IP Notes

Contents
GENERAL TERMS ....................................................................................................................................... 2
COPYRIGHT ................................................................................................................................................. 5
TRADEMARK ............................................................................................................................................... 8
CASE SUMMARY ....................................................................................................................................... 16
INDUSTRIAL DESIGN ............................................................................................................................... 22
TRADE SECRET – GENERAL OVERVIEW ............................................................................................ 25
PATENT ....................................................................................................................................................... 28
 GENERAL TERMS
Hot tubbing
"Hot tubbing" is a procedure where expert witnesses present their evidence concurrently and
engage in a discussion or debate about their opinions and the relevant issues of a case. The term
"hot tubbing" comes from the idea that the experts are metaphorically placed in a "hot tub"
where they can engage in interactive and collaborative discussion, as opposed to the traditional
model where each expert presents their evidence separately.
The advantages of hot tubbing
1. Efficiency: It can save time and reduce costs by streamlining the expert witness process,
as experts can address the same issues at the same time.
2. Transparency: It promotes transparency and allows the judge or decision-maker to
better understand the points of agreement and disagreement among the experts.
3. Collaboration: It encourages experts to discuss and resolve issues, potentially leading
to a more nuanced and accurate understanding of the subject matter.
4. Reduced bias: By having experts engage in a discussion, it may help reduce the
perception of bias in favor of the party that retained a particular expert.

Confidentiality Clubs
In legal proceedings, parties often share important documents with each other, but when
sensitive information is involved, they sometimes file these documents directly with the court
in sealed covers. This can be a problem in cases involving trade secrets or intellectual property
rights (IPR) because it may hinder a fair resolution. To address this, Indian courts, particularly
the Delhi High Court, introduced the concept of a "Confidentiality Club." It is an agreement or
court order that allows limited sharing of confidential information among authorized
individuals from both parties. This ensures that sensitive documents can be used during the
legal process without compromising their confidentiality.
Confidentiality Clubs in legal proceedings allow limited access to sensitive documents and
information by authorized individuals, often through court orders or agreements. These clubs
conduct proceedings in private with their members. One key debate revolves around who can
be part of these clubs. Typically, only lawyers and external expert witnesses are allowed,
excluding the parties themselves. These clubs aim for fairness in handling confidential
information and effective use in legal claims. Membership rules can vary by court order, and
there is no clear statutory law governing these clubs. The legal framework is evolving through
judicial decisions.
Parallel importation and Doctrine of Exhaustion
Parallel importation refers to the legal sale of goods in unauthorized trade channels at lower
prices after they have been produced and exported. This practice, regulated by intellectual
property and competition laws, impacts trademark owners significantly. It can create conflicts
when it misrepresents the source, reputation, or quality of trademarked goods. These genuine
but unauthorized goods are often called "grey-market" goods and are related to trademark and
copyright issues, particularly in international trade involving products with trademarks and
copyrights.
The Doctrine of Exhaustion (Art. 6 of TRIPs) often referred to as the Doctrine of First Sale,
dictates that once a trademarked product is legitimately sold by its owner or with their consent,
they lose control over further sales of that product. In other words, the exclusive right to sell
goods with that trademark is "exhausted" after the initial sale, and it cannot be exercised again
for the same goods. There are various modes of exhaustion:
1. International Exhaustion: Assumes that the entire world is a single market, so once a
product is sold anywhere globally, it exhausts the trademark owner's rights for that
product.
2. Regional Exhaustion: Applies when a product is first sold in one country within a
specific region, and the owner cannot prevent subsequent sales in other countries within
the same region. The European Union follows regional exhaustion.
3. National Exhaustion: Occurs when a product is first sold in the domestic market by the
owner or with their consent. After this initial sale, the owner loses control over
subsequent sales in the domestic market and cannot claim profits or sue for trademark
infringement, as they have already profited from the first sale.

Position in India
In India, parallel importation is linked to the principle of exhaustion of rights under the
Trademarks Act, 1999. India has the flexibility to permit or prohibit parallel imports, as allowed
by Article 6 of the TRIPS Agreement. Two key issues in India related to parallel importation
and trademarks involve whether it constitutes trademark infringement under Section 29 of the
Trademarks Act and whether India recognizes the principle of international exhaustion of rights
under Section 30 of the same act.
Section 30, particularly subclauses (3) and (4), address the limits on the effects of a registered
trademark. They suggest that India recognizes the principle of international exhaustion of
rights, allowing certain restrictions on importing and selling trademarked products to be set
aside, as seen in the case of Kapil Wadhwa v Samsung Electronics. This case clarified India's
stance on international exhaustion of rights in the context of parallel importation.
Sweat of brow doctrine and modicum of creativity
The concept of originality is fundamental in copyright law worldwide, determining if a work
qualifies for copyright protection. Section 13 (1) of the Copyright Act of 1957 mentions
copyright for "original literary, dramatic, musical, and artistic works" but lacks a precise
definition for originality, leaving courts to decide. Originality in copyright doesn't require total
novelty but rather some creative effort. The degree of creativity needed is uncertain,
particularly in the case of derivative works. Different legal doctrines are used worldwide due
to the absence of a universally accepted standard for originality.
Sweat of brow
According to this doctrine, a person can have copyright protection for their work if they put in
a lot of effort, time, and money to create it, even if the work doesn't require a lot of creativity
or originality. For example, something like a phone directory or a database can be protected by
copyright because of the hard work and resources invested in collecting and organizing the
information, even if the information itself isn't unique. However, it's important that the work is
created by the author and not copied from someone else.
Position in India
In India, for a long time, the country followed the "sweat of the brow" doctrine, which meant
that copyright could be granted to works based on the effort and investment put into them, even
if they lacked originality. This approach allowed copyright protection for compilations like
dictionaries, maps, and encyclopaedias. However, India's standard for originality was not as
low as that in England. For instance, the Bombay High Court ruled that news and factual events
could not be copyrighted because they are common and not the subject of copyright. Copyright
could be obtained for the way these events were expressed and presented, but not for the events
themselves.
A significant shift occurred in India with the case of Eastern Book Company v. D.B. Modak.
This case involved the copyrightability of judgments. The Supreme Court moved away from
the "sweat of the brow" doctrine and adopted a "modicum of creativity" approach similar to
the United States. It held that copyright required some level of creativity, not necessarily
novelty or uniqueness. The court granted copyright protection to contributions that involved
legal knowledge, skill, and judgment, such as cross-references and case summaries, as they
displayed a minimum amount of creativity. In subsequent cases, Indian courts upheld this
approach and rejected the idea of protecting mere compilations under copyright. Copyright in
India is granted to works that originate from an author and are not mere copies of existing
works. This strikes a balance between rewarding authors' efforts and maintaining a reasonable
standard for materials protected by copyright law.

