as brand name in layman’s language) is a visual
symbol which may be a word to indicate the source of the goods, a signature,
name, device, label, numerals, or combination of colours used, or services, or
other articles of commerce to distinguish it from other similar goods or
services originating from another. It is a distinctive sign which identifies certain
goods or services as those produced or provided by a specific person or
enterprise. Its origin dates back to ancient times, when craftsmen reproduced
their signatures, or "marks" on their artistic or utilitarian products. Over the
years these marks evolved into today's system of trade mark registration and
protection. The system helps consumers identify and purchase a product or
service because its nature and quality, indicated by its unique trade mark,
meets their needs.
• A trade mark provides protection to the owner of the mark by ensuring the
exclusive right to use it or to authorize another to use the same in return for
payment. The period of protection varies, but a trade mark can be renewed
indefinitely beyond the time limit on payment of additional fees. Trade mark
protection is enforced by the courts, which in most systems have the authority to
block trade mark infringement.
• In a larger sense, trade marks promote initiative and enterprise worldwide by
rewarding the owners of trade marks with recognition and financial profit. Trade
mark protection also hinders the efforts of unfair competitors, to use similar
distinctive signs to market inferior or different products or services. The system
enables people with skill and enterprise to produce and market goods and
services in the fairest possible conditions, thereby facilitating international trade.
• The new definition of 'service' has been included for the benefit of service-
oriented establishments such as banking, communication, education,
finance, insurance, chit funds, real estates, transport, storage, material
treatment, processing, supply of electrical or other energy, boarding,
lodging, entertainment, amusement, construction, repair, conveying of
news or information and advertising .
• A service mark is the same as a trade mark except that it identifies and
distinguishes the source of a service rather than a product. Normally, a mark
for goods appears on the product or on its packaging, while a service mark
appears in advertising for the services.
 A trademark may be divided into the following categories:

• Product Mark:
• A product mark is similar to a trademark. The only difference is, it refers to trademarks
related to products or goods and not services. It is used to identify the source of a product
and to distinguish a manufacturer’s products from others. On the whole, a trademark is an
important means to protect the goodwill and reputation of a Business.
• The application for the trademark can be filed within few days and “TM” symbol can be
used. The time required for trademark registry, to complete formalities is generally around
18 to 24 months. The ® (Registered symbol) can be used next to the trademark once the
trademark is registered and registration certificate is issued. Once registered, a
trademark will be valid for 10 years from the date of filing, which can be renewed time to
time.
• So product marks are those that are attached to distinguish the goods or services of one
manufacturer from that of another.
•Service Mark:
•A service mark is the same as a trademark, but instead of a particular product, it identifies and
differentiates the source of a service. For example, a company such as Yahoo may brand certain
products with a trademark, but use a service mark on the internet searching service that it provides.
It is denoted by ‘SM’.
•A service mark is nothing but a mark that distinguishes the services of one proprietor/owner from
that of another. Service marks do not represent goods, but the services offered by the company.
They are used in a service business where actual goods under the mark are not traded. Companies
providing services like computer hardware and software assembly, restaurant and hotel services,
courier and transport, beauty and health care, advertising, publishing, etc. are now in a position to
protect their names and marks from being misused by others. The rules governing for the service
marks are fundamentally the same as any other trademarks.
• Collective Mark:
• These are the trademarks used by a group of companies and can be protected
by the group collectively. Collective marks are used to inform the public
about a particular characteristic of the product for which the collective mark
is used. The owner of such marks may be an association or public institution
or it may be cooperative. Collective marks are also used to promote particular
products which have certain characteristics specific to the producer in a given
field. Thus, a collective trademark can be used by a more than one trader,
provided that the trader belongs to the association.
The trader associated with a particular collective mark is responsible for
ensuring the compliance with certain standards which are fixed in the
regulations concerning the use of the collective mark, by its members. Thus, the
purpose of the collective mark is to inform the public about certain features of
the product for which the collective mark is used. One example of the collective
mark is the mark “CPA”, which is used to indicate members of the Society
of Certified Public Accountants.
• Certification Mark:
• It is a sign indicating that the goods/services are certified by the owner of the
sign in terms of origin, material, quality, accuracy or other characteristics. This
differs from a standard trademark whose function is to distinguish the
goods/services that originate from a single company.
• In short, certification marks are used to define the standard. They guarantee the
consumers that the product meets certain prescribed standards. The occurrence of
a certification mark on a product indicates that the product has gone through the
standard tests specified. They guarantee the consumers that the manufacturers
have gone through an audit process to ensure the desired quality of the
product/service. For example, Food products, Toys, Cosmetics, Electrical goods,
etc. have such marking that specifies the safety and the quality of the product.
• Shape marks:
• According to the Indian Trademarks Act, 1999, a trademark may also include the
shape of goods, their packaging, so long as it is possible to graphically represent the
shape clearly. This helps in distinguishing the goods sold under such trademark
from those of another manufacturer. The new Trade Marks Ordinance (Cap. 559)
continues to allow registration of such marks.
• When the shape of goods, packaging have some distinctive feature it can be
registered. For example, Ornamental Lamps. In certain cases, the (three-
dimensional) shape of a product or packaging can be a trademark (for example a
specially designed bottle of perfume).
• In a nutshell, Shape Mark has facilitated promotion of products and emerged into
the trademark type after the technological advancement of graphics. Any graphical
representation which is able to make a difference amongst the products can be
shape marked.
• Pattern Mark:
• These are the marks consisting of a pattern which is capable of identifying the
goods or services as originating from a particular undertaking and thus
distinguishing it from those of other undertakings. Such goods/services are
registrable as Pattern Marks.
• The procedure of evaluating uniqueness of pattern marks is same as that of other
types of marks. Pattern marks that are descriptive or indistinctive are objectionable
because they fail to serve as an identifier of trade source. Such goods/services
would not be accepted for registration without evidence of uniqueness. In cases
where the pattern mark has become identified in the minds of the public with a
particular undertaking’s goods or services, it receives acquired distinctiveness and
can register for Pattern Mark.
• Thus, Pattern Trademark is a trademark wherein the pattern is able to distinguish
the product from other brands.
•  Sound Mark:
• Sometimes, the sound that plays in the advertisement becomes so well known that
when people hear it they immediately know what product/service it refers to. In
such cases, the sound may be regarded as a trademark and is eligible for
registration.
• A sound mark is a trademark where a particular sound does the function of
uniquely identifying the origin of a product or a service. In the case of sound
marks, a certain sound is associated with a company or its product or services —
for example, the MGM’s roar of a lion.
• The sound logo, technically referred to as audio mnemonic, is one of the tools of
sound branding, along with the brand music. A sound logo is a short distinctive
melody mostly positioned at the beginning or ending of a commercial. It can be
seen as the acoustic equivalent of a visual logo. Often a combination of both types
of logo is used to enforce the recognition of a brand
 Who can apply for a trademark

