LAW RELATING TO INTELLECTUAL

PROPERTY
 INTRODUCTION
• An intellectual (involving imagination and
reason) is one who tries to use his or her
intelligence and analytical thinking in either
his profession or personal pursuits.
• Product of the mind creativity (intangible
asset or ‘incorporeal’ property) is Intellectual
Property and the right to protect this property
is the Intellectual Property Right.
• The Intellectual Property Right (IPR) relates to the right
of an individual to derive benefits from his intellectual
property and to exclude others from doing so.
• Intellectual property rights are a bundle of exclusive
rights over creations of the mind, both artistic and
commercial.
• Under intellectual property law, owners are granted
certain exclusive rights to a variety of intangible assets,
such as musical, literary, and artistic works
(COPYRIGHT); ideas, discoveries and
inventions(PATENTS); and words, phrases, symbols, and
designs(TRADEMARKS)
 TRADE RELATED INTELLECTUAL
PROPERTY RIGHTS (TRIPS)
• GATT – The General Agreement on Trade and Tariff was
established to regulate international trade on October 30,
1947.
• The last round of GATT meeting (8th – Uruguay round) held
in 1986–94 gave birth to WTO (World Trade Organization)
replacing GATT.
• The Uruguay round covered wide range of negotiations
which included agreement on TRIPS protection.
• With the establishment of WTO from 1st January, 1995,
potential knowledge as a creator of wealth is gaining
currency throughout the world. The creation of knowledge
needs protection of laws, to generate wealth in all the
countries.
• TRIPS under WTO agreements are covered
under seven categories. These are:
1. Patents
2. Copyrights
3. Trademarks
4. Geographical indications
5. Industrial designs
6. Integrated circuits
7. Trade secrets or confidential information
 LAW RELATING TO PATENTS
• Contained in the Patent Act, 1970
• Patent is a grant from the government, which
confers on the grantee, for a limited term, the
exclusive privilege of making, selling and using an
invention and authorizing others to do so.
• The Act states that a ‘patent’ means a patent for
any invention granted under the Act. [S.2 (1) (m)].
• Patent is granted only for inventions which are
new and useful.
 WHAT IS AN INVENTION?
• It means ‘something new which did not exist
before’.
• It means any new and useful –
– Art, process, method or manner of manufacture.
– Machine, apparatus or other article.
– Substance produced by manufacture, and
– Includes any new and useful improvement of any
of them and an alleged invention.
 FEATURES OF A PATENTABLE
INVENTION
• The subject matter should be new.
• It should be useful.
• It should be capable of being marketed for
commercial purpose.
 INVENTIONS NOT PATENTABLE (S.3,4)
1. Frivolous or claims contrary to well established natural laws.
2. Contrary to public order and morality or causes serious prejudice
to human, animal and plant life or health or to the environment.
3. Mere discovery of a new form of a known substance which does
not result in the enhancement of the known efficiency of that
substance.
4. Mere discovery of any new property or mere use of a known
process, machine or apparatus without resulting in new product
or use of atleast one new reactant.
5. Methods of agriculture or horticulture.
6. Mathematical or business methods or a computer programme
per se or algorithms.
7. A mere scheme or rule or method of performing mental act or
method of playing game.
8. Presentation of information.
9. Topography of integrated circuits.
10. An invention which, in effect, is traditional knowledge.
11. An invention relating to atomic energy.
 PATENT ADMINISTRATION
• Patent system in India is administered under the
superintendence of the Controller General of
Patents, Designs, Trademarks and Geographical
indications.
• The office of the Controller General functions
under the Ministry of Commerce and Industry.
• The Controller General delegates his powers to
senior Joint Controller, Joint Controllers, Deputy
Controllers and Assistant Controllers.
• Examiners of Patents associated with each office
discharge duties according to the directions of
the Controllers.
 PATENT APPLICATION (S.6 – 11)
• Can be made by a true and first inventor, his
assignee or their legal representative after
their death.
• Every application shall be for one invention