COPYRIGHT
Copyright:
Copyright is a fundamental legal concept that provides creators of original works with
exclusive rights to use, reproduce, and distribute their creations for a specified period. The
primary aim of copyright law is to encourage the generation of art, literature, music,
architecture, and other creative works.
Author (Section 13):
Section 13 of the Indian Copyright Act, 1957, outlines the conditions that establish copyright
in a jointly authored work. In cases of joint authorship, all authors must fulfill these conditions
to be granted copyright protection.
Different Types of Rights:
Copyright law bestows creators of original works with various exclusive rights. These
encompass the rights to copy, create derivative works, distribute copies, and publicly perform
or display the work.
Neighbouring Rights:
Neighbouring rights, a subset of copyright law, safeguard the interests of performers, sound
recording producers, and broadcasters. These rights encompass control over the use of their
performances, sound recordings, and broadcasts, as well as the right to receive compensation
for their utilization.
Fair Use:
Fair use is a legal doctrine permitting the use of copyrighted materials without seeking
permission from the copyright holder in specific situations. These include uses for criticism,
commentary, news reporting, teaching, scholarship, or research. Such use must be
transformative, adding new value or conveying a fresh message.
Infringement:
Copyright infringement takes place when someone uses copyrighted material without obtaining
permission from the copyright holder. This includes actions like copying, distribution, public
display, and performance. Copyright infringement can lead to legal consequences,
encompassing damages and restraining orders.
Offence:
Under copyright law, copyright infringement is considered an offence. Consequences for
infringement may involve financial damages, legal injunctions, and in some instances, criminal
charges.
Section 62, 52, and 13 of the Copyright Act, 1957 VVI
Section 62: This section empowers the court with the authority to order the seizure of infringing
copies of a copyrighted work. When the court is convinced that copyright infringement has
occurred, it can order the confiscation of all unlawfully reproduced copies of the work, along
with any related plates, moulds, or devices used in their production.
Section 52: Section 52 delineates the limitations on the exclusive rights of copyright owners.
It defines specific actions that do not constitute copyright infringement. These include fair use,
personal reproduction, and the use of works for purposes such as criticism or review.
Additionally, this section outlines provisions for compulsory licensing of copyrighted works in
certain situations, ensuring a balance between copyright protection and public access.
Section 13: Section 13 specifies the conditions under which copyright is conferred in the case
of a work created by joint authors. For a work of joint authorship, all authors must meet the
criteria outlined in this section to be granted copyright protection, ensuring that copyright for
collaborative creations is shared appropriately among the contributors.
Summary
• The Copyright is an intellectual property right attached to original works in which the
right subsists.
• In India copyright applies to literary, dramatic, musical, artistic, cinematograph film,
sound recording and computer programmes.
• Copyright is assigned to a fixed work, not an idea.
• The creators of these intellectual properties viz. writer, playwright, music composer,
painter, photographer, film producer, sound recorder, programmer and architect are the
natural owners of the copyright. In the case of contractual assignments, the terms of the
contract dictate the ownership of the copyright.
• The neighbouring rights associated with copyright include rights to perform, rights to
recording and rights to broadcasting. The owner of the copyright in a work may apply
to the Registrar of Copyrights for registration of the particulars of the work in the
Register of Copyrights. The Registrar after due enquiry makes entry in the Register,
and publishes it in the official Gazette. However, registration is not compulsory.
 Remedies against infringement are available even if the copyright is not registered.
However, registration has advantage in making defence of rights easier.
• The Act confers upon the owner of the copyright the power to exploit the same for the
period prescribed under the Act.
• Terms of copyright for different kinds of work are different. They are summarised as
under:
i. In a published literary, dramatic, musical and artistic work (other than a
photograph)
o Sixty years from the beginning of next calendar year following the year
in which the author dies; in the case of a work of joint authorship, the
reference to the death of the author shall mean the death of the author
who dies last.
o If such work is published anonymously pseudonymously, sixty years
from the beginning of the calendar year following the year of first
publication of the work, and if the identity of the author is disclosed
before the expiry of the said period until sixty years from the beginning
of the year following the year in which the author dies. In the case of
joint authorship, the reference to the author shall be taken to mean the
author who dies last.
o If such work is published posthumously, sixty years from the beginning
of the next year following the year in which the work is first published.
ii. In a photograph/cinematograph film/sound recording.
o Until sixty years from the beginning of the year following the year in
which the photograph/cinematograph film/sound recording is first
published.
o In the case of a work where the first owner of copyright is
government/public undertakings/international organisations sixty years
from the beginning of the next year following the year in which the work
is first published.
iii. In the case of broadcasts
o 25 years from the beginning of the next year following the year in which
the broadcast was first made.
iv. In the case of performances
 o 50 years from the beginning of the next year following the year in which
the performance was first made.
• The copyright can be assigned, where the ownership of right in whole or in part is
transferred to the assignee
• The copyright can also be licensed to perform some acts like reprinting, translation etc.,
where the ownership of right remains with the original owner
• Unauthorized reproduction of copyrighted material, publication of such work, copying
of film on any medium, recording any other sound recording by any means,
performance of work in public, translation, adaptation or commercial exploitation of
the copyrighted material amount to copyright infringement
• In the public interest, some statutory exceptions are provided to copyright. These
include fair use of copyrighted material for educational purposes, reproduction in
newspapers for reporting purposes etc.
• The infringement can be compensated by injunction, damages, accounts or otherwise.
• The penalties for copyright violation may range from fine to imprisonment or both.
• Copyright societies grant licences for public performances and also regularise other
activities related to copyright material.

TRADEMARK

Trademarks are distinctive marks of authenticity that distinguish goods and services of a
particular merchant from others. Trademarks act like a trust mark and remind the customer of
the satisfaction from the previous purchase. It is an assurance of quality. It creates an emotional
appeal to products/services – building a valuable brand. Unauthorised parties can use a mark
and damage the reputation. Registering Trademarks protects businesses appropriately against
competition – by registering a TM one builds a barrier to entry around one’s brand.
Types of TMs
1. Product Mark

A product mark is a mark that is used on a good or on a product rather than on a service. This
type of trademark is used to recognise the origin of the product and helps in maintaining the
reputation of a business. Trademark applications filed under trademark class 1-34 could be
termed as product mark, as they represent goods.
2. Service Mark
Service mark is similar to the product mark but a service mark is used to represent a service
rather than a product. The main purpose of the service mark is that it distinguishes its
proprietors from the owners of other services. Trademark applications filed under trademark
class 35-45 could be termed as a service mark, as they represent services.
3. Collective Mark

Collective mark is used to inform the public about certain distinguished features of a product
or service used to represent a collective. A group of individuals can use this mark so that they
are collectively protecting a goods or service. The mark holder can be an association or can be
a public institution or can also be a Section 8 Company.In a collective mark, normally the
standards of the products are fixed by the regulator owing the mark. Others associated with the
collective are held responsible to adhere to certain standards while using the mark in the course
of business. A commonly known collective mark in India is the Chartered
Accountant designation.
4. Certification Mark

Certification mark is a sign that denotes a products origin, material, quality or other specific
details which are issued by the proprietor. The main purpose of certification mark is to bring
out the standard of the product and guarantee the product to the customers. A certification
mark can also be used to uplift the product’s standard amongst the customers by showing that
the product had undergone standard tests to ensure quality. Certification marks are usually seen
on packed foods, toys and electronics.
5. Shape Mark

Shape Mark is exclusively used to protect the shape of the product so that the customers find
it relatable to a certain manufacturer and prefer to buy the product. The shape of a particular
product can be registered once it is recognized to have a noteworthy shape. An example of a
shape is the Coca-Cola bottle or Fanta bottle, which have a distinctive shape identifiable with
the brand.
6. Sound Mark

Sound mark is a sound that can be associated with a product or service originating from a
certain supplier. To be able to register a sound mark, when people hear the sound, they easily
identify that service or product or a shows that the sound represents. Sound logos are called as
audio mnemonic and is most likely to appear at the beginning or end of a commercial. The
most popular sound mark in India is the tune for IPL.
What is Trademark Infringement?
Infringement of trademark means using a registered trademark on/with products and services
in a manner that leads to confusion and deception about its source by any unauthorised person,
commonly called infringer. Trademark is a word, symbol, sign, a phrase that differentiates its
product and service from others of the same kind. A trademark reflects the source and
symbolizes a mark for quality and trust among the public. Trademark infringement happens
when an infringer uses it without the permission of its owner for commerce or to deceive the
common public and create confusion with the registered trademark. It results in a loss of finance
and goodwill to the business.
For example, the bitten apple logo is the registered trademark of the company, Apple. When
another company uses a similar logo on their products and service, it is considered trademark
infringement. Either be used on the same type of products (electronics) or even on different
ones like clothing. Then also, it would be an infringement if it confuse the public, and they
might consider purchasing the cloth under the impression of being sold out by Apple.
REMEDIES
Trademarks Act, 1999
Section 135 Injunctions, and at the option of the plaintiff, either damages or an account of
profits.
PUNISHMENT (Section 103)
In India, trademark Infringement is a cognisable offence (cases where police have the authority
to arrest without a warrant). The infringer can face civil as well as criminal charges for the
same.
1. Imprisonment for the minimum period of 6 months which can extend up to 3 years.
2. The infringer may end up paying a fine ranging from Rs.50,000 to Rs.2,00,000 on the
infringer. However, apart from these serious punishments, the court can also order a
temporary and permanent injunction, the destruction of goods with infringed trademark,
compensation for damage, and the cost of legal proceedings.

