free online course on intellactual property rights

Online Introductory Course in

Intellectual Property Rights

Online Introductory Course in Intellectual Property Rights

© 2009 Asian School of Cyber Laws. - 1 -

Overview of IP related Legislation in India 1. PATENTS ................................................................................................................... 4

1.1 REGULATORY FRAMEWORK .................................................................................. 4 1.2 CONDITIONS OF PATENTABILITY ........................................................................... 4 1.3 NON-PATENTABLE INVENTIONS ............................................................................. 6 1.4 PROCEDURE TO OBTAIN A PATENT ....................................................................... 9 1.5 RIGHTS OF A PATENTEE ...................................................................................... 12 1.6 EXCEPTIONS TO THE RIGHTS OF A PATENTEE ..................................................... 17 1.7 PATENTS IN COMPUTER PROGRAMS .................................................................. 19 1.8 PATENT PROTECTION FOR MICRO-ORGANISMS ................................................. 19

2. PROTECTION OF PLANT VARIETIES ............................................................... 21

3. TRADEMARKS ........................................................................................................ 22

3.1 MEANING OF A TRADEMARK ................................................................................ 22 3.2 FUNCTIONS OF A TRADEMARK ............................................................................ 24 3.3 ESSENTIAL FEATURES OF A TRADEMARK ........................................................... 24 3.4 STATUTORY AUTHORITIES ................................................................................... 26 3.5 REGISTRATION OF A TRADEMARK ....................................................................... 27 3.6 LICENSING OF A TRADEMARK .............................................................................. 28 3.7 INFRINGEMENT OF A TRADEMARK ....................................................................... 30 3.8 PASSING OFF A TRADEMARK ............................................................................... 33 3.9 RELIEFS IN INFRINGEMENT AND PASSING OFF SUITS .......................................... 33

4. GEOGRAPHICAL INDICATORS .......................................................................... 35

4.1 MEANING OF GEOGRAPHICAL INDICATORS ......................................................... 35 4.2 GEOGRAPHICAL INDICATORS AND TRADEMARKS .............................................. 35 4.3 GEOGRAPHICAL INDICATORS AND COLLECTIVE MARKS ................................... 36 4.4 REGULATORY AUTHORITIES ............................................................................... 36 4.5 REGISTRATION OF GEOGRAPHICAL INDICATORS ............................................... 36 4.6 INFRINGEMENT OF GEOGRAPHICAL INDICATORS ............................................... 37

5. DESIGNS .................................................................................................................. 38

5.1 REGULATORY FRAMEWORK ................................................................................ 38 5.2 MEANING OF A DESIGN ........................................................................................ 38 5.3 REGISTRATION OF A DESIGN ............................................................................... 40 5.4 RIGHTS GRANTED TO A PROPRIETOR OF A DESIGN ............................................ 41 5.5 INFRINGEMENT OF A DESIGN ............................................................................... 42

6. COPYRIGHT ............................................................................................................ 44

6.1 PROTECTED WORKS ............................................................................................ 44 6.2 OWNERSHIP OF COPYRIGHT ................................................................................ 48 6.3 RIGHTS CONFERRED BY COPYRIGHT ................................................................... 50 6.4 LIMITATION ON RIGHTS OF COPYRIGHT OWNERS ................................................ 53 6.5 ASSIGNMENT OF COPYRIGHT .............................................................................. 55


- 2 - © 2009 Asian School of Cyber Laws.

Introduction To go home is to enter a place built & filled with human creativity & invention. From a carpet to a sofa, from the washing machine, the refrigerator and the telephone, to the music, the books, the paintings and family photographs, everything with which we live is a product of human creativity. These things are creations of the human mind and hence called intellectual property. The objective of this chapter is to introduce you to the fundamental concepts of intellectual property rights. Intellectual property is divided into two categories - Industrial Property and Copyright. Industrial property deals with patents, trademarks, geographical indicators, designs and semiconductors. Copyright covers literary, dramatic, artistic, musical, cinematographic films and sound recording.



The primary legislations regulating intellectual property in India are:

1) The Patents Act 1970. 2) The Trade Marks Act 1958. 3) The Geographical Indications of Goods (Registration and Protection)

Act 1999. 4) The Designs Act 2000. 5) The Semiconductor Integrated Circuits Layout-Design Act 2000. 6) The Copyright Act 1957. The concept of intellectual property can be traced back to the Byzantine Empire where monopolies were granted. For instance, in Greece a one year monopoly was given to cooks to exploit their recipes. A statutory legislation in the Senate of Venice provided exclusive privileges to people who invented any machine or process to speed up silk making. Thus, from intellectual property being totally alien to the nomadic community came an era where every new idea was given protection under the category of intellectual property rights. For a simple understanding of industrial property, let’s look at a refrigerator. The branded food products each carry a trademark assuring the consumer of a particular quality. Their special packaging (canned, vacuum-packed, key-opened containers or pop tops) can be both patented inventions as well as examples of industrial designs. The preservation processes can be patented and the mechanical elements of the refrigerator e.g. the parts & processes that keep food cold, are patented inventions. The aesthetic elements, the design of the drawers, shelves, the style & appearance of the temperature controls can be protected as industrial designs. The refrigerator’s operating manual as an original written text can be protected by copyright. Therefore, it can be said that inside a refrigerator is a world of intellectual property! Set out below, for your study, is a brief discussion on the various types of industrial property: 1) Patents.

2) Trademarks and Geographical Indication.

3) Designs.

4) Semiconductors.



1. Patents Inventions are protected by patents. An invention is a product or a process that provides a new way of doing something or offers a new technical solution to something.

Illustration Sanya develops a new vaccine to cure AIDS. She has made an invention.

Patent protection is usually provided for 20 years from the filing date of patent application. Once a patent expires, the protection ends & an invention enters the public domain available for commercial exploitation by others. This provides valuable information for other inventors as well as inspiration for future generations of researchers & inventors. This leads to further invention & innovation. Therefore, patents not only provide incentives to individuals by ensuring recognition & material reward but also help enrich the total body of technical knowledge in the world. 1.1 Regulatory framework

The Indian Patents Act 1970 and the Patent Rules 2003 regulate the grant, the operative period, the revocation and infringement of patents. In keeping with the requirements of the Trade Related Aspects of Intellectual Property Rights Agreement (TRIPS Agreement) the Patents Act 1970 was amended in 2005 and the Patent Rules 2003 were amended in 2005 and 2006. 1.2 Conditions of patentability For an invention to be patentable it must be:

1) a new product or process,

2) non-obvious, and

3) useful and capable of industrial application.

1.2.1 New product or process

The element of newness or novelty will depend upon the state of prior art. In other words, if a particular invention has already been published or used or is a part of the existing knowledge, it will no longer be considered to be novel.

Illustration Sameer sends invites and a write up on his invention to his friends to discuss the invention over coffee. The invention related to a medicine tablet with a composition similar to the Crocin tablet. After his friends approved of it he applied for a product patent on a tablet.



The patent was not granted as Sameer had discussed it with his friends and the composition of the tablet was already a part of existing knowledge. Hence, his invention lacked novelty.

Therefore, for an invention to be patentable, it must involve innovation which has not been anticipated by publication in any document or used in the country before filing the patent application. 1.2.2 Non-obvious

The invention must be non-obvious to a person skilled in the art to which the invention relates.

Illustration Pooja, an architect designs a simple dining table and applies for a patent. Although, the making of the dining table is non-obvious to a layman it is very simple and obvious to another architect of average skill. Hence, as the invention lacked non-obviousness it was rejected.

Therefore, for an invention to be patentable, it must involve innovation which has not been anticipated by publication in any document or used in the country or elsewhere in the world before filing the patent application.

1.2.3 Useful and capable of industrial application

The invention must be of beneficial use to mankind. An invention will not be patentable if it is new and non-obvious but not useful.

Illustration Tanya applies for a process and product patent on a water proof jacket which allows you to swim along with sharks without causing any injury. The water proof jacket emits ultrasound waves that ward off the sharks. Since, the invention satisfies the patentability conditions of novelty, non-obviousness and utility, a patent was granted to Tanya.

Summing up, it maybe said that an invention is a question of fact in each case. The end product of an invention is protected. An improvement on something known is a subject matter of a patent provided it results in a new product or process or a more useful or economical product or process.



1.3 Non-patentable inventions In spite of certain inventions satisfying the foregoing conditions of patentability, they cannot be patented under the Indian Patents Act 1970. Set out below for your reference is the list of non-patentable inventions: 1) An invention which is frivolous or contrary to well established natural

laws. Illustration Sameer applies for a patent on a “potion” that can make a person fly! Being contrary to natural principles, the “potion” cannot be patented.

2) An invention which is contrary to public order or morality or which

causes serious prejudice to human, animal, plant life, health or environment.

Illustration Tanya designs a device which makes pick pocketing easier, quicker and more efficient. Although, the invention satisfies the criteria of novelty and non-obviousness, it is against public order. Therefore, it cannot be patented.

3) The mere discovery of a scientific principle or the formulation of an

abstract theory or discovery of any living thing or non-living substance occurring in nature.

Illustration Sameer discovers the following scientific principle: Work = Force x Distance In Sameer’s words if you push a table across a certain distance, work is said to be done. Sameer will not get a patent for this scientific principle.

4) The mere discovery of a new form, property or use of a known

substance without any enhancement of the known efficacy of that substance.

Illustration Pooja discovers that turmeric powder has medicinal properties to cure blood pressure. As it is a mere discovery of a new property or new use of a known substance, Pooja will not get a patent for it.



5) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.

Illustration Sanya combines a few pieces of papaya, one teaspoon of curd, a few drops of honey and lemon juice to make a beauty pack. Since the beauty pack is an admixture of known substances it is not patentable.