and accompanied by provisional or complete
specifications.
• The Act also provides for international
application under the Patent Cooperation
Treaty, for a patent.
PUBLICATION AND EXAMINATION OF
APPLICATION (S.11 A – 21)
• Every application shall be published and sent
by the Controller to an examiner for a report.
 OPPOSITION PROCEEDINGS FOR
GRANT OF PATENTS (S.25-28)
• If any opposition to the grant of patent is
made, it shall be decided by the controller.
PROVISION FOR SECRECY OF CERTAIN
INVENTIONS (S.35-42)
• If the invention is relevant for defense
purposes, then as notified by the central
government, the controller may give
directions as to prohibiting or restricting the
publication of information.
 GRANT OF PATENTS AND RIGHTS
CONFERRED THEREBY (S.43-53)
• Grant of Patent: Where the application for the patent is
accepted, then the Controller shall grant the patent.
• Date of Patent: Every patent shall be dated as of the
date on which the application for patent was filed.
• Rights of Patentee: Exclusive right to prevent third
parties from the act of making, using, selling or
importing for these purposes the patented product in
India.
• Term of Patent: The term of every patent shall be 20
years from the date of filing of the application for the
patent.
 PATENT OF ADDITION (S.54-56)
• An application may be for a patent in respect of
any improvement in or modification of a
patented invention (know as main invention).
• The Controller may grant the patent for the
improvement or modification as a ‘patent of
addition’.
• The term of the patent of addition shall run
concurrently and terminate with the main patent.
• A patent of addition shall not be granted before
grant of the patent for the main invention.
 AMENDMENT OF APPLICATIONS AND
SPECIFICATIONS (S.57-59)
• The Controller is empowered to allow the
application for the patent or to complete
specification or any document relating thereto to
be amended.
• Every application shall state the reasons and
nature of the proposed amendment.
• If such application is made after the grant of the
patent then the nature of the proposed
amendment shall be published.
 RESTORATION OF LAPSED PATENTS
(S.60-62)
• Where a patent has ceased to have effect by
reason of failure to pay any renewal fee within
the prescribed period, then an application
may be made to the controller within 18
months for the restoration of the patent.
 SURRENDER AND REVOCATION OF
PATENTS (S.63-66)
• A patentee may at any time giving notice to the
Controller, offer to surrender his patent.
• This offer shall be published.
• Opposition can be made and settled and then
only the Controller shall revoke the patent.
• The appellate board may also revoke the patent
on a petition of any person interested or of the
Central Government.
• The High Court may also revoke the patent on a
counter claim in a suit for infringement of patent.
• The Act also provides revocation of patent by the
Central Government in public interest.
 REGISTER OF PATENTS (S.67-72)
• A register of patents is kept in the patent office .
• All the particulars regarding the patent are entered
in the register.
• The register is prima facie evidence of entries made
in the register.
• This register shall be open to inspection by the
public.
• Any person can take extracts of the register on
payment of prescribed fee.
 PATENT OFFICE AND POWERS OF
CONTROLLER (S.73-81)
• The head office of the patent office is at
Kolkata and branch offices are at Mumbai,
New Delhi and Chennai.
• The Controller General of Patents, Design and
Trade Marks is the Controller of Patents.
• There shall be a seal of the patent office.
• The Controller shall have the powers of Civil
Court.
• The Controller has power to correct clerical
errors, take evidence either orally or by
affidavit.
 ACQUISITION OF INVENTIONS BY
CENTRAL GOVENRMENT (S.99-103)
• At any time after the application for a patent
had been filed or the patent has been granted,
the Central Government may use the
invention for Government purposes.
• The Central Government can acquire an
invention for a public purpose, before or after
the grant of a patent.
• Adequate compensation for the acquisition
shall be paid.
 SUITS CONCERNING INFRINGEMENT
OF PATENTS (S.104-115)
• The district court can grant relief in cases of
groundless threats of infringement, including
an injunction and damages.