Defences Against Trademark Infringement:

Fair Use:
In order to claim this defence, the accused infringer needs to show that he got the consent of
the authorised owner or either prove that he acted without intending to defraud or mislead the
consumers of the goods.
Prior use:
Prior user of the trademark has more rights than the subsequent user even if the subsequent
user has registered the trademark. It can be taken up as a defence by the defendant when he is
using the mark for a longer period of time than the registered user and has established reputation
in his business.
Non-use of the trademark by the Registered Proprietor:
In this situation, the burden is on the defendant to prove that the Registered Proprietor is not
using the trademark for a long time. Further, he needs to show that he has a legitimate interest
in using that trademark which the owner of the trademark is not using.
Delay and Acquiescence:
In situations when there has been a delay in bringing action of the infringement by the plaintiff,
it is stated that the plaintiff's right have been waived off as the trademark owner and implicitly
or explicitly permitted use of its trademark by the subsequent user.
What is a well-known trademark?
DEFINITION- As per Sec 2 (zg) of Trademark Act, 1999- “a mark which has become so
substantial to the segment of the public which uses such goods or receives such services that
the use of such mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first mentioned goods or services.” Well-
known trademarks have their goodwill and reputation protected across the country and across
categories of goods and services, in contrast to other trademarks whose goodwill and reputation
are restricted to a set designated geographical area and to a certain range of items.
In the Trade Marks Act, 1999, Section 11(6) outlines the factors that the Registrar must consider
when determining whether a particular trademark can be categorized as a well-known
trademark in India. These factors assist in assessing the strength, recognition. Section 11(6) of
the Trade Marks Act, 1999, specifies the various factors that the Registrar considers while
determining whether a trademark qualifies as a well-known trademark. These factors are
crucial in evaluating the distinctiveness and strength of the trademark:
1. Knowledge or Recognition: The Registrar evaluates the level of knowledge or
recognition that the trademark holds within the relevant sections of the public, including
the recognition obtained in India due to promotional activities associated with the
trademark.
2. Duration, Extent, and Geographical Usage: This factor involves assessing the duration,
extent, and geographical areas where the trademark has been used.
 3. Promotion and Advertising: The Registrar takes into account the duration, extent, and
geographical areas where the trademark has been promoted, advertised, or presented,
including any activities at fairs or exhibitions relevant to the goods or services linked
with the trademark.
4. Registration Duration and Geographical Scope: Consideration is given to the duration
and geographical areas regarding the registration or application for registration under
the Trade Marks Act. These registrations or applications reflect the use and recognition
of the trademark.
5. Record of Successful Enforcement: This factor involves analyzing the record of
successful enforcement of the rights associated with the trademark. The Registrar
evaluates the extent to which the trademark has been recognized as a well-known
trademark by courts or the Registrar, based on the enforcement history.

The Registrar utilizes these factors collectively to assess the reputation, recognition, and
strength of a trademark when determining its eligibility as a well-known trademark. A
trademark recognized as "well-known" receives broader protection under Indian trademark
laws, safeguarding it from dilution or unauthorized use, even in unrelated product categories
or services. Section 11 (7) provides that the Registrar shall, while determining as to whether a
trade mark is known or recognised in a relevant section of the public for the purposes of sub-
section (6), take into account—
1. Number of Actual or Potential Consumers: This factor considers the count or estimation
of consumers who currently or potentially use the goods or services associated with the
trademark. The level of familiarity, recognition, and association of the trademark with
these consumers is crucial.
2. Number of Persons Involved in Distribution Channels: It involves assessing the
quantity of individuals or entities engaged in the distribution channels for the goods or
services linked to the trademark. This includes wholesalers, retailers, and other
intermediaries involved in the distribution process.
3. Business Circles Dealing with the Goods or Services: This factor focuses on the
business circles or communities involved in the production, sale, or purchase of the
goods or services associated with the trademark. It accounts for the professional circles
and industry players dealing with these specific goods or services.

Section 9 and 11 of TM Act

A trademark helps you strictly distinguish your goods from others in the market. Hence, a
trademark may be any symbol, word, configuration, device, shape, or combination of colours
in packaging or the goods themselves.
The Trademarks Act 1999 sets out the absolute and relative grounds for the refusal of
registration of trademarks under the Act. Apart from a few exceptions, relative grounds of
refusal are applicable when a similar trademark exists.
One can refuse a trademark application for absolute or relative grounds in compliance with
“Sections 9 and 11 of the Trademark Act”.
Let’s discuss further the absolute and relative grounds for refusing a trademark.
Absolute grounds for refusal of registration of trademark:
Section 9 of the Trademark Act lays down absolute grounds for the refusal of registration of
trademarks under the Act.
Section 9(1) provides trademarks are not registerable if:
a) Trademarks that are incapable of distinguishing the goods/services of the applicant
from those of others.
b) A trademark specifies the kind, quality, geographical origin, time of production, or
characteristics of goods or services.
c) Trademarks are exclusive marks that have become common in the current language or
the bonafide and trade practices. Hence, if there is enough evidence that a large group
of people uses the same mark, we cannot register it in the name of any person.

Section 9(2) makes a mark non-registrable if-

1. A mark cannot be allowed if it deceives the public or causes confusion. Section 9(2) (a)
primarily concerns the deceptive nature of the mark. A mark may be deceptive if
something is inherent in the mark itself or its use, such as the quality, nature, or
geographical origin of the products or services.
2. Section 9 (2) (b) mandates that a mark is unregistrable if it contains marks that are likely
to hurt the religious susceptibilities of any section or class of Indian citizens.
3. Section 9 (2) (c), a trademark that comprises or contains scandalous or obscene matter
is not registrable.
4. Section 9 (2) (d) prohibits the registration of marks if their use is prohibited under the
Emblems and Names (Prevention of Improper Use) Act, 1950.

For example, names such as Mahatma Gandhi, Pandit Nehru, etc., are unregistrable.
According to Section 9 (3), we cannot register a mark if it consists exclusively of the following:
a) The shape of goods is due to the goods’ nature. For instance, round or lever-type door
handles will fall within section 9(3) (a); hence, they are unregistrable.
b) The shape of goods that are essential to obtain a technical result.
c) The shape which adds substantial value to the goods- The shape should have a visual
appeal for added value. Besides, it should not be practical to fall within the meaning of
this provision.

Section 11 of the Trademark Act lays down relative grounds for refusal of trademark
registration.
Except in the case of honest concurrent use, a mark is unregistrable if:
i. There is a possibility of misunderstanding on the part of the public because the
mark is identical to the earlier trademark. Furthermore, the products or services
of the two marks are similar.
ii. The mark is identical to the earlier trademark, and the goods/services of the two
marks are comparable.

Under Section 11(2) & (3):

a) A trademark identical or similar to an earlier trademark; and
b) A mark cannot be registered if the earlier mark is a famous or well-known trademark.

