RN SHETTY TRUST®

RNS INSTITUTE OF TECHNOLOGY

Affiliated to VTU, Recognized by GOK, Approved by AICTE, New Delhi
(NAAC ‘A+ Grade’ Accredited, NBA Accredited (UG - CSE, ECE, ISE, EIE and EEE)
Channasandra, Dr. Vishnuvardhan Road, Bengaluru - 560 098
Ph:(080)28611880,28611881 URL: www.rnsit.ac.in

V SEMESTER Academic Year: 2023 – 24 Faculty: Dr. Andhe Pallavi

SUBJECT CODE SUBJECT NAME Hand Out details
Research Methodology &
21RMI56 Module IV
Intellectual Property Rights

Module 4: Part A
Copyrights and Related Rights: Classes of Copyrights. Criteria for Copyright. Ownership
of Copyright. Copyrights of the Author. Copyright Infringements. Copyright Infringement is
a Criminal Offence. Copyright Infringement is a Cognizable Offence. Fair Use Doctrine.
Copyrights and Internet. Non-Copyright Work. Copyright Registration. Judicial Powers of the
Registrar of Copyrights. Fee Structure. Copyright Symbol. Validity of Copyright.
Copyright Profile of India. Copyright and the word ‘Publish’. Transfer of Copyrights to a
Publisher. Copyrights and the Word ‘Adaptation’. Copyrights and the Word ‘Indian Work’.
Joint Authorship. Copyright Society. Copyright Board. Copyright Enforcement Advisory
Council (CEAC). International Copyright Agreements, Conventions and Treaties. Interesting
Copyrights Cases.

Copyrights and Related Rights

‘Copyrights’ refer to the legal rights provided by law to the original creator of the work in the fields of
literature and computer software. The ‘Related Rights’ encompass the author’s work in the fields of
dramatics, sound recording, film/video recordings, paintings, architecture, etc. Copyrights and Related
Rights are one of the categories of IP and governed by the Copyright Act, 1957 of India. This Act
provides rights of reproduction, communication to the masses, adaptation and translation of the work.
The words ‘author’ and ‘work’ need to be understood from the perspective of Copyrights. The term
‘author’ refers to an individual who develops the content (of work). The author can be a writer
(literary work), computer programmer (software), composer (musical work), producer (cinema films,
sound recording), photographer (photos). The term ‘work’ is a task undertaken in the fields of
literature, dramas, music, artistic, cinematograph film and sound recording.

Classes of Copyrights
In India, following classes of Copyrights exist:
 Literature: Books, Essays, Research articles, Oral speeches, Lectures, Compilations, Computer
programme, Software, Databases.
 Dramatics: Screenplays, Dramas.
 Sound Recordings: Recording of sounds regardless of the medium on which such recording is
made e.g. a Phonogram and a CD-ROM.
 Artistic: Drawing, Painting, Logo, Map, Chart, Photographs, Work of Architecture, Engravings,
and Craftsmanship.
 Musical: Musical notations, excluding any words or any action intended to be sung, spoken or
performed with the music. A musical work need not be written down to enjoy Copyright protection.
 Cinematograph Films: ‘Cinematograph Film’ is a visual recording performed by any medium,
formed through a process and includes a sound recording. For example, Motion Pictures, TV
Programmes, Visual Recording, Sound Recording, etc.

Criteria for Copyright

To qualify for Copyright protection, a work must exist in some physical (or tangible) form. The
duration of the existence of the physical form may vary from a very short period to many years.
Virtually any form of expression which can be viewed or listened to is eligible to qualify as Copyright.
Even hurriedly scribbled notes for an impromptu speech are considered copyrightable material.

