Module - 4

Copyrights and
Related
Rights
Copyrights and Related Rights
Copyrights‘ refer to the legal rights provided
by law to the original creator of the work in
the fields of literature and computer
software. The Related Rights‘ encompass the
author‘s work in the fields of dramatics,
sound recording, film/video recordings,
paintings, architecture, etc. Copyrights and
Related Rights are one of the categories of IP
and governed by the Copyright Act, 1957 of
India. This Act provides rights of
reproduction, communication to the masses,
adaptation and translation of the work.
Copyrights and Related Rights
The words author‘ and work‘ need to be
understood from the perspective of
Copyrights. The term ‘author’ refers to an
individual who develops the content (of
work). The author can be a writer (literary
work), computer programmer (software),
composer (musical work), producer (cinema
films, sound recording), photographer
(photos). The term ‘work’ is a task
undertaken in the fields of literature,
dramas, music, artistic, cinematograph film
and sound recording.
 Classes of Copyrights
 Literature: Books, Essays, Research articles, Oral speeches,
Lectures, Compilations, Computer programme, Software,
Databases.
• Dramatics: Screenplays, Dramas.
 Sound Recordings: Recording of sounds regardless of the
medium on which such recording is made e.g. a Phonogram
and a CD-ROM.
 Artistic: Drawing, Painting, Logo, Map, Chart, Photographs,
Work of Architecture, Engravings, and Craftsmanship.
 Musical: Musical notations, excluding any words or any action
intended to be sung, spoken or performed with the music. A
musical work need not be written down to enjoy Copyright
protection.
 Cinematograph Films: Cinematograph Film‘ is a visual
recording performed by any medium, formed through a
process and includes a sound recording. For example, Motion
Pictures,
 TV Programmes, Visual Recording, Sound Recording, etc.
 Criteria for Copyright
To qualify for Copyright protection, a work must exist in some physical
(or tangible) form. The duration of the existence of the physical
form may vary from a very short period to many years. Virtually any
form of expression which can be viewed or listened to is eligible to
qualify as Copyright. Even hurriedly scribbled notes for an impromptu
speech are considered copyrightable material. The Copyright work has
to be expressed by the creator in his frame of thought. In other words,
the work has to be original i.e. the author created it from independent
thinking void of duplication. This type of work is termed as an Original
Work of Authorship (OWA). It may appear similar to already existing
works but should not be the same. The original work may lack quality
or quantity or aesthetic merit or all these parameters; still, it will pass
the test of copyrightable work. In addition to originality for the work,
Copyright protection also requires at least some creative effort on the
part of the author.
 Ownership of Copyright
The Copyright laws clearly state the ownership of
Copyright.
 The person who created the work is considered as
the first (original) holder (owner) of the Copyright.
 In case the author is an employee and has been
contracted to do the work by a proprietor (of the
company/firm/society /organization, etc.), the
owner of the Copyright shall be the proprietor.
 The government will be the primary owner of the
government work in the absence of any kind of
arrangement.
 The person delivering a speech is the first owner of
the Copyright.
 Ownership of Copyright
To obtain permission to use copyrighted material, a
request for the same should be made to the legal owner
(of the copyrighted material), which could be the
original author, the legal heir (in case of the death of
the author), publisher, etc. The request must mention
the following:
 Title, author and/or editor, and edition.
 Precise material to be used.
 The number of copies.
 The purpose of the material e.g. educational, research,
etc.
 Form of distribution e.g. hard copy to classroom,
posted on the internet.
 Whether the material is to be sold e.g. as part of a
course pack.
 Copyrights of the Author
The Copyrights of the creator/author are
legally protected under Section 14 of the
Copyright Act, 1957. The content (i.e. work)
created by the author cannot be used or
published by anyone without the author‘s
consent. Copyrights provide exclusive rights
to the author in the areas of publication,
distribution, and usage. A Copyright owner
enjoys two types of rights i.e. Economic
Rights (or Proprietary Rights) and Moral
Rights (or Personal Rights).
 Economic Rights
Economic Rights are associated with financial
benefits accruing from the sale of copyrights. As
per the Act, Copyright owners can authorize or
prohibit:
 Reproduction of the work in any form, including
printed publications or sound recordings.
 Distribution of copies of the work.
 Public performance of the work.
 Broadcasting/communicating the work to the
public.
 Translating the work into other languages.
 Adaptation of the work, such as converting a novel
into a screenplay.
Moral Rights
Moral rights include Right of Paternity‘ and Right of
Integrity‘.
The Right of Paternity‘ even if the Copyright has been
licensed to another party, the original author of the work
retains the right to claim authorship i.e. the name of the
author/s will remain even though Copyrights have been
transferred to another party e.g. a book publisher. The
Right of Integrity‘ the original author has the right to
prevent misuse of the work e.g. alterations/additions/
deletions in work resulting in misrepresentation of the said
work or harming the honor and reputation of the author.
It is pertinent to mention that for a work, there can be more
than one rights holders, for instance, a musical sound
recording has many rights holders, such as the lyricist,
music composer, singer, musicians and sound recorders.
 Copyright Infringements
As per the Copyrights Acts, 1957, the following acts are
regarded as an infringement of Copyrights:
 Making copies for sale or hire or selling or letting them
for hire without permission.
 Permitting any place for the performance of owned work
(in public) where such performance constitutes an
infringement of Copyright.
 Distributing infringing copies for trade or to such an
extent to affect the interest of the owner of the
Copyright prejudicially.
 Public exhibition of infringing copies for trade purposes.
 Importation of infringing copies.