Section 11(3) states that a mark cannot be allowed if the law of passing off or the law of
copyright prohibits its use. The objection under sections 11(2) and (3) calls for evidence of
facts and matters to conclude the normal and fair use of the trademark. Moreover, the evidence
should distinguish the goods of the applicant from those of others at the date of application for
registration. Hence, it depends heavily on the opponent to establish that they are the prior users
of the trademark.
Jurisdiction
Jurisdiction of the Court can be invoked under Section 20 of the Code of Civil Procedure
(CPC), 1908 in addition to Section 134 under the Trade Marks (TM) Act, 1999.
• where the plaintiff resides/carries on business or
• where the defendant resides/carries on business or
• where the cause of action arises

Passing off
It is creating some false representation that is likely to lead someone to believe that the goods
or services are those of someone else. In layman's terms, passing off occurs when a
trader/businessperson/or another person makes a false representation to their customer or
consumer to lead them in believing that the goods or services they are delivering are the
property of another person. The Law of Passing-Off, which covers Intellectual Property Rights
in India, was created to prevent this conduct. Section 134 1 (c) of the Trademark Act 1999
establishes the law of passing off. A common law remedy is provided by Section 27 of the
Trademark Act 1999. Unregistered trademark rights are subject to this common-law tort ( a
trademark that has not been registered under a trademark or patent office is known as an
unregistered trademark).
Section 29 of TM Act (Infringement of registered trademarks).
1. Infringement occurs when a person, not the registered owner or an authorized user, uses
a mark identical or deceptively similar to a registered trademark in a way that suggests
it's being used as a trademark in connection with goods or services.
2. Infringement also occurs when a person uses a mark that, due to its identity or similarity
to the registered trademark, causes confusion among the public or establishes an
association with the registered trademark.
3. In cases falling under (2c), the court presumes it will cause confusion.
4. Infringement happens when a person uses a mark identical or similar to the registered
trademark for dissimilar goods or services, taking unfair advantage or harming the
distinctive character or reputation of the registered trademark.
5. Using the registered trademark as part of a trade name, business name, or business
dealing in goods or services covered by the trademark is an infringement.
6. Use of a registered mark includes affixing it to goods, offering or selling goods or
services under that mark, importing/exporting goods under that mark, or using it in
business papers or advertising.
7. Applying the registered trademark to goods, packaging, business papers, or
advertisements without proper authorization from the owner constitutes infringement.
8. Infringement occurs when advertising takes unfair advantage, is against honest
commercial practices, is detrimental to the trademark's distinctiveness, or harms its
reputation.
9. If the registered trademark consists of words, infringement can occur through both
spoken use and visual representation of those words.
Doctrine of dilution [Relate it with Section 29(4)]
In simple terms, trademark dilution occurs when an unauthorised party uses a trademark in a
manner that would tarnish or diminish the image of a well-known trademark. Most often than
not, trademark dilution occurs among businesses or individuals that do not compete with each
other.
Dilution is widely categorised into two types: Blurring and tarnishment.
Dilution by blurring occurs when the distinctiveness of a popular trademark is impaired due to
a trademark which is created by an unauthorised party. For instance, if a business uses the
'FACEBOOK' mark on a toothpaste, consumers may begin to associate the well-known
FACEBOOK mark with the toothpaste brand. This may negatively impact Facebook's brand
image. On the other hand, dilution by tarnishment occurs when a person or a business
unauthorizedly uses a mark in an offensive, inappropriate or absurd context. Generally,
unauthorized parties create infringing marks to insinuate beliefs or messages that go against
the core values of the original mark's owner. For instance, the unauthorized use of the "WHOLE
FOODS" mark to associate it with food items that use hydrogenated fats, artificial colors, and
flavours can be considered as an example of trademark dilution by tarnishment.
Cases [Refer to the PPTs and other websites]
Dabur India Limited v. Ashok Kumar & Ors
Snapdeal Private Limited v. Snapdeallucky-draws.org.in
HT Media & Anr v. Hindustantimes. tech & Anr
Sunil Mittal & Anr.v. Darzi on Call
Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd.
Bacardi and Co. Ltd. v. Bahety Overseas Private Ltd. And Ors.
Millennium & Copthorne Intl, Ltd. v. Aryans Plaza Serv. Pvt. Ltd. & Ors.
Juggernaut Books Pvt. Ltd v. Ink Mango Inc. & Ors.
Eros International Media Limited v. Telemax Links India Pvt. Ltd., (2016) 6 Bom CR 321
Golden Tobie Pvt. Ltd. v. Golden Tobacco Ltd. (2021)
S. Syed Mohideen V P. Sulochna

CASE SUMMARY

Standard Essential Patents (SEPs)

Standard Essential Patents (SEPs) are patents that can be properly mapped onto a mandatory
industry standard, such that a product that conforms to that standard infringes the patent. SEPs
are considered essential when there is no possible way to create a workaround that would
enable implementing the standard in another way. Patents provide incentives for research and
development, and facilitate knowledge transfers. Standards ensure the rapid diffusion of
technologies and the interoperability between products.
Many standards are based on patented technologies. For example, the mobile
telecommunications industry is driven by a heavy reliance on standardisation, which comprises
a great number of innovations protected by patents. 2G (GSM), 3G (UMTS), 4G (LTE), 5G
and WiFi networks rely on thousands of patented technologies to work. Such communication
standards are also key for the development of the hyper-connected society, for example in the
field of the Internet of Things in sectors such as consumer electronics, the automotive industry
and the electricity grid industry.
SEPs are those patents that must be used in order to comply with the standard set for achieving
interoperability between devices, such that, the use of the standard requires infringement of the
SEP. Thus, to draw a balance between the rights of SEP holders and implementers many
standard setting organisations require members to agree to license SEPs to implementers on
Fair, Reasonable and Non-Discriminatory (FRAND) terms.
Ericsson v. Micromax
A 5 year long dispute between Ericsson, a multinational Swedish telecom company, and
Micromax, an Indian electronics company, came to an amicable end when both parties reached
an agreement, wherein Micromax would pay Ericsson royalties for each phone that it sells,
which uses 2G or 3G technology. The subject matter of the dispute was Ericsson’s claim that
Micromax infringed upon its Standard Essential Patent (SEP) and to this effect demanded a
compensation of INR 100 crore, in addition to a royalty of 1.25-2% on each phone sold.
Thereafter, Micromax filed a complaint with the Competition Commission of India (‘CCI’)
against Ericsson for abuse of dominant position.
The dispute in question brought to light a new perspective, that of the relationship between
patent law and competition law, which, prima facie protects contradicting interests in the
market. While the former grants exclusive right over (in this case) a technology to one entity,
the latter protects competitors from being affected by an unfair advantage that lies with another
competitor. Ultimately, the question of whether the two are actually contradictory was
addressed in this matter.
Facts
In 2013, after Ericsson filed a patent infringement case against it, Micromax, alleged abuse of
dominant position by Ericsson.
The informant Micromax alleged that Ericsson had abused its dominant position in the market
for GSM technology by:
• Demanding excessive royalty based on the sale value of the entire phone instead of the
value of the patented technology used in the phone
• Filing of injunction and threatening to report Micromax’s failure to pay royalty to
Securities Exchange Board of India, prior to its listing