6) The mere arrangement or re-arrangement or duplication of known

devices each functioning independently of one another in a known way.

Illustration Sanya is a chemical engineer and the director of Noodle Ltd. The company won a tender to set up an infrastructure project in Japan. For power generation it requires a more efficient distillation process. Accordingly, Sanya re-arranged the setting of the heat source, thermometer, cooling water, condenser, still pot and distillatory to get the desired effect. She will not get a patent on the re-arranged process of distillation.

7) A method of agriculture or horticulture.

Illustration Sanya comes up with an innovative technique of harvesting blackberries. She will not get a patent on her innovative farming technique.

8) Any process for the medicinal or other treatment of human beings or animals to render them free of disease or to increase their economic value or that of their products.

Illustration Tanya is a leading cardiologist. She develops a new artificial heart valve which does not require an open heart surgery to clear the blockage. She will not get a patent on her artificial heart valve.



9) Plants and animals in whole or any part thereof other than micro-organisms including seeds, varieties and species and essentially biological process for production or propagation of plants and animals.

Illustration Sanya, a wildlife journalist discovers a new mammal in Goa. She cannot get a patent on her discovery.

10) A mathematical or business method or a computer programme per se

or algorithms. 11) Literary, dramatic, musical or artistic work or any other aesthetic

creation including cinematographic works and television productions. Illustration Sanya has authored a book ‘Enigma’. She will not get a patent but a copyright in it.

12) A mere scheme or rule or method of performing mental act or method

of playing game. Illustration Tanya has come up with a new technique to crack sudoku games. She will not get a patent for that technique.

13) A presentation of information.

Illustration Sameer has made a comprehensive power point presentation on his new software ‘Easy Generate’. He will not have a patent on the presentation but can have a copyright in it.

14) Topography of integrated circuits.

Illustration Sameer, an electronics engineer arranges the lead wires, the electronic circuit and the insulating material to design an integrated circuit or chip for a mobile phone. He will not get a patent as the integrated circuit is a result of a mere arrangement or re-arrangement or duplication of known devices.



15) An invention which in effect is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component.

Illustration Pooja discovers that turmeric powder has medicinal properties to cure blood pressure. As use of turmeric is a part of traditional knowledge Pooja will not get a patent for it.

16) An invention relating to atomic energy.

Illustration As part of her research paper at the Indian Institute of Technology, Sanya developed a nuclear reactor. She will not be able to get a patent on it.

1.4 Procedure to obtain a patent The steps involved in obtaining a patent include:

1) Submission of application. 2) Publication and examination of application. 3) Opposition to grant of patent. 4) Granting of patent. 1.4.1 Submission of application

A patent application can be made by the true and first inventor of the invention or his assignee or a legal representative of a deceased person. The application procedure is based on the first to apply system. Simply put, the person who applies first gets the patent. In case, an inventor is first to invent but applies for a patent later, any time after another inventor has made the application, the first inventor will not be entitled to get a patent. Only one application can be made for one invention and it must be made in the prescribed form and filed in the Patent Office. If an application is made by an assignee of the true and first inventor, it must be accompanied by a document authenticating such assignment. The patent application must be accompanied by a patent specification. A patent specification is a technical document describing the invention. It may be provisional or complete. A provisional specification gives the initial description of an invention. On the other hand, the complete specification gives a detailed description of



the invention in order to enable a person skilled in the art to use the invention. The purpose of filing a specification is to make the invention available to the public on the expiry of the term of the patent. The patent application must be accompanied by a provisional specification. However, the complete specification must be filed within 12 months from the date of filing the application. If it is not filed, the application will be deemed to be abandoned. 1.4.2 Publication and examination of application

After the patent application has been submitted, it is open to the public for such period as maybe prescribed. On request of the applicant, the Controller may publish his application before the expiry of the prescribed period. On the expiry of the prescribed period, every application will be published except the following:

1) Where the application is one in which a secrecy direction is imposed.

2) Where the application is abandoned. 3) Where the application is withdrawn 3 months prior to the

prescribed period. When an application is published it must include the following:

1) Particulars of the date of application. 2) Number of application. 3) Name and address of the applicant. 4) An abstract.

After the publication of the application, the specifications and drawings can be made available to the public. On and from the date of application of patent and until the date of grant of patent, the applicant is entitled to all the rights and privileges as if a patent for invention had been granted on the date of publication of the application. The only thing that the applicant is not entitled to do is to institute any proceedings for infringement until the patent has been granted. The applicant can make a request for examination in respect for a patent application, the specification and other related documents. On such a request, the Controller General of Patents will refer the matter to the examiner for making a report on the following lines:



1) Whether the patent application, the specification and other related documents are in compliance with the Patents Act 1970 and the Patent Rules 2003.

2) Whether there are any lawful grounds of objection to the grant of patent.

3) The result of the investigation and any other related matters. To write out the report, the examiner makes a search in prior applications, specifications and other documents of patents already granted. This is to ascertain whether the same invention has already been published or claimed or is a subject matter of existing or expired patents. If on examination, any objections are raised by the patent examiner, it will be communicated to the applicant by the patent office. The objections generally relate to the drafting of the specification and claims, anticipation of any of the claims in any prior publication of specification or claims or prior publication of the invention in some book or journal. If the applicant fails to rectify the objections within 15 months from the date on which the first statement of objections is forwarded to the applicant, the application is deemed to be abandoned. The time period for making amendments may be extended up to a maximum of 18 months. If the objections are not rectified, the Controller may refuse to accept the application after hearing the applicant. 1.4.3 Opposition to grant of patent

Where an application for a patent is published but a patent is not yet granted, any person may in writing oppose the grant of the patent. A few grounds of opposition may be: 1) There maybe an incidence where there are 2 inventors working on an

invention and one of them files an application himself without including the other inventor. In such a case, the other inventor may object on the grounds that the invention was wrongfully obtained as he had invented a major portion of the invention.

2) There may be prior publication of the invention in India or elsewhere. 3) The invention may have been the subject matter of a prior claim in an

application which is prior in time to the applicant’s claim. 4) The invention does not satisfy the conditions of patentability. 5) The invention falls within the category of non-patentable inventions. 6) The complete specification does not describe the invention in detail. The Controller on hearing the complainant may dispose of the



representation in the prescribed manner. Any person may raise the foregoing oppositions before the Controller General of Patents any time after the grant of the patent but before the expiry of one year from the date of publication of grant of patent. In such a case, the Controller will notify the patentee and constitute an Opposition Board to examine the opposition and submit its recommendations to the Controller. The Opposition Board after hearing the patentee and the complainant will submit its recommendations to the Controller. Accordingly, the Controller may maintain, amend or revoke the patent. 1.4.4 Granting of patent

Where the patent application is in order the patent will be granted expeditiously with the seal of the patent office. The date on which the patent is granted will be entered in the register. Thereafter, the Controller will publish the fact that the patent has been granted and it will be open for public inspection. The patent is granted for a term of 20 years from the date of filing of the patent application. 1.5 Rights of a patentee The rights conferred on a patentee are:

1) Exploitation of the patent. 2) Licensing the patent to another. 3) Assigning a patent to another. 4) Surrendering the patent. 5) Suing for infringement of the patent. 1.5.1 Exploitation of the patent

The objective of applying for a patent is to avail of an exclusive right to use the invention. In other words, a patent will give the patentee the exclusive right to manufacture and market the invented product. If an inventor does not apply for a patent, he still has the right to manufacture and market his product. But he will not be able to exclude others from producing and marketing the same product. Therefore, to exclude others from exercising such rights an inventor must file for a patent and be granted a patent as well.

Illustration 1 Sanya got a patent for her revolutionary bicycle design. This means that she has an exclusive right to manufacture and market the vaccine for 20 years.



Illustration 2 Sameer developed a process by virtue of which the main component of Aspirin, namely, Acetyl Salicyclic Acid can be produced 10 times faster and gives a greater yield than is currently possible. Sameer does not apply for a process patent. Therefore, he does not have an exclusive right to exploit the invention.

1.5.2 Licensing the patent to another

A patentee can transfer his patent to another person. This is done through a license agreement permitting the licensee to manufacture, use or sell the invention. The license may be voluntary, statutory or exclusive in nature. In a voluntary license, the terms and conditions are settled between the patentee and the licensee. In statutory licensing, the Controller and the Central Government play an important role. An exclusive license confers all the rights on the licensee excluding all other persons.

Illustration Sanya has a product patent for a bread maker which can simultaneously knead the dough, bake the bread and make sandwiches out of them. Sanya grants a voluntary license to Tanya to manufacture a part of the bread maker on payment of an annual royalty. As the bread maker is not available to the public at a reasonable price the Central Government obtains a statutory license (compulsory license) on the bread maker on compensating Sanya. Sanya grants Sameer an exclusive license to market the bread maker in the whole of Asia.

1.5.3 Assigning a patent to another

Assignment means the transfer by a party of all of its rights or interest in the property. A license merely confers a personal privilege to do some particular act which the licensee can perform. There is no transfer of interest in a license.

Illustration Tanya has developed a machine which cuts, chisels and polishes wood to give it a finished look.



She has a patent on the process as well as the product. Tanya has exploited her invention for 10 years. For the remaining tenure she has assigned her invention to Sanya. Sanya can now use, manufacture and market the invention on an exclusive basis.