• As per Section 18 of the Trade Marks Act, 1999 any person “claiming to be
the proprietor” of the trade mark ‘used’ or ‘proposed to be used’ by him may
make an application in the prescribed manner for registration of his trade
mark.
• “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.
 Procedure/Steps for Trademark Registration

• 1. Filing of an application for registration by a person claiming to be the proprietor of a trademark, in

the office of the Trade mark Registry, within the territorial limits of the place of business in India.
• 2. Examination of the application by the Registrar to ascertain whether it is distinctive and does not
conflict with existing registered or pending trademarks and examination report is issued.
• 3. Publication of the application after or before acceptance of the application in the Trademark Journal.
• 4. After publication if any person gives notice of his opposition to the registration within three months
which may be extended to the maximum of one month.
• 5. If the opposition has been decided in favour of the applicant of the registration of trademark, the
Registrar shall register the Trademark.
• 6. On the registration of the Trademark the Registrar shall issue to the applicant a Trademark
Registration
• 7. Today, as per the Trademark Rules, 2002, the application fees (similar to a tax) are Rs. 3500 per
trademark
 Term/Duration of a Trademark in India

• The term of registration of trademark is 10 (Ten) years, but may be renewed

subject to the payment of the prescribed fee, in accordance with the
provisions of the Trademarks Act, 1999. An application for renewal of a
trademark can be filed within six months from Constantia (Body) the expiry
of the last registration of trademark.
 Trademark infringement
• Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999. Simply put, when an
unauthorized person uses a trademark that is 'identical' or 'deceptively similar' to a registered trademark, it is
known as infringement.
• Now, let us take a look at the constituent elements of Infringement of trademark:
• 1. Unauthorized person – this means a person who is not the owner or the licensee of the registered trademark.
• 2. 'Identical' or 'Deceptively similar '– the test for determining whether marks are identical or not is by
determining whether there is a chance for a likelihood of confusion among the public. If the consumers are
likely to get confused between the two marks then there is an infringement.
• 3. Registered Trademark – You can only infringe a registered trademark. For an unregistered Trademark, the
common law concept of passing off will apply.
• 4. Goods/ Services – In order to establish infringement even the goods/ services of the infringer must be identical
with or similar to the goods that the registered Trademark represents.
• Any unauthorized use of the exclusive statutory rights of a registered trademark constitutes infringement.
• The infringement explained above is direct infringement. There is another aspect to trademark infringement in
India, i.e. indirect infringement.
• Indirect infringement is a common law principle that holds accountable
not only the direct infringers but also the people who induce the direct
infringers to commit the infringement. Indirect infringement is also known
as secondary liability has two categories: contributory infringement and
vicarious liability.
• A person will be liable for contributory infringement in two circumstances:
• 1. When a person knows of the infringement
• 2. When a person materially contributes or induces the direct infringer to
commit the infringement.
• A person will be vicariously liable under the following circumstances:
• 1.When the person has the ability to control the actions of the direct
infringer.
• 2.When a person derives a financial benefit from the infringement.
• 3.When a person has knowledge of the infringement and contributes to it.
 Passing off

Law of Passing off in India is a tort actionable under common law and mainly used to
protect the goodwill attached with the unregistered trademarks. It is founded on the
basic tenet of law that one should not benefit from the labour of another.
• Passing off is not defined in the act. It is defined in section 27 (2), 134 (1) (c) and Section 135
of Trademarks Act. Section 134 (1) (c) refers to jurisdiction/power of District courts to try the
suit and even issue injunction in matter pertaining to Passing off suits. The plaintiff is supposed
to establish its case and satisfy the court concerned the irreparable loss/injury caused to them.
• Why Passing Off Necessary
The trademark provides protection to registered trademark, in case of any infringement
occurring to said trade mark. While law of Passing Off is a remedy available to unregistered
trademark. The said remedies are governed by common law and court may pass a judgement in
favour of prior user granting permanent injunction against the subsequent user of the
trademarkon being satisfied based on facts and circumstances of a particular matter.
• So, the law of passing off comes into application when the
following elements are present:
1.Goodwill need to be established by the person seeking benefit for passing off
action
2.There must be deceptive similarity in the products in question.
3.The party asking for remedies for passing off might incur losses/ damages
due to such action of passing off by other party