The foremost objection raised by Ericsson was the lack of jurisdiction of CCI because the issue
of abuse of patent rights must be resolved under the Patents Act. The CCI found a prima facie
case against Ericsson, and directed the Director General (DG) to investigate the claim. In
response, Ericsson filed a writ petition in the Delhi High Court, challenging the authority of
the CCI. Meanwhile, the court set royalty rates by way of an interim agreement between the
parties. But Ericsson was allegedly charging royalty arbitrarily, and believed that it had the
right to do so, as it presumed that technology in question was unique. The trial regarding this
matter finally took place in May 2015, wherein the DG was allowed to investigate the matter,
without the power of passing a final order. Later, the summons issued to Ericsson by the CCI
was set aside by the court, and there was no coercive action taken up against the company. This
was later viewed as the final order. On 30th March 2016, the Delhi High Court while dealing
with the patent infringement case discussed the issue of CCI’s jurisdiction in this matter.
Issues contended
The primary issue herein is that of safeguarding fair competition in the market, while
simultaneously ensuring availability of low-cost mobile devices for consumers. Ericsson has
been fending off competitors such as Micromax, Intex and iBall, which are relatively smaller,
both in terms of their market share in the global perspective, as well as their financial resources.
Due to a paucity of financial resources, companies such as Micromax cannot reduce the price
of their final product significantly.
Therefore, the advantage here lies with Ericsson, as they can compete with these companies
with a substantial financial backing. This allows them to shift to a model that relies on the
volume of sale, rather than a higher-price oriented model to generate profits. The competing
companies in question cannot operate as per the given model, due to the resources and market
share that they lack in comparison. It gives them a “dominant position”, as they have the power
to affect the selling price in the relevant market (a market wherein the products are homogenous
and interchangeable).
To ensure the accomplishment of the dual goal that lies herein- condemn practices that are not
in the spirit of competition, and also ensure the maximum utility that a consumer may derive
from such a product, thereby not curbing their right to choose, or curtailing the option of a
company selling the product in the first place, the aforementioned interim agreement was
prescribed by the CCI. Micromax alleged that Ericsson was abusing this dominant position,
and dictated the terms of the agreement and charged royalty arbitrarily. However, Ericsson
challenged CCI’s order on the grounds that it was arbitrary in nature, and that it did not have
the jurisdiction over this dispute. The jurisdiction was challenged on the grounds that the
dispute was already a subject matter of pending suits, and was related to patent infringement,
and not competition law. This conflict thus turned into a three-way tightrope walk: the conflict
between the statutes, the dispute between the parties, and the consumer’s welfare is paramount.
Matter of jurisdiction
Delhi High Court’s decision, in this case, is a playmaker in the issue of jurisdiction in
competition law cases, especially the ones that deal with patents. Micromax challenged
Ericsson for demanding royalty on the sale value of the entire mobile, rather than only the
patented technology, and for filing an injunction and threatening to report it to SEBI, as a
consequence of failing to pay the royalty. Ericsson claims that it was entitled to do so, under
the Fair, Reasonable and Non-Discriminatory (FRAND) terms, by virtue of it being a part of
the European Telecommunications Standards Institute (ETSI), which granted licenses for the
aforementioned technologies. Thus, Ericsson claimed that it was a case of patent dispute, in
which, CCI could not exercise its jurisdiction. When the CCI still went ahead and ordered the
DG to investigate the matter, the move was challenged in the Delhi High Court. Here, the CCI
put forward two compelling arguments to reinstate its jurisdictional authority, by proving that
these two laws were not contradictory in nature-
1. That the Patent Law in itself ensures that there is no abuse of patent by providing for
compulsory licensing as a remedy in personam.
2. Levying fines, issuing cease and desist orders are some of the remedies provided as
remedies in rem

Section 27 of the Patents Act ensures that such a patent-holder does not abuse his or her
position, and provides for the required remedies. Therefore, it is not contrary to the
Competition Act, and thus does not oust the dispute from CCI’s jurisdiction. Secondly, it
wanted to ensure that the price inflation due to the royalties does not affect the final consumer.
Additionally, Section 27 of the Competition Act bestows upon CCI, the power to pass orders
on cases of alleged abuse of dominant position in a relevant market.
Therefore, the Delhi High Court, taking into account these factors, while also recognising the
fact that FRAND terms allowed a licensee (here, Micromax) to approach the civil court to
protect their patent right, upheld the order passed by the CCI. The Court while dealing with the
issue of jurisdiction harmoniously constructed the provisions of the two statutes.
Conclusion
The Delhi High Court recognised the jurisdiction of the CCI in this matter. The plaintiff and
the defendant entered a Global Patent License Agreement, outside of the court, thereby putting
an end to the long drawn dispute. Micromax also withdrew its complaint against Ericsson in
the CCI, after signing a non-disclosure agreement, which prevents them from divulging the
terms and nature of the settlement. It can be said with certainty from the court ’s perspective,
that statutes cannot be dealt with in absolute isolation from one another. The spirit of any
legislation is to protect the mutual interests recognised by the lawmakers. This can be reflected
in the court’s insistence on maintaining a harmonious relationship between The Patents Act
and The Competition Act. The two laws may seem contradictory to a layman’s eye, but in the
core of their formulation, both of them seek to protect common interests, and therefore do not
override or oppose each other.
Humans of Bombay v. People of India
HoB is a storytelling platform and claims operation since 2014 through its website, Instagram,
and YouTube. PoI is another storytelling platform operating since 2019 (as per the linkedin
page of its founder.) Both platforms share “feel good” stories about people fighting different
adversities, and celebrating their achievements.
It all started with a lawsuit that Humans of Bombay filed against People of India, alleging that
the latter had replicated its unique storytelling format and published identical content. People
of India had used images and videos from its platform without permission, Humans of Bombay
also claimed. The present suit is filed by HoB against PoI, alleging replication of a large number
of images and videos, and replication of business models and stories shared by them. They
further alleged that PoI was approaching similar subjects to create an imitative platform. In its
order, the court has reproduced a comparison table submitted by HoB, that we have pasted
below.
The HoB has argued that the PoI has on several occasions interviewed the same persons as
HoB and uploaded their photos and photos in an identical manner. The HoB has argued that
the PoI has created an "imitative platform" by copying its content. The HoB has argued that
the PoI has "started an identical portal/service having identical content" and "have replicated a
large number of images and videos" from the HoB, according to court filings accessed by
Outlook. In their lawsuit, the HoB has further said that the PoI has "completely replicated" their
business model and also stories.
In the lawsuit, the HoB has shared a table showing their original posts on one side and PoB's
posts on the other side. The PoB's posts are nearly-identical in all cases. In some cases, only
the caption appears to be different and the photos appear to be completely the same. After going
through the arguments presented by the Humans of Bombay (HoB) and the evidence presented
in the form of a table comparing HoB's original content with the People of India's (PoI) content,
the Delhi High Court has said it appears that PoI has "substantially" copied the HoB.
A review of HoB's chart shows that the PoI's content is nearly identical with just in-photo or
in-video captions being different. The persons as well as photo and video angles also appear to
be exactly same or near-identical. A perusal of the images would show that, prima facie, there
is substantial imitation and in fact, in some cases, the photographs/images are identical or
imitative.
Order Dated 11 October 2023
The Delhi High Court, in the final judgment held that:
29. The allegations in the suit and in the reply would show that there are several story-telling
platforms that are currently being run. There can be no restraint on such a platform being run.
But the second allegation now is that both the Plaintiff and the Defendant are replicating each
other’s photographs/images while communicating stories related to the same individuals. There
may be various justifications that may be put forward by the parties on this aspect. The said
justifications include common source, common subject, common settings where the image is
clicked etc., Without going into these justifications on an image-by-image basis, the Court feels
that some clarity ought to be there in view of the legal position discussed above.
30. After hearing submissions, it is clear to the court that neither of the platforms would be
entitled to replicate or imitate each other’s content and images. The platforms also cannot copy
or replicate each other’s literary content. Accordingly, the order that deserves to be passed in
the present case, to which both sides have consented, is that both the platforms i.e., Humans of
Bombay and People of India shall refrain from using each other’s copyrighted works…
31. It is clarified that insofar as the images, photographs or videos submitted by the individuals
or subjects from own private collections are concerned, there cannot be any copyright claimed
by either of the platforms.
 INDUSTRIAL DESIGN

What is ID – Basics
• The regulation of Industrial Design in India was originally governed by the Design Act,
1911.
• In an effort to align with international standards, the Design Act, 2000, was enacted.
• The Design Act, 2000, defines 'Design' as the "features of shape, any pattern,
configuration, ornament, or composition of colors or lines." These features can be
applied to both 2-dimensional and 3-dimensional forms, using various procedures or
processes, such as manual, mechanical, or chemical methods.
• Industrial designs protect the visual appearance of articles, and they are judged solely
by the eyes. It does not extend to designs that are intangible in nature or those driven
by functional considerations.
• The primary purpose of the Design Act is to safeguard the aesthetic aspects of articles
through protection and registration, excluding any modes, methods, principles of
making, or processes associated with an article.