There can be a legal assignment, an equitable assignment or a mortgage. A legal assignment is done through an agreement and is duly registered with the Controller. After such an assignment, the legal assignee can have his name entered in the register of patents and can thereafter exercise all the rights conferred on him by the proprietor of the patent. In an equitable assignment, the assignment is through a letter and not a duly registered agreement. Also, the legal assignee’s name is not entered in the register of patents as a proprietor of the patent. He can only have a notice of his interest entered in the register. A mortgage is a document transferring the patent rights to the mortgagee with a view to secure the payment of a specified sum of money. The patentee is entitled to have the patent re-transferred to him on refund of the money to the mortgagee. The mortgagee can have his name entered in the register as a mortgagee and not as a proprietor. 1.5.4 Surrendering the patent

A patentee can surrender his patent by giving notice to the Controller. On receipt of such notice, the Controller is required to publish such offer and notify every interested party. Any interested party may object to the surrender. The Controller on hearing both the parties may accept the offer of surrender and revoke the patent.

Illustration Sameer has a process patent on the cushioning and technology used in basketball shoes. He has exploited the patent for over 12 years. With technology evolving every day, Sameer no longer wants to retain his patent. Accordingly, he surrenders his patent by giving notice to the Controller.

1.5.5 Suing for infringement of the patent

A patent confers the exclusive right on the patentee to make, distribute or sell the invention in India. An infringement occurs when any of these rights are violated.



Infringement maybe in the form of:

1. colourable imitation of an invention, 2. immaterial variations in the invention or 3. by using mechanical equivalents in the invention.

In the case of colourable or immaterial variations amounting to infringement, the infringer makes slight modification in the process or product but in fact takes in substance the essential features of the patentee’s invention.

Illustration Sanya has a process and product patent on her drug ‘MetaPhlor’ with the following composition: Paracetamol (500 mg) + Phenylpropane (25 mg) + Caffeine (32 mg) + Sunset Yellow FCF. The essential components of the drug being Paracetamol and Caffeine. Pooja uses the following composition to develop another drug ‘BioSphix’: Water (100 mg) Paracetamol (350 mg) + Phenylpropane (10 mg) + Caffeine (35 mg) + Q.S Colour. Pooja does not get a patent on her drug BioSphix as she has taken the essential components of Sanya’s drug Metaphlor with minor variations. Accordingly, it maybe said that Pooja is guilty of colourable imitation of Sanya’s invention.

Infringement by mechanical equivalents would occur when one uses mere substitutes for those features so as to get the same result for the same purpose as obtained by the patentee.

Illustration Sanya has a process patent on the manner of improving pavement lights. She has constructed the lamps in such a manner that the light from the lamps may be diverted at a particular angle by using a single piece of moulded glass. Sameer also works on the same invention and merely substitutes the single piece with series of pieces of moulded glass to get the desired angle.



Sameer will not get a patent on his invention as it is an invention using mechanical equivalents.

An infringement suit can be instituted in the District Court. In certain cases, it may be instituted in the High Court. For instance, where a suit has been filed in the District Court and the defendants make a counter claim for revocation of the patent, the suit will be transferred to the High Court. The following persons can file a suit for infringement within 3 years from the date of infringement. The suit can be filed against the infringer, his agents or principals or the consignees of the infringing article:

1) A patentee. 2) An exclusive licensee if the license is registered. 3) A compulsory licensee when the patentee refuses or neglects to

institute proceedings. 4) Licensees other than the foregoing, depending upon the terms

and conditions of the license. 5) An assignee.

The onus is on the plaintiff to establish infringement. A few of the defenses that a defendant may set up are:

1) That the plaintiff is not entitled to sue for infringement. In other words, the plaintiff is not a patentee, registered assignee or exclusive licensee.

2) That there has been no infringement or any threat of infringement.

In other words, the defendant may plead that he had a license to use the patent.

3) That the plaintiff is estopped or barred from denying his previous

conduct. For instance, where the plaintiff has assigned his patent to the defendant through a registered agreement, he is estopped or barred from alleging that the defendant has infringed his patent.

By instituting a suit for infringement the reliefs available to the patentee are:

1) injunction,

2) damages or account of profits.



Injunction

An injunction is an order of the court prohibiting someone from doing some specified act. Generally, it is a preventive and protective remedy aimed at preventing future wrongs. Injunctions are of 2 types:

1) temporary or interlocutory injunctions,

2) permanent injunctions. A temporary or interlocutory injunction maybe granted at any time during the proceedings of the suit. It is an injunction to restrain the defendant from committing and continuing the acts of alleged infringement. Whereas, a permanent injunction is granted at the termination of the trial and it will remain in force until the remaining term of the patent. Damages or account of profits

Every plaintiff is entitled to the relief of damages or account of profits. But both the reliefs cannot be granted together. Damages are awarded to compensate for the loss or injury suffered by the plaintiff. The amount of damages awarded must be such that it puts the plaintiff in the same position as he would have been if he had not encountered the wrong. Account of profits is that part of the profits which can be attributed to the use of the patentee’s invention by the infringer. 1.6 Exceptions to the rights of a patentee The foregoing rights of the patentee are subject to the following exceptions: 1) Government use of patent. 2) Compulsory licenses. 3) Use of inventions for defense purposes. 4) Revocation for non-working of patents. 5) Limitation on restored patents. 1.6.1 Government use of patent

At any time after the patent application is filed or the patent is granted, the Central Government may use the invention for government purposes. The right to make use of the invention also includes the right to sell the goods. If the invention appears on a government record or tests or trials have been performed by the government, then it will not be liable to pay any royalty or remuneration to the applicant. On the other hand, if the invention does not appear on any government records, the government will be liable to compensate the patentee on mutually agreed terms and conditions.



To enable the government to make use of the invention, it must notify the patentee of such use of the invention. If the patentee has granted an exclusive license of the patent or assigned his patent on payment of royalty, the Government is required to give notice to such licensee and assignor as well.

Illustration Sanya developed the drug ‘MetaPhlor’ to preempt common cold. Common cold being a common disease, the Central Government acquired the patent on the drug from Sanya by compensating her. Thereafter, the Central Government distributed the drug in every dispensary, hospital or medical institution.

1.6.2 Compulsory licenses

Any person may make an application to the Controller for grant of a compulsory license on a patent after the expiration of 3 years from the date of grant of patent on the following grounds: 1) The requirements of the public with respect to the patented invention

have not been satisfied. For instance, since the patentee refused to grant a license to a person, his existing trade and its development had suffered.

2) The patented invention is not available to the public at reasonably

affordable price. 3) The patented invention cannot be worked in the territory of India.

Illustration Sanya has a product patent for a bread maker which can simultaneously knead the dough, bake the bread and make sandwiches out of them. As the bread maker is not available to the public at a reasonable price the Central Government obtains a statutory license (compulsory license) on the bread maker after compensating Sanya.

1.6.3 Use of inventions for defense purposes

If the Central Government notifies to the Controller that a particular invention set out in a patent application can be used for defense purposes, then the Controller is required to prohibit or restrict the publication of such invention. Thereafter, the Government may purchase the invention and if the patent applicant suffers any hardship it may pay compensation the applicant.



Illustration Pooja has developed a poisonous gas and applied for a patent. The Central Government notifies the Controller that the poisonous gas can be used for defense purposes. Accordingly, Pooja is compensated by the Central Government and not granted her patent on the poisonous gas.

1.6.4 Revocation for non-working of patents

If the patented invention cannot be worked in India on a commercial scale to an adequate extent it may be revoked. 1.6.5 Limitation on restored patents

A patent may lapse on non-payment of renewal fee. During the lapsed period persons other than the patentee may use the invention. Accordingly, after the lapsed patent is restored the Controller may impose conditions for protection or compensation to such other persons. Also, the patentee loses his right to sue for infringement of a patent committed by another person during the lapsed period.

1.7 Patents in Computer Programs The Indian Patents Act 1970 does not set out any protection for computer programs. Computer programs fall within the ambit of literary works and accordingly are protected under the Copyright Act 1958. Although, in the USA, computer programs are patentable inventions, in India computer programs may be patentable along with hardware. 1.8 Patent Protection for Micro-Organisms With the advent of molecular biology, genetics, bio-physics, cell biology and immunology there has been a tremendous growth in modern technology. Living organisms including plants and animal cells are used in such technological research activities. For instance, in the year 1980 the Supreme Court of United States had granted a patent to a genetically engineered living organism. The invention belonged to Dr. Ananda Chakraborty and consisted of a genetically engineered bacterium that was capable of degrading oil spills. This grant of patent for engineered micro-organism meant grant of product status to that micro-organism. Thus, came an era where patents were granted to technologies using living organisms. This was governed by the Deposit Treaty 1977. In 1977 the Deposit Treaty had 38 members and India too had deposited its ratification and accession instruments with the World Intellectual Property Board.



As per the Deposit Treaty, where an invention involves micro-organism or use of micro-organism, disclosure is not possible in writing. Hence, it can only be effected by the deposit of a sample of the micro-organism with the specialized institution. In order to avoid such deposit in every country, the Budapest Treaty provides that the deposit of the micro-organism maybe made only with the International Depository Authority. This will save fees and cost associated with such deposit.



2. Protection of Plant Varieties

In order to protect and develop new plant varieties, the rights of farmers and plant breeders the Protection of Plant Varieties and Farmers’ Rights Act 2001 was enacted. Under this Act, every new extant variety or farmers’ variety that conforms to the requirements of novelty, uniformity and stability can be registered with the Plant Varieties and Farmers Rights Authority. A certificate of registration for a variety will confer an exclusive right on the breeder or his successor, agent or licensee to produce, sell, market, distribute, import or export the variety. In case of an extant variety, if the breeder or his successor does not establish his right, the Central or State Government, as the case maybe, will be deemed to be the owner of the right. Any person may use such variety to conduct experiments or research or create other varieties provided he obtains the prior permission of the breeder of the authorised variety. If a person other than the breeder of a variety, his registered agent or licensee sells, exports, imports or produces such variety without the permission of its breeder he will be said to have infringed the rights of the breeder. Also, if a person other than the breeder of a variety, his registered agent or licensee sells, exports, imports or produces a variety which is deceptively similar to a registered variety and may cause confusion in the minds of the public he will be said to have infringed the rights of the breeder. The registered breeder may file a suit for infringement in the district court and seek an injunction, damages or accounts of profit. A register called the National Register of Plant Varieties is kept at the Head Office of the Registry in which names of all the registered plant varieties, their seeds and other propagating material, with the names and addresses of their respective breeders and their rights are entered. Summing up, it maybe said that this Act was enacted to recognize and protect the rights of farmers in respect of their contribution made in conserving, improving and making available plant genetic resources for the development of new plant varieties. This in turn stimulated investment in research and development and facilitates the growth of the seed industry.