• In any suit of infringement, the court may

grant an injunction, or seizure of goods or
damages.
 APPEALS TO THE APPELLATE BOARD
(S.116 – 117 H)
• An appeal shall lie from any decision, order or
direction of the Controller or Central
Government.
• Every appeal shall be made within three
months from the date of decision, order or
direction.
• No Court or other authority shall have or, be
entitled to, exercise any jurisdiction, power or
authority in relation matters expressly
provided to be decided by Appellate Board.
 PENALTIES (S.118-124)
OFFENCE PENALTY

Contravention of Secrecy provisions ( S.39 Two years imprisonment and/or fine

invention suitable for defence purposes)

Falsification of entries in register, etc. Two years imprisonment and/or fine

Unauthorized claim of patent rights Upto Rs. 10,000/- Fine

Wrongful use of the words “patent office” Six months imprisonment and/or fine

Refusal or failure to supply information to Upto Rs.20,000/- Fine

Central Government or Controller

Practice by non-registered patent agents Fine Upto Rs.10,000/- (First Offence)

Fine Upto Rs.40,000/- (Second or
subsequent offence)
 PATENT AGENT (S. 125)
• Person qualified to practice before the Controller.
• Patent Agent can prepare all documents, transact
all business and discharge such other functions as
may be prescribed in connection with any
proceeding before the Controller under the Act.
• All applications and communications to the
controller under this Act may be signed by the
Patent Agent authorized in writing in this behalf
by the person concerned.
 PATENT RULES, 2003
• The First Schedule (Rule 7) – Fees
• The Second Schedule (Rule 8) – List of Forms
– Form 1 – Application for grant of a patent.(R.39)
– Form 1 - A – Application for grant of patent on an
application corresponding to an International
application under PCT (Patent Cooperation Treaty)
(R.20)
LAW RELATING TO COPYRIGHT
 INTRODUCTION
• Copyright is about the right to copy.
• It is based on the principle that people who produce
creative work like poems, novels, etc., have a right to
decide how their works can be reproduced.
• Copy right is not related to ideas, but to their
expression.
• Law relating to Copyright is contained in the Copyright
Act, 1957.
• The Indian Copyright is in conformity with the
international conventions like Bern Convention,
Universal Copyright Convention and agreements of
World Trade Organization relating to Trade Related
Intellectual Property Rights (TRIPS).
 COPYRIGHT OFFICE AND COPYRIGHT
BOARD (S.9-12)
• The Central Government has established a Copyright
Office under the control of Registrar of Copyrights.
• The Central Government has also constituted a
Copyright Board. The Registrar of Copyrights is the
Secretary of the Board.
• The Copyright Board consists of a Chairman and
between 2 to 14 members.
• The Board functions through Benches consisting of 3
members.
• The Copyright Board shall be deemed to be a civil
court.
COPYRIGHT, ITS OWNERSHIP (S.13-21)
• The copyright subsists in –
1. Original literary, dramatic, musical and artistic works.
2. Cinematograph films.
3. Sound recordings.
• Copyright means the exclusive right in all the
works in which the copyright subsists.
• The author of the work is the first owner of the
copyright therein.
• The owner of the copyright may assign to any
person the copyright, either partially or wholly.
 TERM OF COPYRIGHT (S.22-29)
• The term of the copyright in any literary, dramatic,
musical or artistic work (other than a photograph) is:
a. If published in the lifetime of the author until 60 years from
the beginning of the calendar year next following the year
in which the author dies.
b. If published anonymously or pseudonymously, until 60
years from the beginning of the calendar year next
following the year in which the work is first published. If,
however, the identity of the author is disclosed before the
expiry of the said period, then copyright shall subsist as per
‘a’ above.
c. In posthumous works, until 60 years from the beginning of
the calendar year next following the year in which the work
is first published.
• The term of the copyright in case of a
photographs, cinematograph film, sound
recording, government work, work of public
undertaking and the works of an international
organization, shall subsist until 60 years from
the beginning of the calendar year next
following the year in which the work is first
published.
 RIGHTS OF BROADCASTING
ORGANIZATION AND PERFORMERS
• S.37-39 A
• Every broadcasting organization shall have a special
right known as “Broadcasting Reproduction Right”
in respect of its broadcasts. The term of this right is
25 years and of performer’s right subsists for 50
years.
 LICENCES (30-32B)
• The owner of the copyright in any existing work
or the prospective owner of the copyright in any
future work may grant any interest in the right by
license in writing signed by him or by his duly
authorized agent.
• License to produce and publish a translation of a