The Copyright work has to be expressed by the creator in his frame of thought. In other words, the
work has to be original i.e. the author created it from independent thinking void of duplication.
This type of work is termed as an Original Work of Authorship (OWA). It may appear similar to
already existing works but should not be the same. The original work may lack quality or quantity or
aesthetic merit or all these parameters; still, it will pass the test of copyrightable work.
In addition to originality for the work, Copyright protection also requires at least some creative effort
on the part of the author.
There is no minimum limit for the extent of creativeness. It is a subjective matter. The minimal level
of creativity needed for Copyright protection depends on the judgment of the evaluator (adjudicated
by the Office of Registrar of Copyright). As an example, mere changing the dimensions of a book will
not be granted Copyright protection. Similarly, an address book of alphabetically arranged telephone
numbers does not qualify for Copyright protection as it involves a straightforward alphabetical listing
of phone numbers rather than a creative selection of listings.

Ownership of Copyright
The Copyright laws clearly state the ownership of Copyright.
 The person who created the work is considered as the first (original) holder (owner) of the
Copyright.
 In case the author is an employee and has been contracted to do the work by a proprietor (of the
company/firm/society /organization, etc.), the owner of the Copyright shall be the proprietor.
 The government will be the primary owner of the government work in the absence of any kind of
arrangement.
 The person delivering a speech is the first owner of the Copyright.

To obtain permission to use copyrighted material, a request for the same should be made to the legal
owner (of the copyrighted material), which could be the original author, the legal heir (in case of the
death of the author), publisher, etc.
The request must mention the following:
 Title, author and/or editor, and edition.
 Precise material to be used.
 The number of copies.
 The purpose of the material e.g. educational, research, etc.
 Form of distribution e.g. hard copy to classroom, posted on the internet.
 Whether the material is to be sold e.g. as part of a course pack.

Copyrights of the Author

The Copyrights of the creator/author are legally protected under Section 14 of the Copyright Act,
1957. The content (i.e. work) created by the author cannot be used or published by anyone without the
author’s consent. Copyrights provide exclusive rights to the author in the areas of publication,
distribution, and usage. A Copyright owner enjoys two types of rights i.e. Economic Rights (or
Proprietary Rights) and Moral Rights (or Personal Rights).
Economic Rights are associated with financial benefits accruing from the sale of copyrights. As per
the Act, Copyright owners can authorize or prohibit:
 Reproduction of the work in any form, including printed publications or sound recordings.
 Distribution of copies of the work.
 Public performance of the work.
 Broadcasting/communicating the work to the public.

 Translating the work into other languages.

 Adaptation of the work, such as converting a novel into a screenplay.

Moral Rights include ‘Right of Paternity’ and ‘Right of Integrity’. The ‘Right of Paternity’ - even if
the Copyright has been licensed to another party, the original author of the work retains the right to
claim authorship i.e. the name of the author/s will remain even though Copyrights have been
transferred to another party e.g. a book publisher. The ‘Right of Integrity’- the original author has the
right to prevent misuse of the work e.g. alterations/additions/deletions in work resulting in
misrepresentation of the said work or harming the honor and reputation of the author.
It is pertinent to mention that for a work, there can be more than one rights holders, for instance, a
musical sound recording has many rights holders, such as the lyricist, music composer, singer,
musicians and sound recorders.

Copyright Infringements
As per the Copyrights Acts, 1957, the following acts are regarded as an infringement of Copyrights:
 Making copies for sale or hire or selling or letting them for hire without permission.
 Permitting any place for the performance of owned work (in public) where such performance
constitutes an infringement of Copyright.
 Distributing infringing copies for trade or to such an extent to affect the interest of the owner of the
Copyright prejudicially.
 Public exhibition of infringing copies for trade purposes.
 Importation of infringing copies.
 Translating a work without the permission of the owner.

Liability of Owner of an Auditorium/Hall

The owner of an auditorium/hall is liable for punishment if he knowingly allows his premises to be
used for communication of illegal copyright material (songs, music, dramas, etc.) to the public.
If a person permits for profit any place to be used for communicating the work to the public, where
such communication establishes an infringement of the Copyright unless he was not aware of and had
no reasonable ground for believing that such communication to the public would be an infringement
of Copyright, he will be deemed to have committed an offence under the Copyright Act.