3. Trademarks Pooja goes shopping for weekly provisions. She picks up an attractive ‘Koor Koore’ packet of chips presuming it to be the standard Pepsi Co. product ‘Kur Kure’. Little does she notice the spelling change on the packet of chips. When she opens the packet, she discovers stale sub-standard chips. Has Pooja been duped? Does Pepsi Co. suffer a loss of reputation? Yes, a consumer is said to be duped if he buys a commodity presuming it to have originated from a certain identified source, when actually it is not. Yes, the reputation of the trader also takes a beating. Therefore, in order to save the interests of the consumer and the trader it is said that a definite symbol which marks out the origin of goods from a definite trade source must be attached to the goods. Such a symbol is called a trademark. 3.1 Meaning of a trademark A trademark is a visual representation attached to goods for the purpose of indicating their trade origin. Section 2(1)(m) of the Trade Marks Act 1999 defines a mark as:

Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, shape of goods, packaging or combination of colours or any combination thereof.

Section 2(1)(zb) of the Trade Marks Act 1999 defines a trademark as:

A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging & combination of colours. Illustration 1 Sanya has set up a company Noodle Ltd to carry on the business of developing, managing and marketing software products. She requests her friend Sameer, a website designer to create a logo for Noodle Ltd. Sameer in keeping with the business of Noodle Ltd designs a logo in the shape of a



computer mouse coloured navy blue and orange for Noodle Ltd. He also adds the tag line ‘Click and Buy’ below the computer mouse. Therefore, the company’s trademark now is the name Noodle Ltd, the computer mouse coloured navy blue and orange and the tag line ‘Click and Buy’. Illustration 2 Tanya also carries on the business of developing, managing and marketing software products through a company named Moodle Ltd. The trademark of Moodle Ltd includes a silver @ symbol and the name Moodle Ltd written in black with a red background. Sanya and Tanya carry on the same business of developing, managing and marketing software products. It can be argued that the consumers may be confused as to the origin of the goods bought from the two companies. But as the trademarks of Noodle Ltd and Moodle Ltd are so different, consumers will be able to distinguish the products of the two companies.

The definition of a trademark includes the concept of service. In other words, a trademark not only distinguishes goods but also services. Section 2(1)(z) defines service as:

Service of any description which is made available to potential users, and includes the provision of services in connection with business of any industrial or commercial matters such as 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 or advertising.



3.2 Functions of a trademark A trademark entails the following functions:

1) It identifies the product and its origin. 2) It guarantees its quality. 3) It advertises the product. 4) It creates an image of the product in the mind of the consumer. For instance, let us look at the company McDonald’s. All of us identify with “fillet-o-fish” burger or the “McAloo tikki” burger and know that it belongs to an American fast food chain called McDonald’s. While eating the burgers we are assured of a particular quality and know that it is different from a KFC zinger burger. The trademark of McDonald’s i.e. the yellow M has created an image in our minds and therefore serves as an advertising tool for McDonald’s. We can also look at companies like Levis, Pepe or Lee. Their brand value is so strong that customers are easily able to identify their trademarks and are guaranteed a particular quality. 3.3 Essential features of a trademark A trademark must have the following essential features:

1) It must be distinctive. Distinctiveness can be inherent or acquired. Inherent distinctiveness means that it is distinct in itself and no one can justifiably claim its use. Acquired distinctiveness means that it has acquired distinctiveness through use.

Inherent distinctiveness can be established by the use of invented words. For instance, invented words like RIN for washing powder, SONY and AKAI for electronics, YASHIKA and KODAK for cameras are inherently distinctive. Whereas, surnames or personal names like CADBURY for chocolates or TATAS for fast moving consumer goods have acquired distinctiveness through use. Generally, surnames and personal names are common and frequently occurring and hence cannot be registered as trademarks. From a trademark perspective, this characteristic makes surnames and personal names neither distinctive nor capable of distinguishing the goods of one person from that of another bearing the same surname or personal name. As seen above, an exception maybe created in cases where extensive use of the surname or personal name has made it acquire distinctiveness or it is an unusual surname or personal name.

2) It must be a non-descriptive word. In other words, it can be a word

other than an invented word whether it is already existing or newly coined. For instance, an existing dictionary word like COME can be prefixed or suffixed to become a new word like COMEX for nylon socks.



What is important is that, the non-descriptive word must be distinctive and not have any direct reference to the quality or character of the goods. In considering whether a mark has reference to the character or quality of goods, the mark must be looked at, not on its grammatical significance, but as it would represent itself to the public at large.

Illustration Sameer carries on the business of manufacturing groundnut oil through his company called RASOI. In keeping with the competitive business environment, Sameer applies to register his trademark RASOI. The trademark is refused registration on the following grounds: 1. To the general public the word ‘RASOI’

means cooking. The normal use of groundnut oil is cooking. Thus, the intended use of the commodity undoubtedly forms a part of its character.

2. Accordingly, to the people in the trade

as well as consumers, the word RASOI would imply a direct reference to the character of the goods.

3) It must not be a geographical name of a place. Geographical names

of places are prohibited from being registered as trade marks. This is because the purpose of a trademark is to denote the origin of goods from a particular trader. In case of a geographical name, the name would lead the consumer to believe that the goods originate from that place thus causing confusion and even deception.

However, the names of geographical places like rivers and mountains can be registered as trademarks if there is a clear evidence of distinctiveness. In one instance, in spite of sales and publicity over 3 years, the name SIMLA was refused registration for manufactured tobacco. This is because Simla is a well known geographical name.

4) It must satisfy the registration requirements. 5) It must not belong to the class of marks prohibited from

registration. The class of marks prohibited from registration include:

a) A mark prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950.



b) A mark which is of such a nature as is likely to deceive the public and cause confusion.

c) A mark which contains or comprises of any matter likely to hurt

religious sentiments of any class of citizens in India.

d) A mark which contains scandalous or obscene matter. 3.4 Statutory authorities The statutory authority under the Trade Marks Act 1958 is the Controller General of Patents, Designs and Trade Marks. A Joint Registrar, Deputy Registrars, Assistant Registrars, Examiners of Trade Marks and ministerial staff assist the Controller General in discharge of his functions. The Joint, Deputy and Assistant Registrars exercise powers that the Registrar delegates to them. A Trade Mark Registry set up under the Trade Marks Act 1958 is chaired by the Registrar. He is responsible for the registration of trademarks, settling opposition proceedings and other related matters. The Trade Marks Registry has its head office at Mumbai and branch offices at Kolkata, Delhi, Chennai and Ahmedabad. The jurisdiction of all the offices is territorially demarcated on a zonal basis. The trade mark applications for registration are required to be filed in the office within whose territorial jurisdiction the applicants’ principal place of business is situated. Principal place of business means as under:

1) Where a person carries on business in the goods for which the trade mark is to be registered then the principal place of business is:

a) If the business is carried on in India in only one place then that

place. b) If the business is carried on in more than one place then the place

mentioned by the applicant himself as the principal place of business.

2) Where a person does not carry on any business in India but has a

place of residence then such a place of residence. The opposition or rectification applications are to be filed in the office where the registration applications are filed. However, all the applications for registration are processed at the Head Office. In terms of the Trade Marks Act 1999, a record of all registered trademarks with names, addresses and descriptions of the proprietors and notifications of assignments and transmissions must be maintained at the Head Office of the Trade Mark Registry. A copy of such a record must be kept at every branch office of the Trade Mark Registry. This record is known as the Register of Trade Marks.



The Central Government set up the Intellectual Property Appellate Board in the year 2003. It comprises of a Chairman, Vice-Chairman and other members. The Central Government has specified Ahmedabad, Chennai, Delhi, Mumbai and Kolkata as the places at which a Bench of the Intellectual Property Appellate Board will sit. Each Bench consists of one judicial member and one technical member. If any person is aggrieved by an order or decision of the Registrar he may appeal to the Appellate Board within 3 months from the date on which the order of the Registrar is communicated to such person. 3.5 Registration of a trademark Any person who claims to be the proprietor of a trade mark can apply for registration of the mark. Based on the requirements of a proprietor an application is required to be filed in the office of the Trade Mark Registrar within whose territorial limits the applicant carries on its principal place of business. In case of joint applicants, the applicant whose name features first on the application, his principal place of business will be considered. Every application is made for a particular class as per the classification of goods and services set out in the Trade Marks Act 1958. For instance, Form No. TM-1 is required to be filed where the proprietor makes an application to register a trademark for a specification of goods or services included in one class.

Illustration Tanya is an interior designer. She wants to register her trademark for the company Interno Moda which makes furniture. To register her trademark ‘Interno Moda’ Tanya will be required to file an application in Form TM-1 under class 20 on payment of Rs. 2500.

Form No. TM-51 is required to be filed where a proprietor wants to file a single application for registration of a trade mark for different classes of goods or services.