 Translating a work without the permission of the owner.
 Liability of Owner of an
Auditorium/Hall
The owner of an auditorium/hall is liable for
punishment if he knowingly allows his premises
to be used for communication of illegal copyright
material (songs, music, dramas, etc.) to the
public. If a person permits for profit any place to
be used for communicating the work to the
public, where such communication establishes an
infringement of the Copyright unless he was not
aware of and had no reasonable ground for
believing that such communication to the public
would be an infringement of copyright, he will be
deemed to have committed an offence under the
copyright Act.
Copyright Infringement is a Criminal
Offence.
According to Section 63 of the Copyright Act, 1957,
if any person knowingly infringes the Copyright, he
qualifies for the criminal offence. The punishment
awarded for the infringement (of Copyright) is
imprisonment for six months with the minimum
fine of ₹ 50,000/-. In case of a second and
subsequent conviction, the minimum punishment
is imprisonment for one year and a fine of ₹
1,00,000. There is a dedicated IP division to deal
with Copyright cases. Also, there is a Copyright
Board constituted by the Central Government in
1958 to adjudicate certain claims about Copyright.
 Copyright
Infringement is a Cognizable Offence.
A police officer (rank of a sub-
inspector or higher) can
confiscate the infringed
copyright material without
issuing a warrant and produce
the same in the court of law.
 Fair Use Doctrine
Any person not possessing a valid license from the owner of the
Copyright is not entitled to exploit the said work. However, Section
52 of the Copyright Act, 1957, provides for certain exceptions to the
infringement of Copyright. As per the rule of law, Copyrighted
materials cannot be used by anybody without the proper consent of
the legal owners (of the Copyright).
However, limited use of Copyrighted materials for teaching and
research purposes is legally permitted, under the Fair Use Doctrine‘,
which comprises of the four-part test:
 The character of the use - use of the work is purely educational,
non-profit and personal.
 Nature of the work - The use of work is factual in nature and not
imaginative.
Amount of the portion to be used - permission is not needed if only a
small portion of Copyright protected material is to be used.
However, this parameter is debatable now.
 Impact of use on the value of the Copyrighted material - If a small
portion of the work is copied and is not affecting the author‘s
economic and moral rights, it will be excused from the infringement.
 Fair Use Doctrine
Detailed information on the examples of the Fair Use Doctrine can
be accessed from the official website (http://copyright.gov.in/
exceptions.aspx). A few examples are listed below:
 If the Copyrighted work is used for personal use i.e. studies or
research.
 Quotation mentioned in the Copyrighted work.
 Reporting of current events in the media, such as newspapers,
magazines or radios/television.
 Reproduction of the work by teachers or scientific researchers.
 Performance is free of charge by government officials in the
performance of their duties e.g. reproduction of any work for a
judicial proceeding or a report of a judicial proceeding.
 Use of any work prepared by the Secretariat of a Legislature.
 Use of the work in a certified copy made or supplied in
accordance with any law for the time being in force.
 Making three or less than three copies of a book (including a
pamphlet, sheet of music, map, chart or plan).
 Bonafide religious ceremony, including a marriage function.
 Copyrights and Internet
The twenty-first century is an era of digitization. The Copyrighted data is
quickly transmitted via the internet. This method of data transmission has
brought amendments to the existing Copyright laws. One should be careful
of Copyright/fair use principles when downloading material from the
internet. There is growing concern about the ability to pull Copyrighted
material from the internet without permission. Note that material may have
been placed on the internet without the author‘s permission. In general,
posting material on the internet by the Copyright owner gives an internet
user the right to use that material for his personal use, but he cannot use
the work for commercial purposes.
Electronic distribution of a Copyrighted work should mention the statement
that ―This work is protected by Copyright laws and is provided for
educational instruction only. Any infringing use may be subject to
disciplinary action and/or civil or criminal liability as provided by law”.
As per Section 2(o) of the Copyright Act, 1957, ‗Literary Work‘ includes
computer programmes, tables and compilations, including computer
databases. It is mandatory to supply ‗Source Code‘ and ‗Object Code‘
along with the application for registration of Copyright.
 Non-Copyright Work
The works not under the jurisdiction of Copyrights are as follows:
 The ideas, concepts, and principles themselves cannot be protected
under Copyright, only the form in which they are expressed can be
copyrighted.
 Facts, such as scientific or historical discoveries, are not copyright
protected.
 Copyright does not protect titles, names, slogans, short phrases,
short word combinations, methods, or factual information.
 Certificates are not considered as Copyrightable subject matter as
there is not much scope for creativity.
 Digitally created works and Copyrighted works transformed into a
digital format and placed on the internet are Copyright protected.
 The Copyright registration for a website, as a whole, is not possible.
However, different components/rudiments of a website can be
granted Copyright registration e.g. computer programmes/software,
compilations including computer databases (literary works‘);
photographs, paintings, diagram, map, chart or plan (artistic works‘);
and works consisting of music including graphical notation of such
work (musical works‘).
 Non-Copyright Work
• A computer or mobile App qualifies for
Copyright registration. An Application is
a complete, self-contained computer
program that is designed to perform a
specific task.
• If someone swipes your
picture/song/video from the internet and
uses it for their purposes, it is a
Copyright infringement. By the way - the
same is true if you nick some else‘s
material for your purposes.
 Copyright Registration
It is not necessary to register a work to claim Copyright. Once a