Copyright Infringement is a Criminal Offence

According to Section 63 of the Copyright Act, 1957, if any person knowingly infringes the Copyright,
he qualifies for the criminal offence. The punishment awarded for the infringement (of Copyright) is
imprisonment for six months with the minimum fine of ₹ 50,000/-. In case of a second and
subsequent conviction, the minimum punishment is imprisonment for one year and a fine of ₹
1,00,000. There is a dedicated IP division to deal with Copyright cases. Also, there is a Copyright
Board constituted by the Central Government in 1958 to adjudicate certain claims about Copyright.

Copyright Infringement is a Cognizable Offence

A police officer (rank of a sub-inspector or higher) can confiscate the infringed Copyright material
without issuing a warrant and produce the same in the court of law.

Fair Use Doctrine

Any person not possessing a valid license from the owner of the Copyright is not entitled to exploit
the said work. However, Section 52 of the Copyright Act, 1957, provides for certain exceptions to the
infringement of Copyright. As per the rule of law, Copyrighted materials cannot be used by anybody
without the proper consent of the legal owners (of the Copyright).
However, limited use of Copyrighted materials for teaching and research purposes is legally permitted,
under ‘The Fair Use Doctrine’, which comprises of the four-part test:
 The character of the use - use of the work is purely educational, non-profit and personal.
 Nature of the work - The use of work is factual in nature and not imaginative.
 Amount of the portion to be used - permission is not needed if only a small portion of Copyright
protected material is to be used. However, this parameter is debatable now.
 Impact of use on the value of the Copyrighted material - If a small portion of the work is
copied and is not affecting the author’s economic and moral rights, it will be excused from the
infringement.
Detailed information on the examples of the Fair Use Doctrine can be accessed from the official
website (http://copyright.gov.in/exceptions.aspx).
A few examples are listed below:
 If the Copyrighted work is used for personal use i.e. studies or research.
 Quotation mentioned in the Copyrighted work.
 Reporting of current events in the media, such as newspapers, magazines or radios/television.
 Reproduction of the work by teachers or scientific researchers.
 Performance is free of charge by government officials in the performance of their duties e.g.
reproduction of any work for a judicial proceeding or a report of a judicial proceeding.
 Use of any work prepared by the Secretariat of a Legislature.
 Use of the work in a certified copy made or supplied in accordance with any law for the time being
in force.
 Making three or less than three copies of a book (including a pamphlet, sheet of music, map, chart
or plan).
 Bonafide religious ceremony, including a marriage function.

Copyrights and Internet

The twenty-first century is an era of digitization. The method of data transmission has brought
amendments to the existing Copyright laws. One should be careful of Copyright/fair use principles
when downloading material from the internet. There is growing concern about the ability to pull
Copyrighted material from the internet without permission. Note that material may have been placed
on the internet without the author‘s permission.
In general, posting material on the internet by the Copyright owner gives an internet user the right to
use that material for his personal use, but he cannot use the work for commercial purposes.
Electronic distribution of a Copyrighted work should mention the statement that -This work is
protected by Copyright laws and is provided for educational instruction only. Any infringing use may
be subject to disciplinary action and/or civil or criminal liability as provided by law”.
As per Section 2(o) of the Copyright Act, 1957, ‘Literary Work’ includes computer programmes,
tables and compilations, including computer databases. It is mandatory to supply ‘Source Code’ and
‘Object Code’ along with the application for registration of Copyright.
Non-Copyright Work
The works not under the jurisdiction of Copyrights are as follows:
 The ideas, concepts, and principles themselves cannot be protected under Copyright, only the form
in which they are expressed can be copyrighted.
 Facts, such as scientific or historical discoveries, are not copyright protected. Any fact a person
discovers in the course of research cannot be Copyright protected. For example, an author of a book
on ‘Buddhism’ takes ten-fifteen years to gather all the necessary materials and information for his
work. At a great expense, the author travels to various museums, libraries and excavations sites.
However, after the book is published, anyone is free to use the underlying facts, provided they express
the
information on their own.
 Copyright does not protect titles, names, slogans, short phrases, short word combinations, methods,
or factual information.
 Certificates are not considered as Copyrightable subject matter as there is not much scope for
creativity.
 Digitally created works and Copyrighted works transformed into a digital format and placed on the
internet are Copyright protected.
 The Copyright registration for a website, as a whole, is not possible. However, different
components/rudiments of a website can be granted Copyright registration e.g. computer
programmes/software, compilations including computer databases (‘literary works’); photographs,
paintings, diagram, map, chart or plan (‘artistic works’); and works consisting of music including
graphical notation of such work (‘musical works’). However, a separate application for each
component of work has to be filed for seeking Copyright registration.
 A computer or mobile App qualifies for Copyright registration.
An Application is a complete, self-contained computer program that is designed to perform a specific
task. An App usually has dynamic content and is designed for user interaction. It may be used directly
or indirectly in a computer or handheld electronic device.
 If someone swipes your picture/song/video from the internet and uses it for their purposes, it is a
Copyright infringement. By the way - the same is true if you nick some else‘s material for your
purposes.