Elements of ID
• Novelty and Originality:
▪ To be eligible for registration, a design must be both novel and original. It should
be unique and not have been produced previously.
▪ A combination of two or more previously published designs can be registered
only if the combination results in a new and distinctive visual appearance.
• Non-Publication:
▪ The intended design for registration should not have been published previously.
Even if a copy is available in a public library, it may be considered as a
publication and disqualify the design from registration.
▪ In the case of Kemp and Company v. Prima Plastics Ltd., it was held that if the
proprietor of a design discloses it to any other person in good faith, it is not
deemed to be a publication Subsequently, if the registration is obtained of the
said design, the earlier disclosure would not invalidate the copyright thereof.
• Morality and Public Order:
▪ A design must not be contrary to morality or public order or prohibited by the
Government of India or any authorized institution.
 ▪ Designs that can cause disturbances, breaches of public order, or peace cannot
be considered for registration.
• Distinguishing from Known Designs:
▪ A registered design should be significantly distinguishable from other known
designs or combinations.
• Items Not Eligible for Registration:
▪ Certain items cannot be registered as designs, including:
▪ Any mode of construction or trademark already defined in the Trade and
Merchandise Marks Act, 1958 (now Trade Marks Act 1999)
▪ "Property marks" as defined under Section 479 of the Indian Penal Code, 1860.
▪ Artistic works defined in clause (c) of Section 2 of the Copyright Act, 1957.

Registration
• A registered design in India is granted 10 years of copyright protection.
• The rights of the registered design proprietor are similar to those of a copyright owner.
• The registered design owner has the exclusive right to apply the registered design to a
specific class of articles.
• The Design Act allows the registered owner to grant a license for a fee.
• The exclusive right extends to any registered design for a product.
• The registered design holder has the exclusive right to disclose or publish items for
which the design has been registered.
• Sole right to import for any commercial purpose is granted to the registered design
owner.

Infringement
• Unauthorized copying of a registered design constitutes design infringement.
• Section 22 of the Design Act addresses design infringement, prohibiting the false or
apparent imitation of a registered design without the owner's authorization.
• Importation of chemical or material resembling a registered design is also restricted.
• Design infringement occurs when someone imports, applies, or publishes a registered
design, or any imitation, without the owner's permission.
• Troika Pharmaceuticals v. Pro Laboratories:
The Gujarat High Court ruled in favour of the plaintiff because they were the registered
owners of ‘D’ shaped tablets, which was a protected design. The defendants began
 manufacturing identical tablets on the grounds that the design was common and did not
merit protection. Even if the “D”-shaped design was not innovative, the Court found
that its use in tablets was novel and hence entitled to protection under the Designs Act.
• Kemp & Co. v. Prima Plastics Limited:
The court ruled that “If the visual characteristics of shape, configuration, and pattern
designs are comparable or stringently similar to the eye, it is not required that the two
designs be identical. The issue must be viewed as one of substance, and fundamental
design elements must be evaluated.”

Remedies
• Section 22(2)(a): Infringer pays a maximum of 25,000 Rupees per infringement,
recoverable as a contract debt. The total recoverable amount for a single design should
not exceed 50,000 Indian Rupees.
• Section 22(2)(b): Registered owner can file a lawsuit for damages and seek an
injunction against further infringement. Infringer must pay the court-awarded sum and
is subject to an injunction.
• In addition to this provision, section 55 of the Indian Copyright Act of 1957 enables the
claimant to seek remedies, claim damages, or file a suit for injunction against anyone
who infringes the registered article under the Act. The claimant is also entitled to the
profits made by the infringing party from the infringed design.
• Defenses Available to Infringing Party:
▪ Grounds for cancellation of Design Registration under Section 19 of the Design
Act, 2000
▪ Infringement should start when the design's registration ceased to be valid and
continue until the date of restoration
▪ Lack of innovation in a registered design.
▪ Functional differences between the product and the registered design.
▪ Jurisdictional issues: The lawsuit should not be filed in a court lower than the
District Judge court.
• Reckitt Benckiser (India) Ltd. v. Wyeth Ltd
The problem here was with the registration of S-shaped spatulas. Wyeth Ltd., the
respondent in this case, argued that the appellant’s design was not unique because it had
previously been registered in a foreign nation. The court ruled that the design’s
registration in India would be deemed to be cancelled and it may be sought as a defence
 against claimed infringement under Section 22 if it could be demonstrated that the
design was disclosed anywhere in India or a foreign country through means listed under
Section 4(b).
• Ritika Private Limited V. Biba Apparels Private Limited:
▪ Facts: Plaintiff, a boutique apparel designer brand in India, sought an injunction
against the defendant for reproducing its work. Defendant argued that plaintiff's
designs were not registered under the Design Act, 2000 and were reproduced
more than fifty times by an industrial process.
▪ Judgment: The court ruled that there was no copyright infringement on the part
of the defendant because the plaintiff's designs were not registered under the
Design Act. The judgment emphasized the necessity of registering designs to
protect them from duplication. It highlighted that without registration, the owner
of a design loses rights and benefits related to the designs of an article.

TRADE SECRET – GENERAL OVERVIEW

Trade Secret, the name itself defines the secret of any trade or business that is known to a
limited group of persons and has a commercial value. They are intellectual property right(s) on
confidential information which may be sold or licensed. Trade Secrets do not require
registration, unlike other Intellectual Property Rights. A trade secret can be any formula,
pattern, idea, process, physical device or a compilation of information which provides its owner
a competitive advantage in the market.
Essentials of a trade secret
• It should have commercial value as it is a secret
• It should not be widely known except to a limited group of persons related to the
business
• To keep the information secret, the owner has taken reasonable steps.

Some famous examples of trade secrets are Nestle Maggi Masala, KFC’s chicken, Hershey’s
Milk Chocolate, Google Algorithm, Coca-Cola recipe, and many more on the list.
Trade secret v confidential Information
A trade secret is a kind of Confidential Information. All trade secrets are Confidential
Information, but not all confidential information is trade secrets. - Confidential Information is
the information that has valuable and sensitive secrets attached to it and the person who
receives it, owes the duty neither to disclose it nor to use it for a purpose other than that for
which the disclosure has been made. For example, Company Profits and Revenues, Clients,
customer lists, employee records, etc. Trade Secret is confidential information that has a
commercial value attached to it and reasonable steps have been taken to keep it a secret for as
long as possible. For example, any technical information, software, data, formulas, recipes,
etc.
Trade Secret v. Patent
While patents provide exclusive rights within their term (typically 20 years), they also require
public disclosure. In contrast, trade secrets can be maintained indefinitely if kept confidential
within an organization. However, there are risks with trade secrets, such as potential reverse
engineering and weaker legal protection compared to patents. The choice between trade secret
and patent protection depends on factors like patentability, confidentiality duration, and the
value of the information. Trade secret protection is generally weaker in most countries and may
require significant efforts and costs to maintain secrecy.
In the following circumstances it would be advisable to make use of trade secret protection:
• When the secret is not patentable; or
• When the likelihood is high that the information can be kept secret for a considerable
period of time.
• When the trade secret is not considered to be of such great value to be deemed worth a
patent; or
• When the secret relates to a manufacturing process rather than to a product, as products
would be more likely to be reverse engineered; or
• When you have applied for a patent and are waiting for the patent to be granted.