literary or dramatic work in any language may be
applied to the Copyright Board, after a period of
7 years from the first publication of the work.
• A License to translate foreign literary or dramatic
work, may be applied after three years from its
publication.
 COPYRIGHT SOCIETIES (S.33-36A)
• No person or association of persons can
commence or carry on the business of issuing
or granting licenses in respect of any work in
which copyright subsists unless a copyright
society is registered by the Central
Government.
• Example: Phonographic Performance Ltd.
(PPL) is a copyright society which has got
licenses from music companies for
broadcasting their music in India.
INTERNATIONAL COPYRIGHT (S.40-43)
• The Central Government can extend copyright
protection to foreign works, and works made
an published by certain International
Organizations. Accordingly the Central
Government has made the International
Copyright Order, 1991 and the Copyright
(International Organizations) Order, 1958
REGISTRATION OF COPYRIGHT (S.44-50 A)
• Registration of Copyright is optional.
• A register of Copyright is kept in the copyright
office.
• All details of works in which registration is applied
for is entered in that register.
• Register of copyrights is a prima facie evidence of
the particulars entered therein.
• The register is open for inspection and extracts of it
can be obtained.
 NOT INFRINGEMENT OF COPYRIGHT
(S.51-53 A)
Some of the acts not considered as infringement are:
1. Private use, including research.
2. Criticism or review.
3. Making back-up copies of computer programme.
4. Reporting current events through newspapers, magazines, by
broadcast, in a cinematograph film, by photograph.
5. For judicial proceedings.
6. Work prepared by secretariat of a legislature for its members.
7. Copy made in accordance with any law.
8. Reading in public of any reasonable extract from a published literary
or dramatic work.
9. For bona fide use of educational institutions.
10. In course of instructions or as a part in examination.
11. Recording to be heard in an enclosed room.
12. Any bona fide religious ceremony held by the Central, State or Local
Government.
 CIVIL REMEDIES (S.54-62)
• The owner of copyright can sue in the district
court having jurisdiction and shall be entitled
to remedies such as injunction, damages.
 OFFENCES (S.63-71)
• Any infringement of copyright is punishable with
imprisonment of not less than 6 months but may extend
to 3 years or fine not less than Rs.50,000 but may extend
to Rs.2,00,000.
• For infringement of copyright in computer programme
punishment provided is imprisonment of not less than 7
days but may extend to 3 years and fine of not less than
Rs.50,000 but may extend to Rs.2,00,000.
• Offences to be tried by Judicial Magistrate of the First
Class or Metropolitan Magistrate.
• If any person is aggrieved by any order made by the
Magistrate, then he can file appeal within 30 days of the
date of the order to the higher appellate court (District
Court).
 APPEALS (S.72)
• Any person aggrieved by any final decision or
order of the Registrar of Copyrights may, within
three months from the date of the order or
decision, appeal to the Copyright Board.
• Any person aggrieved by any final decision or
order of the Copyright Board may within 3
months from the date of the decision or order
prefer an appeal to the High Court within whose
jurisdiction the appellant actually or voluntarily
resides or carries on business or personally works
for gain.
 COPYRIGHT RULES, 1958
• First Schedule:
Form IV – Application for Registration of
Copyright (Rule 6) – To the Registrar of
Copyrights, Copyright Office, Curzon Road
Barracks, Kasturba Gandhi Marg, New Delhi -
110001
• Second Schedule:
Fees (Rule 26)
 INTERNATIONAL COPYRIGHT
ORDER,1999
• Made by the Central Government.
• Copyrights of works of the countries
mentioned in the International Copyright
Order (covering Berne, Universal Copyright
Convention and TRIPS agreements) are
protected in India, as if such works are Indian
works.
LAW RELATING TO TRADE MARKS
 INTRODUCTION
• Copyrights, Patents and designs are protected
only for a limited period.
• On the other hand, a registered trade mark can
be protected in perpetuity subject only to the
conditions that it is used and renewed
periodically.
• The first trade mark registered in U.K. under the
Act of 1876 consisting of a red equilateral triangle
in respect of alcoholic beverages is still in force.
• In India the law relating to trade mark is
contained in the Trade Marks Act, 1999.
 WHAT IS A TRADE MARK?
• ‘Mark’ includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging,
or combination of colors or any combination thereof – S.2 (m)
• A ‘trade mark’ is a visual symbol in the form of a word, a
device or a label applied to articles of commerce.
• The object is to indicate to the purchasing public that they are
the goods manufactured or service dealt in by a particular