Copyright Registration
It is not necessary to register a work to claim Copyright. Once a work is created via any medium, the
work receives automatic Copyright safety. In other words, there is no formal request to be submitted
to the office of the Copyright, for acquiring Copyright.
Copyright registration does not confer any rights. It is merely a prima facie proof of an entry in
respect of the work in the Copyright register maintained by the Registrar of Copyrights. The
certificate of registration serves as prima facie evidence in a court in cases of disputes relating to
ownership or creation of Copyright, financial matters, transfer of rights, etc. It is advisable that the
author of the work registers for Copyright for better legal protection. In India, Copyrights matters,
including Copyright registration, are administered under the Copyright Act, 1957 and Copyrights
Rule, 2013. Below mentioned are prominent forms for copyright registration
(https://copyright.gov.in/).
Judicial Powers of the Registrar of Copyrights
The Registrar of Copyrights has the powers of a civil court when trying a suit under the Code of Civil
Procedure in respect of the following matters:
 Summoning and enforcing the attendance of any person and examining him on oath.
 Requiring the discovery and production of any document.
 Receiving evidence on affidavit.
 Issuing commissions for the examination of witnesses or documents.
 Requisitioning any public record or copy thereof from any court or office.
 Any other matters which may be prescribed.

A duly filled application (Form XIV) is submitted to the Copyright Office at the following address:
The Registrar of Copyright, Plot no. 32, Boudhik Sampada Bhawan, Sector 14,cDwarka, New Delhi -
110075.
The application can be submitted by post or online registration through the ‘E-filing facility’
(www.copyright.gov.in).
Any person who is either an author of the work or assignee of the concerned work can file an
application for Copyright.
Usually, it takes around 2-3 months to get the work registered by the Copyright Office. After applying,
there is a mandatory waiting period of 30 days. If any person has any objection to the claim/s made in
the application, he can contact the office of the Registrar of Copyrights. After giving an opportunity
of hearing to both the parties, the Registrar may decide the case in favour or against the author of the
work. Once the objections (if any) are cleared, the application is evaluated by the examiners. If any
doubts/queries are raised, the applicant is given ample time (around 45 days) to clear these objections.
The elements included in Copyright filing to grant are depicted below in the flow chart:
Fee Structure
For each work, a separate application form needs to be submitted, along with the requisite fee. The fee
is not reimbursable in case the application for registration is rejected.
Copyright Symbol
It is not necessary to place the Copyright symbol © with your name and ‘year created’ near your
published or printed materials but if you do, it‘s easier to nail someone for infringement on your
Copyright if you go to court. The important things which may be mentioned as a Copyright mark on
Copyright creation are:
 The Copyright symbol © (the letter C in a circle), or the word ‘Copyright’, or the abbreviation
‘Copr.’
 In the case of compilations or derivative works incorporating previously published material, the
year with the date of the first publication of the compilation or derivative work should be mentioned.
The year date may be omitted for pictorial, graphic, sculptural work, greeting cards, postcards,
stationery, jewellery, dolls and toys.
 The name or the abbreviation by which the name can be recognized of the owner of the Copyright,
or a generally known alternative designation of the owner can be mentioned.
 The elements for sound recordings generally require the same three elements, except the symbol is
℗ (the letter P in a circle) instead.
Validity of Copyright
In general, the validity of Copyright is for 60 years. This period starts either from the year after the
death of the author (in case of literature, dramatic, musical and artistic works) or from the date of
publication of the work (in case of cinematograph films, sound recordings, photographs, posthumous
publications, works of government and works of international organisations).
Copyright Profile of India
A comparative five years (2015-20) study revealed a gradual increase in the number Copyright
applications in the first four years of the study, with a maximum number of applications (21,905)
recorded in the 2019-20 period (Fig. 2.7). The number of applications examined was maximum
(34,388) in 2017-18.
However, it tapered down to 22,658 in 2018-19 and 19,460 in 201920.