How the concept of trade secret evolved in India

After the liberalisation in 1991, India became a member of the World Trade Organisation
(WTO) and subsequently, the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) was also signed by India in 1994. As per TRIPS Agreement, it was mandatory
for all the member states to protect the Trade Secrets/undisclosed information in accordance
with Article 39 of the TRIPS Agreement. No specific law was enacted for the protection of
Trade Secrets and Confidential Information in India and it is still not there.
How Trade Secret law is governed
The protection of Trade Secret and Confidential Information is governed by: Common law
 • Section 27 of the Contract Act is the specific law that bound the parties not to disclose
information contrary to the terms of the contract between the parties i.e. Non-Disclosure
Agreements.
• Copyright Law also protects the trade secrets involved in business data. Further, the
Personal Data Protection Bill, 2019 introduced a specialised regulatory approach for
the Protection and Privacy of Data of Personal and Non-personal Data in any form
(digital or non-digital).
• Section 72 of Information Technology, 2000 imposes a penalty for breach of
confidentiality and privacy.
• Section 405-409 of the Indian Penal Code,1860 deals with the cases when there is a
Criminal Breach of trust.
• Law of confidence and fiduciary relationship: When one party discloses information to
another party in a trustee-beneficiary relationship, the recipient abides by the duty of
confidence and trust, when a non-disclosure agreement is not signed between the
parties.

Judicial Precedents
In India, Judicial opinions and precedents are the sources for the protection of Trade secrets
and Confidential Information as there is no specific legislation for it. Following are the cases
related which reflect the application of the judicial mind:
• In Dr. Sudipta Banerjee Vs. L.S. Davar & Company & Ors., an injunction order against
the former employees of a law firm was passed by the Calcutta High Court for
disclosing trade secrets and confidential information gathered in the course of their
employment. Court further opined that freedom of contract and trade must be balanced
if we re-look at Section 27 of the Indian Contract Act. If the employee shares such
information and communication, it would be unethical and would be a breach of the
confidentiality clause in the service contract causing prejudice to the law firm.
• In Burlington Home Shopping Pvt. Ltd. v. Rajnish Chibber the defendant was a former
employee of the company (the plaintiff) who utilised the plaintiff’s contacts database
in a similar business started by him after leaving the company. The Court held that the
contacts database was developed through skill and labour by the plaintiff, hence
protected under the law relating to Trade Secrets and Confidential Information.
• In Saltman Engineering Company Limited v. Campbell Engineering Company Limited
or “Saltman Engineering Case”, Saltman challenged the Act of Campbell when he
 started using the drawings for its own purpose. Campbell argued that in the absence of
a contract, he is not bound to treat drawings as Confidential. Lord Greene observed that
“it would not matter the least bit whether there was a contract or whether there was not
a contract”. What mattered was that Campbell was aware that the drawings belonged to
Saltman and it was confidential as the defendants had got them for a limited period.
Hence, a Breach of Confidence on the part of the defendant was held in this case.
• In John Richard Brady & Ors v Chemical Process Equipment P Ltd & Anr, principles
of confidentiality were discussed for the first time in this case. The Court held that “the
law on this subject does not depend on any implied contract. It depends on the broad
principles of equity that who has received information in confidence shall not take
unfair advantage of it”.

PATENT
What is Patent?
• Is a Techno Legal document
• Staturory right.
• Territorial in nature.
• Definitions-
▪ WIPO: “A patent is an exclusive right granted for an invention, which is a
product or a process that provides, in general, a new way of doing something,
or offers a new technical solution to a problem. To get a patent, technical
information about the invention must be disclosed to the public in a patent
application.
▪ As per Indian Patent Law, a patent can be obtained only for an invention which
is new and useful. The invention must relate to a machine, article or substance
produced by manufacture, or the process of manufacture of an article. A patent
may also be obtained for an improvement of an article or of a process of
manufacture. The patent has a limited term of 20 years, which is counted from
the date of filing of the patent application. A patent is a territorial right and can
only be applied in the country where it has been granted.
• Term for protection of product patent shall be for 20 years.
• 3 things to note while thinking of registration.
▪ Firstly, the invention must be novel, meaning thereby that the Invention must
not be in existence.
 ▪ Secondly, the Invention must be non- obvious, i.e. the Invention must be a
significant improvement to the previous one; mere change in technology will
not give the right of the patent to the inventor.
▪ Thirdly, the invention must be useful in a bonafide manner, meaning thereby
that the Invention must not be solely used in any illegal work and is useful to
the world in a bonafide manner.
▪ Not falling under Sections 3 and 4 of the Patents Acts.
• Anticipation by disclosure and Anticipation by use.
▪ Prior publication
▪ Public knowledge. even traditional 'ancient' knowledge in India also constitutes
prior art.
▪ To anticipate an invention a single publication or single use must reveal all
details of the invention
• Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, AIR 1980 SC 1329-
TEST :
▪ "Was it for pracfical purposes obvious to a skilled worker, in the field concerned
In the state of knowledge existing at the date of the patent to be found in the
literature then available to him, that he would or should make the invention the
subject of the claim concerned?"

Rights and obligations of the patentee

• Rights of Patentee
▪ Right to exploit patent.
▪ Right to grant license.
▪ Right to Surrender.
▪ Right to sue for infringement.
• Obligations
▪ A patented invention may be used or even acquired by the Government, for its
use only.
▪ A compulsory license is a provision under the Indian Patent Act which grants
power to the Government to mandate a generic drug maker to manufacture
inexpensive medicine in public interest even as a patent in the product is valid.
 ▪ A patent may be revoked in cases where there has been no work or
unsatisfactory result to the demand of the public in respect of the patented
invention.
▪ When the infringement was made between the period of the date of infringement
and the date of the advertisement of the application for reinstatement, the patent
has no authority to take action for infringement.

Infringement of patent
• Patent infringement is a violation which involves the unauthorized use, production,
sale, or offer of sale of the subject matter or Invention of another’s patent.
• When there is infringement of patent, the court generally compares the subject matter
covered under the patent with the used subject matter by the “infringer”, infringement
occurs when the infringer Uses patent material from in the exact form.
• Direct patent infringement: The most common form of infringement is direct
infringement, where the Invention that infringes patent claims is actually described, or
the Invention performs substantially the same function.
• Indirect patent infringement.
▪ Infringement by inducement is any activity by any third party that causes
another person to infringe the patent directly.
▪ Contributory infringement is the sale of components of material that are made
for use in a patented invention and have no other commercial use.
• Patent infringement generally categorized into two, i.e. Literal Infringement and
Infringement In The Doctrine Of Equivalents.
▪ “literal infringement” means that each element heard in a claim has the same
correspondence in the alleged infringement device or process.
▪ Even if there are no literal violations, a claim can be infringed under the doctrine
of equivalents if the accused device or some other element of the process
performs the same function, in substantially the same way to obtain
substantially the same result.
• The doctrine of equivalents is considered as an equitable doctrine which effectively
expands the scope of the claims beyond their literal language to the true scope of the
inventor’s contribution to the art.

Remedies
 • Measures available in patent infringement litigation may include monetary relief, equal
relief and costs, and attorneys’ fees.
• Monetary Relief-
▪ Indemnity compensation – A patent owner may have lost profits for
infringement when they established the value of the patent.
▪ Increased damage – Up to three times, compensation charges can be charged in
cases of will or violation of will.
• Equitable relief-
▪ Preliminary injunction – Orders made in the initial stage of lawsuits or lawsuits
that prevent parties from doing an act that is in dispute (such as making a patent
product).
▪ Permanent injunction – A final order of a court which permanently ceases
certain activities or takes various other actions.