work is created via any medium, the work receives automatic
Copyright safety. In other words, there is no formal request to be
submitted to the office of the Copyright, for acquiring Copyright.
Copyright registration does not confer any rights. It is merely a
prima facie proof of an entry in respect of the work in the
Copyright register maintained by the Registrar of Copyrights.
The certificate of registration serves as prima facie evidence in a
court in cases of disputes relating to ownership or creation of
Copyright, financial matters, transfer of rights, etc. It is advisable
that the author of the work registers for Copyright for better legal
protection. In India, Copyrights matters, including Copyright
registration, are administered under the Copyright Act, 1957 and
Copyrights Rule, 2013. Below mentioned are prominent forms
for copyright registration (https://copyright.gov.in/).Refer
proforma XIV Form.
 Judicial Powers of the Registrar of
Copyrights
The Registrar of Copyrights has the powers of a civil court when trying a suit
under the Code of Civil Procedure in respect of the following matters:
 Summoning and enforcing the attendance of any person and examining
him on oath.
 Requiring the discovery and production of any document.
 Receiving evidence on affidavit.
 Issuing commissions for the examination of witnesses or documents.
 Requisitioning any public record or copy thereof from any court or office.
 Any other matters which may be prescribed.
A duly filled application (Form XIV) is submitted to the
Copyright Office at the following address: The Registrar of Copyright,
Plot no. 32, Boudhik Sampada Bhawan, Sector 14, Dwarka, New Delhi
- 110075.
The application can be submitted by post or online registration through the E-
filing facility‘ (www.copyright.gov.in).
 Judicial Powers of the Registrar of
Copyrights
Usually, it takes around 2-3 months to get the work
registered by the Copyright Office. After applying,
there is a mandatory waiting period of 30 days. If any
person has any objection to the claim/s made in the
application, he can contact the office of the Registrar
of Copyrights. After giving an opportunity of hearing
to both the parties, the Registrar may decide the case
in favour or against the author of the work. Once the
objections (if any) are cleared, the application is
evaluated by the examiners. If any doubts/queries are
raised, the applicant is given ample time (around 45
days) to clear these objections.
Flow chart of copy right filing
 Fee Structure.
For each work, a separate
application form needs to be
submitted, along with the
requisite fee. The fee is not
reimbursable
in case the application for
registration is rejected. Refer
chart 2.6 of text
 Copyright Symbol
It is not necessary to place the Copyright symbol © with your name and year
created‘ near your published or printed materials - but if you do, it‘s easier
to nail someone for infringement on your Copyright if you go to court. The
important things which may be mentioned as a Copyright mark on
Copyright creation are:
 The Copyright symbol © (the letter C in a circle), or the word. Copyright‘,
or the abbreviation Co pr.‘
 In the case of compilations or derivative works incorporating previously
published material, the year with the date of the first publication of the
compilation or derivative work should be mentioned. The year date may be
omitted for pictorial, graphic, sculptural work, greeting cards, postcards,
stationery, jewellery, dolls and toys.
 The name or the abbreviation by which the name can be recognized of the
owner of the Copyright, or a generally known alternative designation of
the owner can be mentioned.
 The elements for sound recordings generally require the same three
elements, except the symbol is ℗ (the letter P in a circle) instead.
 Validity of Copyright
In general, the validity of Copyright is for 60
years. This period starts either from the year
after the death of the author (in case of
literature, dramatic, musical and artistic
works) or from the date of publication of the
work (in case of cinematograph films, sound
recordings, photographs, posthumous
publications, works of government and works
of international organizations).
 Copyright Profile of India
A comparative five years (2015-20) study revealed a
gradual increase in the number Copyright applications
in the first four years of the study, with a maximum
number of applications (21,905) recorded in the 2019-
20 period (Fig. 2.7). The number of applications
examined was maximum (34,388) in 2017-18.
However, it tapered down to 22,658 in 2018-19 and
19,460 in 2019- 20. A similar trend was observed in the
number of Copyright registrations, with a peak
(19,997) observed in 2017-18.
Copyright and the word ‘Publish’
A work is considered published when it is in the public
domain on an unrestricted basis. For example, a person
writes an article called Life in Himalayas‘ and distributes
it to a few individuals and/or societies/organizations with
a restriction not to disclose the contents of the article.
Life in Himalayas‘ has not been published in the
Copyright sense. If the author removes the condition of
nondisclosure or posts of this article on the internet (i.e.
public domain), it would be considered as published. It is
to be noted that both published and unpublished works
can be registered under copyright.
 Transfer of Copyrights to a
Publisher
The original authors of the Copyrighted work may not
have the wherewithal to widely publicize their work.
Usually, they transfer their rights to publishers for
financial benefits, which could be a one-time lump sum
amount or royalties or a combination of the two.
However, transferring Copyrights unconditionally to
the publishers (or anybody else) may have some
repercussions for the owner of the Copyright. A
publisher may prevent author/s from displaying their
articles on the institute‘s websites. The new owner of
Copyright may not even allow the author to revise his
work.
 Termination of agreement
Even though the author has completely and
exclusively licensed out his work, the
Copyright Act has a provision under
‘termination of transfer’ to reclaim his
Copyright. Under this provision, certain
Copyright agreements can be terminated
after 35 years of the agreement. This
statutory termination right applies even
though it is not incorporated in the
agreement. It is strongly advised that
authors must apply their mind while signing
the Copyright agreement.
 Copyrights and the Word ‘Adaptation’