Illustration Sanya is a business entrepreneur. She has set up a hang out joint called ‘Chillax’. Chillax serves a variety of coffee, fruit juice and other non-alcoholic drinks. To register her trademark ‘Chillax,’ Sanya will be required to file an application in Form TM-51 under classes 30 and 32 on payment of Rs. 5000 (Rs. 2500 for each class).



The application is required to be filed in triplicate and must contain a representation of the mark in the space provided in the application form. Five additional representations must be provided with the form. In case, a particular trademark cannot be represented the Trade Mark Office may accept a specimen or copy of the trade mark. Once an application is submitted it may be accepted as it is, accepted subject to certain amendments, initially accepted but later found to be accepted in error or it may be rejected. Thus, an application may be accepted completely or accepted subject to amendments. Soon after acceptance of the application, the application is advertised in the Trade Marks Journal. Any person may within 3 months from the date of advertisement or a maximum of 4 months oppose the registration by giving notice in writing to the Registrar. The Registrar will serve a copy of the notice of opposition on the applicant for registration. Within 2 months of receipt of such notice of opposition, the applicant is required to make his representation before the Registrar. Or else, his application will be deemed to be abandoned. Thereafter, the Registrar will call upon both the parties with their evidence. If the decision goes in favour of the applicant, then the trade mark is registered in the name of the proprietor. If the decision goes against the applicant, he may appeal to the High Court. The High Court may uphold, modify or strike down the decision of the Registrar. The trademark will be registered for a period of 10 years. It is renewable for another period of 10 years from the date of expiration of the original registration or the last renewal of registration on payment of the renewal fees. 3.6 Licensing of a trademark A person other than the registered proprietor of the trademark can be registered as the registered user of a trademark. All that is required to be done is that the registered proprietor and the proposed registered user have to: 1) Jointly apply in the prescribed manner to the Registrar. 2) Enclose with the application, the written agreement between them

along with an affidavit of the registered proprietor or a person authorised by him. The affidavit will provide particulars of the relationship between them.

3) If the Registrar requires any further documents or evidence, the same

must be supplied.



4) Upon being satisfied about the compliance of the above stipulations the Registrar will register the proposed registered user.

5) The Registrar will then issue notice in the prescribed manner of the

registered user to other registered users of the trade mark. 6) A registered user may institute proceedings for infringement in his

own name as if he were the registered proprietor. Illustration Sanya is a business entrepreneur. She has set up her parent company Noodle Ltd in Delaware, USA.

Noodle Ltd has branch offices in New York, United Kingdom, Switzerland, Singapore and China. Sanya has entered into agreements with each of her branch offices and permitted them to use the trademark Noodle Ltd in business transactions. Sanya is the registered proprietor of the trademark and each of the representatives Tanya, Sameer, Pooja, Sameera and Siddharth are the registered users of the mark.

Collective marks are those which distinguish the goods or services of members of an association of persons from the goods or services of others.

Illustration Sanya, Tanya, Sameer, Pooja, Siddharth and Sameera are an association of lawyers. They represent themselves with a black lawyers’ collar and tie. This mark is known as a collective mark.

Certification marks are a special species of trade mark whose function is not to indicate the trade origin as an ordinary trade mark is required to do. Instead, it is to indicate that the goods bearing the marks have been certified by the proprietor of the mark to be of certain characteristics like geographical origin, ingredients or quality. For example, the mark AGMARK used for spices & food items is a certification mark certifying the quality of food items covered by the mark AGMARK.



3.7 Infringement of a trademark Infringement of a trade mark occurs if a person other than the registered proprietor in the course of trade, in relation to the same goods or services for which the mark is registered uses the same mark or a deceptively similar mark.

Illustration Pepsi Co. manufactures, markets, sells and distributes non-alcoholic beverages like Pepsi and 7up under its brand name Pepsi and the white, blue and red logo. A company namely, Tipsi Co. starts manufacturing, marketing, selling and distributing non-alcoholic beverages like Tipsi and 8up under its brand name Tipsi and a white, blue and red logo . It maybe said that Tipsi Co. by using a deceptively similar mark for the same goods (non-alcoholic beverages) has infringed Pepsi Co.’s trademark.

Simply put, infringement occurs in the following cases:

1) when an infringer takes the essential features of the mark or takes the whole of the mark and makes a few additions or alterations,

2) when the infringer uses such a mark in the regular course of

business, 3) when the infringer prints the infringing mark in advertisements,

invoices or bills. A few of the common forms of infringement are:

1) using a deceptively similar mark, 2) taking substantial features of the mark, 3) addition. 3.7.1 Using a Deceptively Similar Mark

The most common type of deception or confusion is with respect to goods. A consumer may buy certain goods assuming it to be of a particular brand which in reality it is not.

Illustration Sanya buys a Burberry perfume at a duty free shop. On using it she realizes it to be fake. She has been duped.



Another instance may be deception or confusion as to trade origin. A consumer looking at a mark may buy the goods presuming it to come from the same source as some other goods bearing a similar mark with which he is familiar.

Illustration Sanya sells cosmetic products under the registered trade mark ‘LAKME’. Tanya also sells cosmetic products using the trade mark ‘LIKEME’. Pooja buys cosmetics under the trademark ‘LIKEME’ owing to the striking resemblance in both the trademarks. It may be said that Pooja has been duped.

There maybe deception or confusion with respect to trade connection as well. A consumer may look at a particular trade mark and think that it is different from the brand he is aware of. But the similarity may make him believe that the two are connected in some way.

Illustration Sameer is a reputed manufacturer of dental cream COLGATE. Pooja uses the mark COLLEGIATE which is phonetically similar to COLGATE with deceptively similar letters in white with a red background. Tanya assumes that COLGATE and COLLEGIATE are related brands. She purchases the dental cream under the trademark COLLEGIATE. She has been duped.

3.7.2 Taking Substantial Features of the Mark

A trademark is said to be infringed by another trader if, even without using the whole of the mark in connection with his goods, he uses one or more of the essential features.

Illustration Pepsi is known for its Fido Dido mark on the non-alcoholic beverage 7up. Sameer launches a new energy drink in the market with the Fido Dido mark but changes the colour combination from the green and the white to a blue, red and white. It may be said that by taking the substantial feature of the 7up mark Sameer has infringed Pepsi’s trademark.



3.7.3 Addition

Additions of extraneous matter or inconspicuous additions amount to infringement. Such additions indicate a fraudulent intention and would only be visible on careful scrutiny which is not expected of an ordinary customer.

Illustration Pooja goes shopping for weekly provisions. She picks up an attractive ‘Koor Koore’ packet of chips presuming it to be the standard Pepsi Co. product ‘Kur Kure’. Little does she notice the inconspicuous spelling change on the packet of chips. The Koor Koore trademark will be held to be an infringing mark which has duped Pooja.

An infringement suit can be instituted in the District Court. The suit can be filed against the infringer and his agents. In case of a master-servant relationship, the master will be liable. The following persons can file a suit for infringement within 3 years from the date of infringement: 1) a registered proprietor of the trade mark or his legal successor. 2) a registered user. 3) an applicant for registration of a trademark. 4) any one of the joint proprietors of the trademark. The pertinent issues in a suit for infringement are:

1) whether the plaintiff is entitled to file the suit and claim relief, 2) whether the use of the infringing trade mark actually amounts to

infringement, 3) whether the plaintiff is entitled to any interlocutory relief, 4) whether there have been actual instances of deception and confusion

amongst the public. A few of the defenses that a defendant may set up are:

1) that the plaintiff is not entitled to sue for infringement, 2) that there has been no infringement or any threat of infringement, 3) that the defendant’s right to use the contested mark arises out of

concurrent registration,



4) that the defendant started using the mark before the plaintiff, 5) that the words used in the disputed mark are within the public domain

and hence the plaintiff cannot claim exclusivity. However, the defendant cannot plead that he had adopted the plaintiff’s mark without the knowledge of the existence of the plaintiff’s mark. 3.8 Passing off a trademark Passing off occurs when one trader attempts to pass off his goods by misrepresenting them. The trader does this to make the consumers believe that his goods are the same as those of another trader.

Illustration Pooja goes shopping for weekly provisions. She loves snacking on Pepsi Co.’s Kur Kure. While shopping she picks up an attractive ‘Koor Koore’ packet of chips presuming it to be the standard Pepsi Co. product ‘Kur Kure’. Little does she notice the inconspicuous spelling change on the packet of chips. When she opens the packet, she discovers stale sub-standard chips. The Koor Koore trademark will be held to be an infringing mark as it is designed to pass off as the Kur Kure mark.

The action against passing off also lies in instituting a suit. Accordingly, trade practice indicates that a passing off action is often combined with a suit for infringement. 3.9 Reliefs in infringement and passing off suits A proprietor of a trade mark has an exclusive right to use the trade mark in relation to the goods or services in respect of which the trade mark is obtained. In addition to this exclusive right, the proprietor of a trade mark has a right to file a suit for infringement of his right and obtain the following reliefs: 1) injunction. 2) damages or account of profits. 3) order for delivery-up of infringing labels and marks for destruction.



Injunction

An injunction is an order of the court prohibiting someone from doing some specified act. Generally, it is a preventive and protective remedy aimed at preventing future wrongs. Injunctions are of 2 types: 1) temporary or interlocutory injunctions. 2) permanent injunctions. A temporary or interlocutory injunction maybe granted at any time during the proceedings of the suit. It is an injunction to restrain the defendant from committing and continuing the acts of alleged infringement. Whereas, a permanent injunction is granted at the termination of the trial. Damages or account of profits

Every plaintiff is entitled to the relief of damages or account of profits. But both the reliefs cannot be granted together. Damages are awarded to compensate for the loss or injury suffered by the plaintiff. The amount of damages awarded must be such that it puts the plaintiff in the same position as he would have been if he had not encountered the wrong. Account of profits Thus is that part of the profits which can be attributed to the misuse of the intellectual property of the rightful owner.