A similar trend was observed in the number of Copyright registrations, with a peak (19,997) observed
in 2017-18.

Copyrights profile (India) for the period 2015-20.

Copyright and the word ‘Publish’

A work is considered published when it is in the public domain on an unrestricted basis. For example,
a person writes an article called ‘Life in Himalayas’ and distributes it to a few individuals and/or
societies/organizations with a restriction not to disclose the contents of the article. ‘Life in Himalayas’
has not been published in the Copyright sense. If the author removes the condition of nondisclosure or
posts of this article on the internet (i.e. public domain), it would be considered as published. It is to
be noted that both published and unpublished works can be registered under Copyright.

Transfer of Copyrights to a Publisher

The original authors of the Copyrighted work may not have the wherewithal to widely publicise their
work. Usually, they transfer their rights to publishers for financial benefits, which could be a one-time
lump sum amount or royalties or a combination of the two.
However, transferring Copyrights unconditionally to the publishers (or anybody else) may have some
repercussions for the owner of the Copyright. A publisher may prevent author/s from displaying their
articles on the institute‘s websites. The new owner of Copyright may not even allow the author to
revise his work. In other instances, a publisher might print an insufficient number of hard copies and
also does not show interest in uploading the soft copy of the work on the internet. Hence, one must be
careful in signing an agreement with the publishers. The author may not transfer all the legal rights
bestowed upon him as an author. An agreement may be signed permitting only the print and sale of
hard copies by the publishers while retaining digital rights for the said work. An author may also put a
time limit for the printing and sale of the books/articles, etc.
Before the digital era, authors used to rely completely on publishers for the dissemination of their
work. However, in the internet era, the dependency on publishers has almost diminished.
The author is in a position to bypass the publishers and bring his work in to the public domain. But
this freedom cannot be enjoyed by those who are already under the publishing contract.
Even though the author has completely and exclusively licensed out his work, the Copyright Act has a
provision under ‘termination of transfer’ to reclaim his Copyright. Under this provision, certain
Copyright agreements can be terminated after 35 years of the agreement. This statutory termination
right applies even though it is not incorporated in the agreement. It is strongly advised that authors
must apply their mind while signing the Copyright agreement.

Copyrights and the Word ‘Adaptation’

In the world of Copyright, the word ‘Adaptation’ signifies the creation of a similar work based upon
contemporary work.
The Copyright Act defines the following actions as adaptations:
a) Transformation of a dramatic work into a non-dramatic work.
b) Changing a literary or artistic work into a drama.
c) Re-arrangement of a literary or dramatic work.
d) Depiction through pictures of a literary or dramatic work.
e) The making of a cinematograph film of a literary or dramatic or musical work.

Copyrights and the Word ‘Indian Work’

‘Indian work’ means a literary, dramatic or musical work provided
 The author of the work is an Indian citizen.
 The work is first published in India.
 In the case of an unpublished work, at the time of the making of the work, the author of the work
was a citizen of India.

Joint Authorship
‘Work of Joint Authorship‘ means a work produced by the collaboration of two or more authors in
which the contribution of one author is not distinct from the contribution of the other author or authors.