In the world of Copyright, the word Adaptation‘

signifies the creation of a similar work based
upon contemporary work. The Copyright Act
defines the following actions as adaptations:
a) Transformation of a dramatic work into a non-
dramatic work.
b) Changing a literary or artistic work into a
drama.
c) Re-arrangement of a literary or dramatic work.
d) Depiction through pictures of a literary or
dramatic work.
e) The making of a cinematograph film of a
literary or dramatic or musical work.
 Copyrights and the Word ‘Indian
Work’
Indian work‘ means a literary, dramatic or
musical work provided---
 The author of the work is an Indian
citizen.
 The work is first published in India.
 In the case of an unpublished work, at
the time of the making of the work, the
author of the work was a citizen of India.
 Joint Authorship
‘Work of Joint Authorship‘ means
a work produced by the
collaboration of two or more
authors in which the contribution
of one author is not distinct from
the contribution of the other
author or authors.
 Copyright Society
Many a time, authors and other owners of Copyrights are either
unable or lose track of all the uses of their work, including the
collection of royalties, infringement issues, etc. To overcome these
hurdles, Copyright Societies have cropped up. As per Section 33 of
the Copyright Act, 1957, a Copyright Society is a registered
collective administration society formed by authors and other
owners of the Copyright. Society can perform the following
functions:
 Keep track of all the rights and infringements related to their
clients.
 Issue licenses in respect of the rights administered by the
society.
 Collect fees in pursuance of such licenses.
 Distribute such fees among owners of Copyright after making
deductions for the administrative expenses.
 Copyright Society
A Copyright Society can be formed by a group of seven or more
copyright holders. The term of registration of a Copyright
Society is
for five years. The registered Copyright Societies in India are:
 Society for Copyright Regulation of Indian Producers for Film
and Television (SCRIPT) 135 Continental Building, Dr. A.B.
Road, Worli, Mumbai 400 018, (for cinematograph and
television films).
 The Indian Performing Right Society Limited (IPRSL), 208,
Golden Chambers, 2nd Floor, New Andheri Link Road, Andheri
(W), Mumbai- 400 058 (for musical works).
 Phonographic Performance Limited (PPL) Flame Proof
Equipment Building, B.39, Off New Link Road, Andheri
(West), Mumbai 400 053 (for sound recordings).
 Copyright Board
The Copyright Board is a regulatory body constituted by the government, to
perform judicial functions as per the Copyright Act of India. The Board
comprises of a Chairman and members (2-14) to arbitrate on copyright
cases. The Chairman of the Board is of the level of a judge of a High Court.
As per the Act, the Board has the power to:
 Hear appeals against the orders of the Registrar of Copyrights.
 Hear applications for rectification of entries in the Register of
Copyrights.
 Adjudicate upon disputes on the assignment of Copyrights.
 Grant compulsory licenses to publish or republish works (in
certain circumstances).
 Grant compulsory licence to produce and publish a translation of a literary or
dramatic work in any language after seven years from the first publication of
the work.
 Hear and decide disputes as to whether a work has been published or about
the date of publication or the term of Copyright of a work in another country.
 Fix rates of royalties in respect of sound recordings under the cover-version
provision.
 Fix the resale share right in original copies of a painting, a sculpture or a
drawing and original manuscripts of a literary or dramatic or musical work.
 Copyright Enforcement Advisory Council (CEAC)