person as distinguished from similar goods manufactured or
service in by other persons.
• Trade mark include the shape of goods, their packaging, and
combination of colors, so long as the mark is capable of
distinguishing the goods and services of one, from the goods
and services of another.
• The law of trade mark is based mainly on two concepts:
a. Distinctiveness, and
b. Deceptively similarity
 FUNCTIONS OF A TRADE MARK
• It identifies the product or service and its
origin.
• It guarantees its unchanged quality.
• It advertises the product or service.
• It creates an image of the product or service.
THE REGISTER AND CONDITIONS FOR
REGISTRATION (S.3 to 17)
• The Central Government may appoint an person to be
known as the Controller-General of Patents, Designs
and Trade Marks, who shall be the Registrar of Trade
Marks.
• There shall be a trade marks registry.
• A record called the Register of Trade Marks shall be
kept at the head office of the Trade Marks Registry.
• All the registered trade marks with the names,
addresses and description of proprietors, notifications,
of assignment and transmissions and particulars of
registered users, conditions and limitations shall be
entered in the Register of Trade Marks.
 PROCEDURE FOR AND DURATION OF
REGISTRATION (S.18-26)
• The proprietor of trade mark, desirous of registering
it, shall apply in writing to the Registrar with the
prescribed fee.
• The Registrar may refuse the application but shall
record reasons for such refusal.
• The Registrar may accept the application with any
modifications or conditions.
• After acceptance the Registrar shall cause the
application to be advertised.
• Any person within 3 months from the date of
advertisement , may give notice to the Registrar, of
opposition to the registration.
• The applicant is given 2 months time to reply to the
notice of opposition, and if does not do so, he shall
be deemed to have abandoned his application.
• After hearing the parties and hearing the evidence,
the Registrar shall decide about the opposition.
• The Registrar may register the trademark and a
certificate to this effect is issued to the applicant.
• The Registration of a trade mark, shall be for a
period of ten years but may be renewed from time
to time on payment of renewal fee.
 EFFECT OF REGISTRATION
• No person shall be entitled to institute any
proceedings to prevent, or to recover damages for,
the infringement of an unregistered trade mark.
• The registration of a trade mark shall give to the
registered proprietor of the trade mark the
exclusive right to the use of the trade mark and to
obtain relief in respect of infringement of the trade
mark.
• The registration of the trade mark shall be prima
facie evidence of the validity thereof.
 ASSIGNMENT AND TRANSMISSION
• The registered proprietor of a trade mark shall have
power to assign the trade mark.
• Any trade mark, whether registered or not, may be
assigned or transmitted with or without the
goodwill of the business concerned.
• The assignment and transmission of a trade mark
shall be registered with the Registrar.
 USE OF TRADE MARK AND REGISTERED
USERS
• The Act allows proposed use of trade mark by
company to be formed.
• A registered trade mark may be removed from
register on ground of non-use.
• A person other than the registered proprietor of a
trade mark may be registered as a registered user.
• A registered user has a right to take proceedings
against infringement but has no right of assignment
or transmission.
 COLLECTIVE MARKS
• Means a trade mark distinguishing the goods or
services of members of an association of persons (not
being a partnership within the meaning of the Indian
Partnership Act, 1932) which is the proprietor of the
mark from those of others.
• A collective mark shall not be registered if it is likely to
deceive or cause confusion on the part of public.
• An application for registration of a collective mark shall
be accompanied by the regulations governing the use
of such collective mark.
• When the requirements of registration are satisfied,
the Registrar shall accept the application with the
regulations.
• The regulations shall be open to public and can be
amended with the approval of the Registrar.
 SERVICE MARK
• A mark associated with a service can also be
registered under the Act.
• The services covered include banking,
communication, education financing, insurance,
chit funds, real estate, transport, storage,
material treatment, processing, supply of
electrical or other energy, boarding, lodging,
entertainment, amusement, construction, repair,
conveying of news or information and
advertising.
 CERTIFICATION TRADE MARKS
• The purpose of certification trade mark is to show
that the goods on which the mark is used have been
certified by some competent person in respect of
certain characteristics of the goods such as origin,
mode of manufacture, quality, etc.
• The proprietor of a certification trade mark does
not himself deal in the goods.