4. Geographical indicators A need had arisen to protect agricultural, natural or manufactured goods, handicraft and industry goods like food stuff. The primary reasons for protection were to prevent unauthorized use of geographical indicators as well as promote goods bearing the Indian geographical indicators in the export market. As per the TRIPS Agreement, other countries were under no obligation to extend protection unless a geographical indicator is protected in the country of its origin. But, if India imported goods from a particular country and that country provided such protection then India would be required to extend the protection to that country as well. Accordingly, the Geographical Indications of Goods (Registration and Protection) Act 1999 was introduced and it came into effect in 2003. The Geographical Indications of Goods (Registration and Protection) Rules 2002 were published in the year 2002. 4.1 Meaning of geographical indicators A geographical indication is a sign used on goods that have a specific geographical origin. The goods (agricultural, natural or manufactured goods, handicraft and industry goods like food stuff) possess qualities or a reputation that are due to that place of origin. Since these qualities depend on the geographical place of production, a specific link exists between the products and their place of origin. For example, ‘Darjeeling’ for tea of Darjeeling origin, ‘Kanjeevaram silk’ denotes the product from Kanjeepuram in South India, ‘Kolhapuri chappals’ from Kolhapur and ‘Alphonso mangoes’ from Mumbai. 4.2 Geographical indicators and Trademarks Geographical indicators denote that the product originates from a particular place and the product has certain qualities or a reputation that are due to that place of origin. On the other hand, a trademark is a mark used by an enterprise, in relation to goods or services, to distinguish them from others. A geographical indicator represents a common heritage of the community of producers in the geographical region or locality, whose products all share the same qualities and characteristics. Accordingly, the geographical indicator maybe used by all the producers engaged in their production in that region or locality. On the other hand, a trademark is proprietary in nature with an exclusive right to the owner to use the mark.



4.3 Geographical Indicators and Collective Marks As stated earlier, geographical indicators denote that the product originates from a particular place and the product has certain qualities or a reputation that are due to that place of origin. Whereas, a collective mark is a mark which belongs to a particular association of persons and the use thereof is reserved only for members of the association. 4.4 Regulatory Authorities The two regulatory authorities under the Act are the Registrar and the Appellate Board. The Controller General of Patents, Designs and Trademarks is to be the Registrar of Geographical Indicators. The Central Government appoints certain officers to discharge certain functions under the superintendence of the Registrar. The Central Government also established the Geographical Indications Registry with its head office at Chennai to carry out the functions of registration, opposition, rectification and other related activities. The Appellate Board will exercise the same powers and functions as the Intellectual Property Appellate Board set up under the Trade Marks Act 1999. 4.5 Registration of Geographical Indicators An application for registration of a geographical indicator may be made by any association of persons or producers or an organization or authority which has been established under the law and who represent the interests of the producers. The application is required to be made in the prescribed Form GL-1 to GL-3 in triplicate along with 3 copies of a statement as to how the geographical indicator will serve to designate the goods as originating from a particular region with qualities specific to that region. The application must mention the class of goods to which the geographical indicator will apply. The other documents required are: 1) The geographical map of the territory of the country or region or

locality in which the goods originate. 2) The particulars regarding the appearance of the geographical

indicator. 3) A statement containing the particulars of the producers of the

concerned goods.



A single application maybe made for registration of a geographical indicator for different classes of goods and fees must be paid for each class of goods. After the application is accepted absolutely or subject to limitations, it must be advertised. Any person may within 3 months from the date of advertisement oppose the registration by giving notice in writing to the Registrar. A register called the Register of Geographical Indications is kept at the head office of the Geographical Indications Registry. It is divided into 2 parts A and B. Part A consists of particulars relating to the registration of geographical indicators. Part B consists of particulars relating to the authorised users of geographical indicators. The registration of geographical indicators is for a period of 10 years and may be renewed for a period of 10 years on payment of a renewal fee. The geographical indicator or its authorized user may be removed from the register for non-payment of the renewal fee. In such a case, if after 6 months and within 1 year from expiration of the last registration the authorized user files the appropriate application and pays the renewal fees, the geographical indicator and the authorized user will be restored for a period of 10 years from expiration of the last registration. 4.6 Infringement of Geographical Indicators A registered geographical indicator is infringed by a person who, not being the registered proprietor or authorized user, uses such indicator on the goods. Alternatively, he suggests that the goods originate in some other geographical area other than the true origin of the goods and thereby misleads the public. If a false geographical indicator is established the penalty is imprisonment and fine. Imprisonment maybe for a minimum term of 6 months and may extend to 3 years. Fine maybe for a minimum amount of Rs. 50,000 which can be extended upto Rs. 2 lakh.



5. Designs Over the years improved designs have helped make telephones & televisions more efficient, more attractive and more in tune with our needs. An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of 3 dimensional features such as the shape or surface of an article or two dimensional features such as patterns, lines or colours. Industrial designs make an article attractive & appealing & add to its commercial value. For that reason, they are protected.

Illustration Sanya is the sole proprietor of Noodle Ltd. Noodle Ltd designs shoes, jerseys and other sports accessories for football players, cricketers and golfers. As part of their centenary celebrations they designed a ‘Universal Sport Shoe’ fitted for any sport. The shoe was specifically designed and used a patented technology which controlled the sweat output. Noodle Ltd had a design registration on the Universal Sport Shoe.

An owner of a registered design is assured an exclusive right against unauthorized copying or imitation of the design. Protection generally lasts for an initial 10 years after which it can be renewed for another 5 years. This protection helps economic development by encouraging creativity in industry as well as in traditional arts & crafts. It also helps promote more innovative & aesthetically attractive products. 5.1 Regulatory framework In 1911 the Designs Act was passed by the British government in India. Thereafter, there have been extensive amendments to the Designs Act. To provide effective protection to registered designs and to promote the design element in an article the Designs Bill was introduced in the Indian Parliament. The bill became an Act in the year 2000 and repealed the Designs Act 1911.

5.2 Meaning of a design A design to be registered under the Designs Act 2000 must comply with the following: 1) It must have some shape, configuration, pattern, ornamentation or

composition of lines or colours.



2) It must be applied to an article in any form by any industrial process or means.

3) It must not include any mode or principle of construction or anything

which is a mere mechanical device. 4) It must not include a trade or property mark or artistic work. Simply put, an article is distinguished not only by its utility but also by its visual appeal. Visual appeal plays an important role in shaping the buyer’s preference for an article. Therefore, the design of an article and even the design of its packaging are important from a commercial point of view. For instance, a consumer may be attracted more to a bar of “Toblerone” chocolate in comparison to a bar of dairy milk chocolate. Design must be new or original

A design can be registered only when it is new or original. However, a design can be registered if the pattern is already known but it is applied to a new article.

Illustration Tanya carries on the business of organizing tailor made birthday parties for children. In one of her projects, as return gifts to children aged 2 to 4 years she applied the shape of the teddy bear to school bags. Tanya can have a design registration for the school bags.

Simply put, what is essential is that the design must be new with respect to the class of article to which it has been applied. A combination of previously known designs can be registered if the combination produces a new visual appeal. Colour may form a part of design but the colour by itself cannot constitute a subject-matter of design. The novelty or originality is to be judged on the evidence of experts in the trade. Design must not be previously published in India

The design must not be previously published in India. The Designs Act 2000 does not define the term ‘publication’. In common parlance, to constitute publication a design must be available to the public, or be shown or disclosed to some person who is not bound to keep it a secret.

Illustration Tanya is a fashion designer. She showcases her winter collection at the Vogue fashion show in Milan. This amounts to publication of her designs.



Publication is of 2 types:

1) Publication in prior document. 2) Publication by prior use

Publication in prior document

Publication in prior document would result when the design has already been published in a document which is easily available.

Illustration Sanya and Tanya are leading designers in Milan. While working in different boutiques, they develop a similar floral print. Sanya has already made out the floral print on a piece of paper. Accordingly, the design forms a part of the inventory of designs in Sanya’s boutique. Tanya unaware of Sanya’s design applies to register her floral print. Her application will not be considered as the design had already been published in a prior document. (The inventory of design in Sanya’s boutique)

Publication by prior use

Publication by prior use would result when a designer before putting down the design in paper exhibits the design in a fashion show and the clothes with the design have also been put to sale.

Illustration Tanya is a fashion designer. She showcases her winter collection at the Vogue fashion show in Milan and offers it for sale as well. This amounts to publication of her designs by prior use.

5.3 Registration of a design Any person who claims to be the proprietor of any new or original design which has not been previously published in India can apply for registration of the design. A proprietor of a design can be the author of the design who executes a design for another person on payment of some consideration. Alternatively, a proprietor may also have acquired the design or the right to apply the design to any article. The steps involved in registration of a design are:

1) Submission of application. 2) Acceptance / objections / refusal.



3) Removal of objections / appeal to Central Government. 4) Registration of the design.