In 1991, the Government set up a CEAC

to review the progress of enforcement
of the Copyright Act periodically and
advise the Government regarding
measures for improving the
enforcement of the Act. The term of
the CEAC is three years. The CEAC is
reconstituted periodically after the
expiry of the term.
 International Copyright agreements,
Conventions and Treaties
Any creative work is not protected and enforced automatically worldwide because
Copyright laws are territorial by nature i.e. Laws are valid only in the country in which
they have been created. To secure protection to Indian works in foreign countries, the
author needs to apply separately to each country or through dedicated international
‗Conventions on Copyright and Neighbouring (related) Rights‘, provided a country is a
member of such Conventions.
India is a member of the following Conventions:
Berne Convention for the Protection of Literary and Artistic Works, 1886.
(https://www.wipo.int/treaties/en/ip/berne/).
 Universal Copyright Convention, 1952. (
http://www.unesco.org/new/en/culture/themes/creativity/creative
industries/copyright/universal-copyright-convention/).
 Rome Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, 1961. (https://www.wipo.int/treaties/en/ip/rome/).
 Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties,
1979.(https://treaties.un.org/doc/Treaties/1979/12/19791213%2009-00%20AM/
Ch_XXVIII_01_ap.pdf).
 Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1995.
(https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm).
In India, Copyrights of foreign authors, whose countries are members of the Berne
Convention for the Protection of Literary and Artistic Works (1888), Universal Copyright
Convention (1952) and the TRIPS Agreement (1995) are protected through the
International Copyright Order.
 Interesting Copyrights Cases
David vs. Macaques, Indonesia, 2011 - In 2011, a UK-based
photographer David Slater put his camera on a tripod in the wildlife
sanctuary to click the photograph of Macaques monkeys. The
Macaques were very curious about the equipment and they found the
flashlight fascinating. One monkey clicked a selfie photograph which
became very famous and legally controversial on the matter of
Copyright. Theoretically, the monkey is the holder of Copyright as he
clicked the photo. Practically, David Slater was the claimant of the
Copyright. The dispute entered judicial quarters between People for the
Ethical Treatment of Animals (PETA) and David Slater. Now, the
settlement has been concluded. The photographer i.e. David Slater
withholds the Copyright of the picture for having a substantial
contribution, but he would pay 25% of the royalty share to the wildlife
sanctuary where the monkey lives (https://www. wipo.int/
ipo_magazine/en/2018/01/article_0007.html).
 Happy birthday to you’ case law
‘Happy birthday to you’ case law - According to the Guinness
World Records, 1998, it is the most recognized song in the English
language. The melody of Happy Birthday to You‘ originates from
the song Good Morning to All‘, which has traditionally been
attributed to American Sisters, namely Patty Smith Hill and Mildred
J. Hill, in 1893. The sisters composed the melody of Good Morning
to All‘ to make it more interesting for the children. In 1935, Summy
Company registered the Copyright on the Piano Setting on the
Song. In 1999 Warner/Chappell acquired the company and started
taking royalty for the happy birthday song and earned a huge
amount. After mediation by the Federal court, Warner Music,
through its publishing subsidiary Warner/Chappell, agreed to pay
the settlement to a class of thousands of people and entities‘ who
had paid licensing fees to use the song since 1949 because only the
melody was registered and not the lyrics. Now the song is in the
public domain.
 Amitabh Bachchan case
Amitabh Bachchan to lose Copyrights over his
father’s works in 2003 - Father of renowned actor
Mr. Amitabh Bachchan, (late) Shree Harivansh Rai
Bachchan was a noted poet and Hindi writer. His
most famous work was Madhushaala (1935). He
was the recipient of the Sahitya Akademi award and
the Padma Bhushan. He also did Hindi translations
of Shakespeare‘s Macbeth and Othello. He passed
away on 18th January 2003, at the age of 95. As
per the Copyright Act, 1957, the rights over his
work will be completed in the year 2063 (rights
remain with the author for his lifetime plus 60
years).
 Trade Marks
In simple language, a Trademark (or Trade
Mark) is a unique symbol which is capable
of identifying as well as differentiating
products or services of one organization
from those of others. The word Mark‘
stands for a sign, design, phrase, slogan,
symbol, name, numeral, devise, or a
combination of these. Essentially, the
Trademark is anything that identifies a
brand to a common consumer.
Examples of Trade marks
 Eligibility Criteria
For goods/services to be legally classified as Trademark, they need to
pass the following conditions:
Distinctiveness - The goods and services for which the protection is
sought should possess enough uniqueness to identify it as a Trademark.
It must be capable of identifying the source of goods or services in the
target market.
Descriptiveness - The Trademark should not be describing the
description of the concerned goods or services. Descriptive marks are
unlikely to be protected under Trademark law. However, descriptive
words may be registered if they acquire secondary meaning‖, such as
the brand name Apple‘ is used by a USA based multinational company
that manufactures electronic gadgets.
Similarity to the prior marks - The mark should be unique and should
not be having similarity to the existing marks.
 Who Can Apply for a Trademark