• A certification trade mark may be used in addition
to the user’s own trade mark on his goods.
• An application for the registration of a mark as a
certification mark shall be made to the Registrar in
the prescribed manner.
 WELL KNOWN TRADE MARKS
• It is a mark used over particular goods or services, which has
gained sufficient recognition among the consumers.
• The trade mark need not be registered in India.
• Further, the mark can be a well known trade mark even if there
are no goods of that trade mark in the Indian market.
• In other words, familiarity, even through advertisements is
adequate to constitute a trade mark as a well known trade mark.
• A mark to qualify as a well known trade mark , does not have to be
known to the public at large.
• It needs to be known only to that segment of the population that
buys/uses those goods.
• The concept of a well known trade mark has given very wide and
unconditional protection to foreign trade marks.
• A mark cannot be registered if it is to the detriment of a well
known trade name.
 OFFENCE
• Falsifying, that is, using an identical or
deceptively similar mark, has been made into an
offence.
• A police officer has been given the power to
search and seize without warrant.
• The punishment has been fixed at 6 to 3 years
imprisonment and fine at Rs.50,000 to 2 Lakh.
• The punishment for falsely representing a trade
mark as registered is punishable with
imprisonment upto 3 years, or with fine, or with
both.
 POWERS OF REGISTRAR
• Has all the powers of a civil court for the
purposes of receiving evidence, administering
oaths, enforcing the attendance of witnesses,
compelling the discovery and production of
documents and issuing commissions for the
examination of witnesses.
APPEALS TO APPELLATE BOARD (S.91)
• Any person aggrieved by an order or decision
of the Registrar under this Act, or the rules
thereunder may prefer an appeal to the
Appellate Board within 3 months from the
date on which the order or decision sought to
be appealed against is communicated.
• Jurisdiction of Courts in such matters has been
expressly barred under S.93.
 SUIT FOR INFRINGEMENT (S.134)
• Has to be instituted before the District Court
within the local limits of whose jurisdiction,
the person instituting the suit or proceeding
actually and voluntarily resides or carries on
business or personally works for gain.
• The reliefs which can be granted are:
a. Injunction
b. Damages
c. Account of profits
d. Delivery-up of the infringing labels and marks for
destruction or erasure.
 TRADE MARK RULES, 2002
• The First Schedule (Rule 11) – Fees
• The Second Schedule - List of Forms (TM-1 to TM-
74)
– TM-1 – Application for registration of a trade mark for
goods or services.
– TM-2 – Application for registration of a collective mark.
– TM-3–Application for registration of a certification trade
mark.
– TM-54 – Request for search
– TMA-1 (Rule 153) – Application for registration as a
trade mark agent.
• The Fourth Schedule – Classification of Goods
and Services – Name of the Classes (When a
trademark is registered, registration is given
only with regard to a particular category of
goods or services and, hence, protection can
be given only to these goods or services and
action of infringement would be taken)
 UNREGISTERED TRADEMARK –
PROTECTED BY PASSING OFF ACTION
• The passing off action depends upon the principle that
nobody has a right to represent his goods as the goods of
somebody.
• In other words a man is not to sell his goods or services under
the pretence that they are those of another person.
• Passing off is not defined in the Act. It is referred to in section
27(2), 134(1) (c) and 135. Section 27(2) states that the rights
of action against any person for passing off goods as the
goods of another person or the remedies in respect thereof.
Section 134(1) (c) refers to suits for passing off arising out of
the use of any trade mark. Section 135 specifies the remedies
available in respect of passing off arising from the use of a
trademark.
• The Trademark Act is providing protection to registered goods
and services, but the passing off action is providing protection
to unregistered goods and services.
 DIFFERENCE
INFRINGEMENT OF TRADEMARK PASSING OFF ACTION

Statutory remedy is available for The action for passing off is a common law
infringement. remedy.

It is necessary only to establish that the In the case of a passing off action, the need is
infringing mark is identical or deceptively to prove that the marks are identical or
similar to the registered mark. deceptively similar which is likely to deceive
or cause confusion and damage to the
business of the company.

When a trademark is registered, registration In a passing off action, the defendant’s goods
is given only with regard to a particular need not be the same, they may be related or
category of goods and hence protection can even different.
be given only to these goods and action of
infringement would be taken.