Submission of application The proprietor of the design is required to file an application with the requisite fees with the Controller General of Patents, Designs and Trademarks. If the design is new or original, has not been previously published in India and is not contrary to public order or morality then the design maybe registered. The application must be accompanied by 4 copies of the representation of the design and must also state the class in which the design is to be registered. The applicant is also required to file a brief statement of novelty along with the application. Acceptance/objections/refusal On consideration of the application by the Controller if all the pre-requisites have been complied with the design will be registered. Alternatively, the Controller will send the applicant a notice of objections. Removal of objections/appeal to Central Government The applicant will be required to remove the objections within one month from the date of communication of the objections. If the applicant fails to rectify the objections within the prescribed time line, the application will be deemed to be withdrawn. The applicant may ask for a hearing from the Controller. If the Controller refuses the application, the applicant may directly appeal to the Central Government. The decision of the Central Government on the registrability of the design is final. Registration of the design Once the design is accepted, the Controller will direct the registration and publication of the particulars of the application and the representation of the article to which the design is applied in the Official Gazette. Thereafter, the design will be entered in the Register of Designs. On completion of the foregoing process, the Controller will grant a certificate of registration to the proprietor of the design. 5.4 Rights granted to a proprietor of a design The exclusive right conferred on a design is termed as ‘copyright in a design’. This must not be confused with the exclusive right granted for literary and artistic work in the form of copyrights. There maybe certain designs which may qualify for registration both under the Designs Act and the Copyright Act. If a design has been registered under the Designs Act it cannot be protected by the Copyright Act even though it may qualify as an original artistic work. But, if the design has not been registered under the Designs Act, it will be protected under the Copyright Act.



When a design is registered, the registered proprietor of the design has copyright in the design for 10 years from the date of registration. It may be renewed for a further period of 5 years on payment of the renewal fee. The registration of a design excludes all persons from using the design including the Government of India. If the article to which the design has been applied is not available to the public at reasonable prices, the Government may use or acquire such design. 5.5 Infringement of a design Infringement of a copyright in a design is termed as piracy of design. The following acts will amount to piracy: 1) To publish or offer for sale any article to which the registered design

or a fraudulent or obvious imitation of the registered design has been applied.

Illustration Sanya the in-house designer of Buckingham Palace has designed a wedding gown for the Princess of Wales. She has a copyright in the design. Pooja a designer from Milan copies the design, showcases it at the Wedding Collection held in New York. Pooja is said to have infringed Sanya’s copyright in the design.

2) To apply the registered design or a fraudulent or obvious imitation of

the registered design to the class of articles which are covered by registration.

Illustration Sameer is a leading designer of cars. He takes up any car model and refurbishes it to the requirements of his clients. Siddharth is an automobile engineer. He copies the car designs made by Sameer and applies it to an SX4. Siddharth is said to have infringed Sameer’s copyright in the design.

3) To import for the purpose of sale any article to which the registered

design or a fraudulent or obvious imitation of the registered design has been applied.

Illustration Sanya designs shoes for celebrities in London under the brand name ‘In Time’ and has a design registration on all of them.



Pooja has a boutique in China and imports shoes from Sanya’s store and sells it in China under her brand name ‘The Look’. Pooja is said to have infringed Sanya’s copyright in the design.

While determining whether there has been infringement the court must eliminate the concept of functional similarity. For instance, 2 pens will necessarily be similar in having an ink-tube, a cap and a nib for writing. This element of similarity must be eliminated. A suit for infringement maybe instituted in the District Court or a High Court depending upon the quantum of damages claimed. Any person responsible for infringing the monopoly of the proprietor of a registered design is guilty of piracy and is liable to a fine of a sum not exceeding Rs. 25,000. The registered proprietor also has a right to bring a suit for recovery of damages or for injunction provided that the total sum recoverable in respect of any one design does not exceed Rs. 50,000.



6. Copyright Copyright describes the rights given to creators for their literary, musical and artistic works, such as novels and poetry, songs and musical scores, paintings and sculpture. Other works protected by copyright include films, choreography, architecture, advertisements, maps and technical drawings as well as computer programmes & databases. Rights related to copyright provide protection for performing artists (such as actors and musicians) in their performances, producers of sound recording (such as compact discs) in their recordings and broadcasting organizations in their radio & television programmes. Copyright provides exclusive rights to creators to use or authorize others to use their works. The creator of a work can prohibit or authorize its reproduction in various forms, including printing, recording, broadcasting, public performance, translation or adaptation. Copyright encourages human creativity. It provides economic rights to creators which allow them or their heirs to benefit financially from their work usually for a period lasting 60 years after the creator’s death. This provides not only recognition for their work but also incentives to create more. As they create we all benefit through a greater access to a wider variety of culture, knowledge and entertainment. 6.1 Protected works Literary works covered by copyright include novels, short stories, screenplays, poems, plays, non-fiction works such as histories & biographies, newspaper and magazine articles, reference works such as encyclopedias and dictionaries, computer programs and databases.

Peterson J. had said that literary work covers: Work which is expressed in print or writing irrespective of the question whether the quality or style is high…As well as works embodying the fruits of considerable creative or intellectual endeavour.

Therefore, it maybe said that the term literary works is understood to include every original work of authorship, irrespective of its literary or artistic merit. The ideas in the work do not need to be original. But the form of expression must be an original creation of the author.

Illustration Sameer has a brilliant idea for a movie. He invites Sanya over coffee and shares the idea with her. Sanya capitalizes on the idea and makes a movie called ‘Ingenuity’. Sanya has copyright on the movie and Sameer cannot claim copyright for his idea.



Literary work also includes an adaptation, abridgement and translation of the work.

Adaptation of a literary work means the conversion of the work into a dramatic work by way of performance in public.

Illustration Sanya has authored the book ‘Enigma’. Tanya wants to produce a play based on the book. She will be required to take prior permission from Sanya before she produces the play. Tanya will have an independent copyright in her play which is an adaptation of Sanya’s book Enigma.

Abridgement of a literary work means reproduction of an original work in a more precise and concise way.

Illustration Pooja has authored the book ‘Zodiac Killer’. It is a 2000 page book. Sameer with Pooja’s prior consent selects scripts & passages from her book, puts in few of his own words to give it a new look and publishes another abridged version of the book. Sameer will have an independent copyright in the abridged book.

Translation of a literary work means its reproduction in another language.

Illustration Sanya’s book Enigma is in English. Tanya translates this book into Chinese. Tanya will have an independent copyright in her book written in Chinese.

Dramatic work includes any piece for recitation, choreographic work or entertainment in a mime, the scenic arrangement or acting form of which is fixed in writing.

Illustration Tanya choreographs the title song in Sanya’s movie ‘Be Happy’. Tanya will have an independent copyright for choreographing the song.



Illustration In Tanya’s play ‘What If’ the stage is set to depict a hi-tech 2050 virtual world. She will have an independent copyright for the stage settings.

Musical work consists of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with music.

Illustration Pooja composes a melody ‘A Momentary Lapse’. She has written the lyrics, given the music to the song and recorded it in her studio. She will have a copyright in the song.

If any musical work is arranged or recorded by adding accompaniments, new harmonies & new rhythm, it is said to be adapted.

Illustration Sameer is influenced by Pooja’s song ‘A Momentary Lapse’. With her prior permission he composes a remix version of the song by adding more percussion and beats. He will have a copyright in the remixed song.

Artistic work includes paintings, drawings, photographs, work of architecture and work of artistic craftsmanship.

Illustration Sameer is a business tycoon. His company Noodle Ltd is working on an infrastructure project. The project scheme includes drawings of roads, highways, water pipelines and electricity hubs. Sameer has a copyright on each of the mechanical and engineering drawings.

Illustration Sanya takes a photograph of the sun setting in the Antarctic. She has a copyright in the photograph.



Cinematographic film means any work of visual recording on any medium produced through a process from which a moving image is produced by any means and includes sound recording accompanying such visual recording.

Illustration Tanya is a war journalist. She has covered the riots in Maharashtra, the bombings and curfew in Kolkata and the outbreaks in Gujarat. Based on her experiences, she made a documentary and television report on ‘The Unwanted Outbreaks’. She will have a copyright in the documentary and television report.

No specified level of originality is required except that a substantial part of the film must not infringe any other work. There is no copyright for the artists except a performer’s rights. The producer of the film acquires a distinct copyright and the composer of lyrics or musical work retains the right of public performance.

Illustration Sanya for her movie ‘All that Counts’ commissions Tanya to compose the title song for the movie. Tanya composes the lyrics and music for the song. Sameer is a renowned artist and does play back singing of the song. Sanya as the producer of the film has a copyright in the movie. Tanya as the composer of lyrics and music has a copyright. Sameer, as the singer, has a performance right.

Sound recording means a recording of sounds regardless of the medium on which such recording is made or the method by which the sounds are produced.

Illustration Pooja is a rock star. She records her album ‘Money’ at the Sony sound recording studio. Pooja as the composer of the album has a copyright. Sony as the sound recording company has a copyright.



Performers of a musical work such as musicians & singers are covered by related rights in their performances as are producers of recordings & broadcasters.

Illustration Pooja, as a rock star, performs live on the opening night of the cricket world cup. Pooja as the composer of the album has a copyright. As a performer she has a performer’s right.

6.2 Ownership of copyright The author of the work is the first owner of the copyright in the work. As stated earlier, the originator of an idea is not the owner of a copyright, copyright belongs to the person who gives concrete form to the idea.

Illustration Sameer and Pooja discuss the idea of painting the walls of nursing homes in bright colours. Based on Sameer’s ideas, Pooja paints happy faces and baby faces and inscribes funny one liners on all the nursing home walls. Pooja is the owner of the copyright in the paintings.

The author of the work in relation to the various categories are: 1) Literary or dramatic work, the author of the work. 2) Musical work, the composer in relation to the musical work

regardless of whether he records it in any form of graphical notation. 3) An artistic work other than a photograph, the artist. 4) Photograph, the person who takes the photograph. 5) Cinematograph film, the producer. 6) Sound recording, the producers. 7) Literary, dramatic, musical or artistic work which is computer

generated the person who causes the work to be created. The basic rule that the author of the work is the first owner of the copyright in the work is subject to certain exceptions.