Any person who is a proprietor of the

Trademark is eligible to apply for registration
of Trademark. The mark can be filed
collectively by two or more applicants and for
that purpose, support documents need to be
submitted. An organization or association can
file for the collective mark and the same can
be used by its members. The most
appropriate example for this mark is the
Reliance‘ symbol, which indicates all products
falling under the organization.
 Acts and Laws

In India, Trademarks are governed under The

Trademarks Act,1999(
http://www.ipindia.nic.in/writereaddata/Portal/IP
OAct/1_43_1_trad
e-marks-act.pdf).The Trademark rules are
governed by Trademarks Rules, 2002,(
http://www.ipindia.nic.in/writeread
data/Portal/IPO
Rule/1_56_1_1_59_1_tmr_rules_2002_1_.pdf).
The Acts and Rules have been amended from time
to time. The latest amendments were done in
2010 and 2017 for Trademarks Acts and
Trademarks, respectively. The administration of
matters pertaining to Trademarks is carried out
by the Office of CGDPDTM, GoI.
Designation of Trademark Symbols
TM -Represents that the Trademark is
unregistered. This mark can be used for
promoting the goods of the company.
SM - Represents that the Trademark is
unregistered. This mark can be used for
promoting brand services.
R - Represents a registered Trademark/Service.
The applicant of the registered Trademark is
its legal owner.
 Classification of Trademarks
Goods and Services under Trademarks are classified as
per the Nice Agreement‘ (1957) administered by
WIPO. A total of 149 countries (84 state parties who
are signatory to the Agreement and 65 additional states
who are following this classification for the
Trademarks) and others (African Intellectual Property
Organization, African Regional IP Organization and
Trademark Office of European Union) are using the
same Trademark classification. Trademark
classification comprises of 45 classes, out of which
34 are for goods and 11 are for services.
 Classification of Trademarks
Class 1 is for Chemicals for use in industry, science and
photography, agriculture, horticulture and forestry;
Unprocessed artificial resins, unprocessed plastics; Fire
extinguishing and fire prevention compositions; Tempering
and soldering preparations; Substances for tanning animal
skins and hides; Adhesives for use in industry; Putties and
other paste fillers; Compost, manures, fertilizers; Biological
preparations for use in industry and science.
Class 45 is for legal services; Security services for the physical
protection of tangible property and individuals; Personal and
social services rendered by others to meet the individuals‘
needs.
The Vienna codification established under the Vienna
Agreement (1973) is an international classification of the
 Registration of a Trademark is Not Compulsory
Although, registration of a Trademark is not compulsory, registration
provides certain advantages to the proprietor of the Trademark, such
as:
 Legal Protection – prevents the exploitation of the Registering
Trademark by other companies/organizations/individuals, without
proper authorization by the legal owner/s of the Trademark. In case
of legal suits, a registered Trademark can serve as a potent evidence
of the lawful proprietorship of the Trademark.
 Exclusive Right - grants the Trademark owner full rights to use it in
any lawful manner to promote his business.
 Brand Recognition - products/ services are identified by their logo,
which helps create brand value over time. A strong brand is a huge
pull for new customers and an anchor for existing customers.
Registering a Trademark early and using it will create goodwill and
generate more business for the brand owner.
 Asset Creation - registered Trademark is an intangible property
of the organization. It can be used for enhancing the business of the
company as well as drawing new clients and retaining old one by the
account of brand identification.
Registration of a Trademark is Not
Compulsory
It is pertinent to mention that no legal course of action
can be taken against the unlawful use of an
unregistered Trademark. For unregistered marks
(sometimes known as Common Law Trademarks‘,
which are defined as the law rights which generally
do not require formal registration for enforcement)
action can be brought against any person for the
passing off goods or services as the goods or services
provided by another person. In such cases, the
unregistered Trademarks have to prove the
establishment of goodwill or reputation connected
with the goods or service.
 Validity of Trademark