Copyright Society
Many a time, authors and other owners of Copyrights are either unable or lose track of all the uses of
their work, including the collection of royalties, infringement issues, etc. To overcome these hurdles,
Copyright Societies have cropped up. As per Section 33 of the Copyright Act, 1957, a Copyright
Society is a registered collective administration society formed by authors and other owners of the
Copyright.

Society can perform the following functions:

 Keep track of all the rights and infringements related to their clients.
 Issue licences in respect of the rights administered by the society.
 Collect fees in pursuance of such licences.
 Distribute such fees among owners of Copyright after making deductions for the administrative
expenses.

A Copyright Society can be formed by a group of seven or more copyright holders. The term of
registration of a Copyright Society is for five years.
The registered Copyright Societies in India are:
 Society for Copyright Regulation of Indian Producers for Film and Television (SCRIPT) 135
Continental Building, Dr. A.B.Road, Worli, Mumbai 400 018, (for cinematograph and television
films).
 The Indian Performing Right Society Limited (IPRSL), 208, Golden Chambers, 2nd Floor, New
Andheri Link Road, Andheri (W), Mumbai- 400 058 (for musical works).
 Phonographic Performance Limited (PPL) Flame Proof Equipment Building, B.39, Off New Link
Road, Andheri (West), Mumbai 400 053 (for sound recordings).

Copyright Board
The Copyright Board is a regulatory body constituted by the government, to perform judicial
functions as per the Copyright Act of India. The Board comprises of a Chairman and members (2-14)
to arbitrate on Copyright cases. The Chairman of the Board is of the level of a judge of a High Court.
As per the Act, the Board has the power to:
 Hear appeals against the orders of the Registrar of Copyrights.
 Hear applications for rectification of entries in the Register of Copyrights.
 Adjudicate upon disputes on the assignment of Copyrights.
 Grant compulsory licences to publish or republish works (in certain circumstances).
 Grant compulsory licence to produce and publish a translation of a literary or dramatic work in any
language after seven years from the first publication of the work.
 Hear and decide disputes as to whether a work has been published or about the date of publication
or the term of Copyright of a work in another country.
 Fix rates of royalties in respect of sound recordings under the cover-version provision.
 Fix the resale share right in original copies of a painting, a sculpture or a drawing and original
manuscripts of a literary or dramatic or musical work.

Copyright Enforcement Advisory Council (CEAC)

In 1991, the Government set up a CEAC to review the progress of enforcement of the Copyright Act
periodically and advise the Government regarding measures for improving the enforcement of the Act.
The term of the CEAC is three years. The CEAC is reconstituted periodically after the expiry of the
term.

International Copyright Agreements, Conventions and Treaties

Any creative work is not protected and enforced automatically worldwide because Copyright laws are
territorial by nature i.e. Laws are valid only in the country in which they have been created.
To secure protection to Indian works in foreign countries, the author needs to apply separately to each
country or through dedicated international ‘Conventions on Copyright and Neighbouring (related)
Rights’, provided a country is a member of such Conventions.

India is a member of the following Conventions:

 Berne Convention for the Protection of Literary and Artistic Works, 1886.
(https://www.wipo.int/treaties/en/ip/berne/).
 Universal Copyright Convention, 1952.
(http://www.unesco.org/new/en/culture/themes/creativity/creative-industries/copyright/universal-
copyright-convention/).
 Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organizations, 1961.
(https://www.wipo.int/treaties/en/ip/rome/).
 Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties, 1979.
(https://treaties.un.org/doc/Treaties/1979/12/19791213%2009-00%20AM/Ch_XXVIII_01_ap.pdf).
 Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1995.
(https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm).