Illustration 1 While Tanya was interning at Lloyds, she drafted various insurance products like Super Annuity Scheme, Safe 35 Insurance and Future Child Plan. Although Tanya was the author of the work, the copyright belonged to Lloyds. This is because Tanya was training under Lloyds as an intern for the purpose of learning the trade. Lloyds was providing her with the required resources, expertise and training. Hence, any work created by Pooja during her internship belonged to them. Illustration 2 Sanya and Tanya request Sameer to take a photograph for them along with Shah Rukh Khan’s wax statue at Madame Tussaud’s museum. They pay him Rs. 1000. Although Sameer was the author of the work, the first owners of the copyright are Sanya and Tanya because they requested for the photograph and paid Sameer a valuable consideration. Illustration 3 Sanya dictates a book to her stenographer Sameer. Although Sameer is the author of the work the copyright owner of the work is Sanya.

Illustration 4 Sanya as a film producer commissions Sameer, the music composer to compose the music for her film ‘The Wonder Kids’. Sanya does not become the owner of the copyright in the music but merely gets a licence to use the music in her film. All other copyright in the music is retained by Sameer. Illustration 5 Pooja is a photographer and is working for Tanya, the proprietor of the Vogue magazine. During her employment she takes pictures of top models which are to feature in the Vogue magazine.



The copyright in the pictures taken by Pooja belong to Tanya in so far as they are featuring in the Vogue magazine. If Pooja as a photographer organizes a gallery exhibition of all her photographs, including the ones featuring in Vogue magazine, then she will be the copyright owner. This is because the gallery exhibition is in no manner related to the publishing of Vogue magazine or gives it any competition.

Therefore, the ground rule is that the author may either independently create a work or may create it under a contract of service or contract for service.

Illustration 1 Where Sanya employs Sameer to maintain the employee logs under her control so that she can set the time lines to complete the work, give directions to improvise upon the work and measures to speed up the process, then Sameer is said to be under a contract of service. In a contract of service the first copyright owner will be the employer.

Illustration 2 Where Sanya employs Sameer to design her company’s brochures and leaves it to him to take all the calls and finalise the end product then Sameer is said to be under a contract for service. His status is that of an independent contractor.

In a contract for service the first copyright owner will be the independent contractor. 6.3 Rights conferred by copyright Every copyright owner can use his protected work as he wishes. But he must have regard to the rights and interests of others and also exclude them from using it without his authorization. Therefore, the rights conferred to a copyright owner are often referred to as exclusive rights. The various rights conferred to a copyright owner are: 1) Statutory rights. 2) Economic rights. 3) Moral rights. 4) Negative rights.



Statutory rights state that the author or rights owner has the right to authorize or prevent certain acts in relation to a work. The rights owner of a work can prohibit or authorize:

a) Its reproduction in various forms, such as printed publications or sound recordings.

Illustration Sanya has authored the book ‘Enigma’. She has given Smart Books, the publisher, reproduction rights of the book in paper back and hard bound versions.

b) The distribution of copies. Illustration Sanya has authored the book ‘Enigma’. She has sold over a million copies of the book. One of the buyers is Tanya. Tanya will not be required to obtain prior permission of Sanya before she gifts the book to someone else.

c) Its public performance.

Illustration Sanya has authored the book ‘Enigma’. Tanya wants to produce a play based on the book. She will be required to take prior permission from Sanya before she produces the play. Tanya will have an independent copyright in her play which is an adaptation of Sanya’s book, Enigma.

d) Its broadcasting or other communication to the public.

Illustration Sanya has produced a tele-serial ‘Happy Gags’. Star World is required to obtain Sanya’s prior consent before it broadcasts the tele-serial.

e) Its translation into other languages. Illustration Sanya’s book Enigma is in English. Tanya translates her book into Chinese with Sanya’s permission. Tanya will have an independent copyright in her book written in Chinese.



f) Its adaptation, such as a novel into a screenplay. Illustration Sanya has authored the book ‘Enigma’. Tanya wants to produce a movie based on the book. She will be required to take prior permission from Sanya before she produces the movie. Tanya will have an independent copyright in her movie which is an adaptation of Sanya’s book Enigma.

Economic rights allow the author to derive financial reward by exploiting his protected work. The author may exploit the work himself or license others to exploit any one or more of the rights for a consideration which may be in the form of royalty or a lump-sum payment.

Illustration Sanya has authored the book ‘Enigma’. She has sold over one million copies of the book. The book is priced at Rs. 550. Accordingly, she derives financial rewards from the sale of the book. She has licensed to Smart Books, the publisher, reproduction and distribution rights of the book in paper back and hard bound versions on payment of an annual royalty of Rs. 25 lakh.

Moral rights allow the author to take certain actions to preserve the personal link between himself & the work. Moral rights include the right to claim authorship of the work (right of paternity) and the right to object to any distortion or modification of the work or other derogatory action in relation to the work, which would be prejudicial to the author’s honour or reputation (right of integrity). These rights must be independent of the author’s economic rights and remain with the author even after he has transferred his economic rights.

Illustration Sanya has authored the book ‘Enigma’. She has sold over 20 million copies of the book. Thereafter, on 23rd September 2007 she assigned her copyright to Smart Books, the publisher. On 25th December 2007, she discovered that based on her book Smart Books was



distributing pornographic CDs which diminished the value of her book. Sanya has a moral right to bring an action against Smart Books.

Copyright is a negative right in the sense that it stops others from exploiting the work of the author for their own benefit without the consent or license of the author.

Illustration Sanya has authored the book ‘Enigma’. She has sold over 20 million copies of the book and retained the reproduction and distribution rights. On 25th December 2007, she discovered that Modern Publishers was selling and distributing copies of her book without any authorization or license.

Sanya has a negative right to stop Modern Publishers from selling her book.

6.4 Limitation on rights of copyright owners The limitations on the rights of copyright owners are:

1) Temporal.

2) Geographic.

3) Permitted use.

4) Non-material works.

6.4.1 Temporal

Copyright does not continue indefinitely. The period or duration of copyright protection begins with the creation of the work and continues until some time after the death of the author. For instance, in case of literary works, the duration of copyright protection is the lifetime of the author until 60 years after the death of the author.

Illustration Pooja has authored the book ‘Insignia’. The book was published on 6th November 2007. Pooja’s copyright will continue during her lifetime and until 60 years from her death.

6.4.2 Geographic

The second limitation is a geographical limitation. Copyright protection is territorial. If both countries are members of one of the international conventions on copyright, the practical problems arising from this



geographical limitation are eased. Illustration Pooja’s book ‘Insignia’ is for sale only in India. Therefore, her copyright in the work is protected only in India. To avail of protection in any other country India and the other country must be a party to an international convention.

6.4.3 Permitted use

Certain acts normally restricted by copyright, may in circumstances specified in the law, be done without the authorization of the copyright owner. Such acts will not amount to infringement of copyright. The purpose of recognizing these exceptions is to enable the reproduction of the work for certain public purposes for encouragement of private study, research and promotion of education. Set out below for your reference are a few of such acts: 1) Free use or fair use of literary, dramatic, musical or artistic work for

the purpose of private use including research, criticism or review. Such use carries no obligation to compensate the author or rights owner for the use of work without authorization.

Illustration Sanya and Tanya as part of Diwali celebrations at their apartment stage a dance on the song ‘Hare Rama Hare Krishna’ from the movie Bhool Bhoolaiya. They do not take prior permission from the producer of the movie. This does not amount to an infringement of copyright as it is protected under the fair use clause.

2) Reproduction of judicial proceedings and reports for the use of members of the legislature.

3) Reading and recitation in public of extracts of literary or dramatic

work. Illustration On Children’s Day Pooja organized a reading session of extracts of Harry Potter stories at the club. Pooja is not required to take prior permission of the author of the book, J.K Rowling or compensate her before



organizing the reading session. 4) Public performances in the course of the activities of educational

institutions in certain circumstances. 5) Reproduction in a newspaper and magazine of an article on current,

economic, political, social or religious topics. 6) Publication in a newspaper or magazine a report of a lecture

delivered in public. 7) Compulsory licenses which require that compensation be paid to the

rights owner for non-authorised exploitation. Illustration Sanya files a complaint with the Copyright Board that Pooja has refused to re-publish or allow re-publication of her book ‘Insignia’. Consequently, her book is not available to the public. The Copyright Board gave Pooja a reasonable opportunity of being heard and after holding a detailed inquiry directed the Registrar of Copyright to grant Sanya a license to re-publish the book on payment of compensation to Pooja.

6.4.4 Non-material works

In India, works are excluded from protection if they are not fixed in some material form. Also, certain categories of works like pocket diaries, calendars, reports of judicial proceedings are not protected by copyright. 6.5 Assignment of copyright Copyright is a bundle of rights. For instance, a novel can be published as a volume, serialized in a newspaper or magazine or may be licensed foe being made into a film. Each of these rights can be assigned or licensed for a limited term. While assignment is a transfer of ownership in rights to the assignee, a license is a permission to do something in respect of a work.

Illustration Sanya may assign all her rights in her book ‘Insignia’ to Tanya. Thereafter, Tanya may reproduce, sell, distribute, adapt or translate the book without taking any prior permission from Sanya.



She will not be said to have infringed Sanya’s copyright.

Assignment of copyright can be for the whole of the rights or a part of the rights. It may be general or subject to certain restrictions. It may be for the entire term of the copyright or for a limited term of the copyright. It may be done on a territorial basis.

Illustration Sanya assigns the right to serialize the work into into a television serial to Sameer, the producer for a period of 20 years. She assigns her right subject to the limitation that it can be broadcast only within the territory of India. It may be said that Sanya has made a limited assignment for a limited period of time placing territorial restrictions on the assignment.

An assignment is said to be valid if it is in writing and duly signed by the assignor. The assignment instrument must specify the rights assigned to the assignee and the royalty terms agreed upon between the parties. If the assignee fails to exercise the rights within one year from the date of assignment, the assignment will be deemed to have lapsed.

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