In India, a registered Trademark is

valid for 10 years. The period can
be extended every 10 years,
perpetually. As per the Indian
Trademarks Act, the renewal
request is to be filed in the form
TM-R‘ within one year before the
expiry of the last registration of
the mark.
 Types of Trademark Registered in India

Trademark can be a word that must be able to speak,

spell and remember. It is highly recommended that one
should choose the Trademark like invented word,
created words, and unique geographical name. One
should refrain from Trademarks like common
geographical name, common personal name and the
praising words which describe the quality of goods,
such as best, perfect, super, etc. To ensure all these
characteristics in a Trademark, it is suggested to
conduct a market survey to ensure if a similar mark is
used in the market. Following are some examples of
the registerable Trademarks:Refer
Types of Trademark Registered in India
 Any name including personal or surname of the applicant or
predecessor in business or the signature of the person e.g. the
Trademark BAJAJ‘ is named after industrialist Mr. Jamnalal Bajaj.
 A word having no relevance to the Product/services e.g. Trademark
INDIA GATE‘ is being used for food grains and allied products.
 Letters or numerals or any combination thereof e.g. YAHOO‘ is the
abbreviation of the phrase Yet Another Hierarchical Officious
Oracle‘. It has now become a worldwide famous Trademark.
Distinctive General Word Apple‘ IT Company
Fanciful Designation Kodak‘ Photograph Film
Distinctive Personal Names Ford‘ Automotive
Device Udhaar‘ Financial Technology
Number 4711‘ Perfume
Picture Alligator Knitwear Manufacturing
Slogan Drink it to believe it Soft Drinks
 Trademark Registry
In India, the operations of Trademarks are
carried out from five cities i.e. Delhi,
Mumbai, Ahmadabad, Kolkata, and
Chennai. Each city has been assigned a
bunch of states (Table 2.8). The
businesses located in a particular state
can only use the services of the assigned
Trademark Registration Office. In the
case of foreign applicants, jurisdiction is
based on the location of the office of the
applicant‘s agent or attorney.
Process for Trademarks Registration
To seek Trademark registration, the proprietor
of the Trademark has to fill an application.
The proprietor may choose to hire an agent
to fill and submit the application on his
behalf. Before applying, the applicant needs
to conduct a prior art search to ensure the
registration criteria.
 Prior Art Search
Prior to applying for Trademark registration, it is always prudent to
check whether the intended Trademark is already registered or
not. Also, it is ascertained whether the intended Trademark is
not similar to the ones already registered. The requisite search
can be carried out using various web portals, such as:
 Public search for Trademarks by CGPDTM
(https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx).
 WIPO‘s Global Brand Database
(https://www3.wipo.int/branddb/en/).
 Trademark Electronic Search System (TESS).
(http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4805:za84
7u.1.1)
 MARKARIA Trademark Search Engine (https://trademarksearch.
marcaria.com/en/asia/india-trademark-search).
 VAKIL Search (https://vakilsearch.com/trademarksearch/
trademarks?search=bajaj).
 Process for Trademarks Registration
Once the prior art search‘ is over and the applicant is
convinced about the distinctiveness of the Trademark, he can
proceed to fill the application form for registration (TM-A).
The application is filed at the Trademarks Office subject to
the jurisdiction of the applicant.
The steps involved in the registration process are as follows:
1. Prior search
2. an application number is assigned and the same can be
tracked online at https://ipindiaonline.
gov.in/tmrpublicsearch/frmmain.aspx.
3. The application is scrutinized by a professional examiner. In
case of objections the applicant will be directed to apply with
refinement.
4. Once the Trademark is published in the official journal, the
public has an opportunity to file an objection, if any, within
90 days.
5. Once the application has successfully completed all
formalities, a Trademark registration certificate is issued in
Flow chart
 Fee and forms related to
Trademarks.
Refer 2.9 chart page no. 76 Important
Queries/Facts About Trademarks-
2.3.11.1. Can any correction be made
in the application or register Yes, The
rectifications are possible, but the
applicant has to ensure that the
corrections made in the Trademark do
not alter its identity
significantly.
 Can a registered Trademark be
removed from the register
Yes, it can be removed if:
 Trademark was registered without any bona fide
intention of using it.
 If the Trademark is not being used for a
continuous period of 5 years from the
registration date or 3 months prior to filing the
application for registration.
 Registered Trademark was disallowed but
inadvertently existed in the official register.
 Trademark Registrar has the power to terminate
a registered Trademark on a suo motto basis.
Is the sound or smell registrable as
a Trademark -
Yes, sound or smell is registrable as a
mark, as long as it is distinct and can
be reproduced graphically. The
Trademark, 4711 cologne‘ has been
registered as a chemical formula. The
sound can be registered as a
Trademark, provided it can be
recorded in MP3 format and depicted
graphically.
 Can a registered user restrain the third party from using
an identical or similar mark which is not registered -