Defence for infringement.

• Non-working after patenting something. Patentees right of exclusivity in his invention
is that the patentee should also "work the patent", i.e., commercialize the invention to
the fullest extent.
• Section 83 (a) stipulates that "patents are granted to encourage inventions and to secure
that the inventions are worked in India on a commercial scale and to the fullest extent.
• Use of Patented inventtion on a foreign vessel or aircraft accidentally or temporarily in
territory of India.
• The Bolar exemption, for reasons attributed to development and submission of
information to regulatory authorities in India or elsewhere. Section 107A (a). Bayer
Corporation vs Union of India.
• Paralell Imports. Importation of patented products by any person from any other person
duly authorised to sell or prroduce. Section 107A(b)
• Government use.
• Research exemption

Groundless threat
• A groundless threat is one when a party threatens another party with legal proceedings
without having a basis for the threats. The threat could be produced in the form of either
written communication or orally. For instance, if a threat to prosecute for infringement
 is made where there has been no infringement, or the IP right of the owner is invalid,
then the threat is held to be groundless.
• Section 106 of the Patents Act, 1970 provides for a mechanism to protect the interests
of individuals and companies against such baseless threats.
1. A declaration in the judgement by the court that the threats are groundless and
unjustifiable to be faced by the aggrieved.
2. An interim or permanent injunction against the continuance of any groundless
threats.
3. Any damages in lieu of monetary losses incurred or reputation being damaged
by such groundless threats can be claimed in the Court of Law to be rewarded.
• Bata India limited v. Vitaflex Mauch Gmbh
▪ The Delhi HC ruled that the threats without any grounds made by Vitaflex in
the form of legal notices were unjustifiable and wrong and Bata was entitled to
seek injunction against any such threats under section 106 of the Patents Act,
1970.
• Groundless threats in IPR can hamper the research and development process and hence
to protect individuals and businesses from such abuse, this provision of Patents Act,
1970 exists. It protects legitimate legal right of the aggrieved parties and promotes
innovations and inventions among them without any scope of hesitation.

SECTION 3
• What is not Patentable.
▪ Section 3 (a)Inventions that are against the natural laws
▪ Section 3(b) Inventions which go against public morality
▪ Section 3 (c) Inventions that are a mere discovery of something that already
exists in nature.
▪ Section 3(d) Mere discovery of a new form of a known substance which does
not result in the enhancement of the known efficacy of that substance
▪ Section 3 (i)- Application of substances to the body for purely cosmetic
purposes is not therapy. Prosthetics and artificial limbs are patentable though
because they’re not just aesthetic.
▪ Section 3(j)-Microorganisms, other than the ones discovered from the nature,
may be patentable. For instance, genetically modified microorganisms may be
patentable subject to other requirements of Patentability.
 ▪ Layout of IC and Semiconductors etc is not patentable but is governed under
Integrated Circuit Layout Designs Act, 2000.
▪ Section 3 (n) Presentation of information is non-patentable
▪ Section 3(o) The topography of integrated circuits is non-patentable
▪ Section 3 (p) Traditional Knowledge is not an invention- Dhanpat Seth And Ors.
vs Nil Kamal Plastic Crates Ltd, AIR 2008 HP 23- Insecticidal properties of
Neem.
▪ Atomic-Energy inventions are non —patentable (ABSOLUTE EXCEPTION)

Compulsory licensing
• Compulsory licenses are permissions that are given to a third-party by the Comptroller
General of Patents to make, use or sell a product or use a process that has been patented
to make a certain product, without the need of the authorization of the owner of the
patent
• Section 84-
▪ That the reasonable requirements of the public with respect to the patented
invention have not been satisfied, or
▪ that the patented invention is not available to the public at a reasonably
affordable price, or
▪ that the patented invention is not worked in the territory of India.
• The reasonable requirements of the public are deemed not to have been satisfied where:
▪ The patentee refuses to grant a license or licenses on reasonable terms; and
o a trade or industry is prejudiced; or
o demand for the patented article has not been met to an adequate extent;
or
o a market for exportation of the patented article manufactured in India is
not being supplied or developed; or
o the establishment or development of commercial activities in India is
prejudiced.
▪ The patentee imposes a condition on the patented invention;
▪ Non-working of the patent in the territory of India;
▪ Working of the patented invention in India on a commercial scale is prevented
by the importation from abroad.
 • A compulsory license can be granted on an application by any interested person,after
the expiry of three years from the date of grant of the patent.
• India’s first case of granting compulsory license– India’s first case of granting
compulsory license was granted by the Patent office in 2012 to an Indian Company
called Natco Pharma for the generic production of Bayer Corporation’s Nexavar.
• However, Natco Pharma is paying the royalties to Bayer at a rate of 6% of all sales on
a quarterly basis in accordance with the guidelines set by the United Nations
Development Programme
• Impacts of Compulsory Licesnsing
▪ Innovation will be strengthened.
▪ Competition & Cost- Compulsory licensing will increase the number of
companies producing generic medicines. Hence the supply will go up, and the
cost will come down.

The Ericsson cases on standard essential practice.

• Intex and Ericsson (FAO(OS) (COMM) 296/2018, and FAO(OS) (COMM) 297/2018),
in March 2023, the High Court of Delhi held that a SEP owner has a right to be granted
an interim injunctive relief, with the payment of royalties in full, irrespective of the
pendency of suits for deciding if a SEP is valid and essential or not.
• Intex contended that Ericsson’s SEPs were not valid and essential, and filed a
revocation petition to declare Ericsson’s SEPs as invalid. It further argued that the
license terms were not FRAND compliant as Intex was using only eight patents and
Ericsson had provided terms for a whole global portfolio which Intex found to be unfair.
And most importantly, Intex claimed that for an interim injunctive relief in matters
pertaining to SEPs in India, Ericsson should satisfy the four-fold test, which was
devised in the 2022 judgment of Nokia Technologies Oy v. Guangdong Oppo Mobile
Telecommunications Corp Ltd & Ors (2022/DHC/004935).
• The Delhi Court concluded that the four-fold test is erroneous. As a result, the appeal
filed by Ericsson was allowed and a preliminary injunction was made available to
Ericsson for the payment of the full amount of royalty as it was able to satisfy the court
that its patents were prima facie valid. The court found that the license terms proposed
to Intex were FRAND compliant and clarified that the SEPs holder can license an entire
portfolio of SEPs.
• Said that, as a general remark, we point out that the above four-steps test should still
have some relevance, especially in proceedings where patent owners ask for an
injunction to put pressure on implementers. Indeed, meeting the specific conditions
within the four-steps test before issuing an injunction (both preliminary and final)
would make sure that a balance is reached between the interests of SEPs owners and
those of implementers. After all, when an economic compensation is available to SEPs
holders, preventing a business from using the patents in question should generally be
considered an unacceptable measure.
• Thus, Indian judges have already noted that there is a duty to balance the rights of both
patent owners and standard implementers. This is important as the debate and case law
on SEPs and FRAND licences in India is still in its infancy and uniformity of licensing
practices for all stakeholders in this field should be guaranteed. Perhaps, also to avoid
legal uncertainty and guarantee a uniform application of rules when it comes to SEPs,
new legislation is needed in India to clarify what FRAND terms mean, and the
obligations stemming from a FRAND promise. Other relevant issues such as
introducing clear rules on patent essentiality and validity checks should be reflected in
a legislative text. Indeed, at the moment, neither the Indian patent act nor the
competition act mention SEPs.