There is no clear cut answer for such

situations. It depends on the circumstances
of the matter. But ordinarily, a registered user
cannot restrain the third party from using
identical or similar marks if the third party
has been continuously using the mark
concerning the same goods or services from
a date prior to the date of use of the
registered mark or date of registration.
According to the Trademarks Act, 1999, the
rights and protection in the form of remedies
are not only to the registered mark but also
to the unregistered Trademarks
 Seeking Trademark protection in a foreign
country -
To file the Trademark in a foreign country, there are
two options available for the applicant. He can either
file the Trademark application with the Trademark
Office of the country in which he wishes to seek
protection, or he can use WIPO‘s Madrid System
through which the registration can be filed in
multiple countries by claiming priority of one of the
signatory countries. This priority has to be claimed
within six months of the first filing. The applicant can
file a single application for seeking protection in any
number of countries that are members of WIPO by
paying a single set of fee.
 International Treaties and
Conventions
There is a provision to file an international application for the
Trademarks to seek protection in other Convention countries. The
rules and regulations to file international applications in
Convention countries are concluded under the following treaties
and agreements administered by WIPO.
 The Madrid Agreement for International Registration of Marks
(1891) (wipo.int/treaties/en/registration/madrid/).
 The Nice Agreement for International Classification of Goods
and Services (1957).
(https://www.wipo.int/classifications/nice/en/index.html).
 The Trademark Law Treaty (TLT) (1994) (https://www.wipo.
int/ treaties/en/ip/tlt/summary_tlt.html).
 Vienna Agreement (1973) for the Classification of Figurative
Marks(https://www.wipo.int/classifications/vienna/en/preface.html).
 Famous Case Law: Coca-Cola Company vs.
Bisleri International Pvt. Ltd.
Tademark of an Indian company, Bisleri International Pvt. Ltd.
The company transferred the rights (formulation, IPR and
goodwill, etc.) to a beverage company, Coca-Cola, for the
Indian Territory. However, in 2008, the Bisleri Company
applied for registration of Trademark Maaza‘ in Turkey and
started exporting the product with the mark MAAZA‘. This
was unacceptable to the Coca-Cola Company and thus filed a
petition for permanent injunction and damages for passing-
off and infringement of the Trademark.
It was argued on behalf of Plaintiff (Coca-Cola Company) that
as the mark Maaza‘ concerning the Indian market was
assigned to Coca-Cola, and manufacture of the product with
such mark, whether for sale in India or for export, would be
considered as an infringement. After hearing both the parties,
the court finally granted an interim injunction against the
defendant (Bisleri) from using the Trademark MAAZA in India
as well as for the export market, which was held to be an
infringement of Trademark.
 Questions for 4th Module
1. Explain the concept of 'idea-expression dichotomy' that is fundamental to copyright
law. Discuss with examples.
2. What are the different types of literary, dramatic and artistic works that can be protected
under copyright law?
3. Discuss the concept of originality as a criterion for copyright subsistence. How is it
assessed under Indian law?
4. Explain the doctrine of fair use describing its statutory limits and factors considered for
determining fair use.
5. What exclusive economic and moral rights are granted to copyright owners? Discuss
each briefly.
6. Describe the procedure for copyright registration in India. What does registration
establish under the law?
7. What constitutes copyright infringement? Explain direct, contributory and secondary
infringement.
8. Discuss the remedies available for copyright owners under Indian law in case of
infringement.
9. Discuss the case laws pertaining to copy rights.
10. What do you mean by trade mark? What are the designations of a trade mark?
11. Describe registrability criteria for Trade marks giving examples of registerable and
non-registrable subject matter.
12. Explain the registration process of trade marks through flow chart.
13. Discuss statutory grounds under which a registered trade mark can be cancelled in
India.
14. Explain few case laws of trade marks.