In India, Copyrights of foreign authors, whose countries are members of the Berne Convention for the
Protection of Literary and Artistic Works (1888), Universal Copyright Convention (1952) and the
TRIPS Agreement (1995) are protected through the International Copyright Order.
Interesting Copyrights Cases
David vs. Macaques, Indonesia, 2011 - In 2011, a UK-based photographer David Slater put his
camera on a tripod in the wildlife sanctuary to click the photograph of Macaques monkeys. The
Macaques were very curious about the equipment and they found the flashlight fascinating. One
monkey clicked a selfie photograph which became very famous and legally controversial on the
matter of Copyright. Theoretically, the monkey is the holder of Copyright as he clicked the photo.
Practically, David Slater was the claimant of the Copyright. The dispute entered judicial quarters
between People for the Ethical Treatment of Animals (PETA) and David Slater. Now, the settlement
has been concluded. The photographer i.e. David Slater withholds the Copyright of the picture for
having a substantial contribution, but he would pay 25% of the royalty share to the wildlife sanctuary
where the monkey lives (https://www.wipo.int/ wipo_magazine/en/2018/01/article_0007.html).

‘Happy birthday to you’ case law - According to the Guinness World Records, 1998, it is the most
recognized song in the English language. The melody of ‘Happy Birthday to You’ originates from the
song ‘Good Morning to All’, which has traditionally been attributed to American Sisters, namely
Patty Smith Hill and Mildred J. Hill, in 1893. The sisters composed the melody of ‘Good Morning
to All’ to make it more interesting for the children. In 1935, Summy Company registered the
Copyright on the Piano Setting on the Song.
In 1999 Warner/Chappell acquired the company and started taking royalty for the happy birthday
song and earned a huge amount.
After mediation by the Federal court, Warner Music, through its publishing subsidiary Warner
/Chappell, agreed to pay the settlement to a class of ‘thousands of people and entities’ who had paid
licensing fees to use the song since 1949 because only the melody was registered and not the lyrics.
Now the song is in the public domain.

Amitabh Bachchan to lose Copyrights over his father’s works in 2063 - Father of renowned actor
Mr. Amitabh Bachchan, (late) Shree Harivansh Rai Bachchan was a noted poet and Hindi writer.
His most famous work was Madhushaala (1935). He was the recipient of the Sahitya Akademi award
and the Padma Bhushan. He also did Hindi translations of Shakespeare’s Macbeth and Othello.
He passed away on 18th January 2003, at the age of 95. As per the Copyright Act, 1957, the rights
over his work will be completed in the year 2063 (rights remain with the author for his lifetime plus
60 years)
Trademark

In simple language, a Trademark (or Trade Mark) is a unique symbol which is capable of identifying
as well as differentiating products or services of one organization from those of others. The word
‘Mark’ stands for a sign, design, phrase, slogan, symbol, name, numeral, devise, or a combination of
these. Essentially, the Trademark is anything that identifies a brand to a common consumer.

Eligibility Criteria
For goods/services to be legally classified as Trademark, they need to pass the following conditions:
 Distinctiveness - The goods and services for which the protection is sought should possess enough
uniqueness to identify it as a Trademark. It must be capable of identifying the source of goods or
services in the target market.
 Descriptiveness - The Trademark should not be describing the description of the concerned goods
or services. Descriptive marks are unlikely to be protected under Trademark law.
However, descriptive words may be registered if they acquire ‘secondary meaning’, such as the brand
name ‘Apple’ is used by a USA based multinational company that manufactures electronic gadgets.
 Similarity to the prior marks - The mark should be unique and should not be having similarity to
the existing marks.

Who Can Apply for a Trademark

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

Acts and Laws

In India, Trademarks are governed under The Trademarks Act, 1999
(http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf).
The Trademark rules are governed by Trademarks Rules, 2002, (http://www.ipindia.nic.in/writeread
data/Portal/IPORule/1_56_1_1_59_1_tmr_rules_2002_1_.pdf).
The Acts and Rules have been amended from time to time. The latest amendments were done in 2010
and 2017 for Trademarks Acts and Trademarks, respectively. The administration of matters pertaining
to Trademarks is carried out by the Office of CGDPDTM, GoI.

Designation of Trademark Symbols

Represents that the Trademark is unregistered. This mark can be used for promoting the
goods of the company.

Represents that the Trademark is unregistered. This mark can be used for promoting brand
services.

Represents a registered Trademark/Service. The applicant of the registered Trademark is its

legal owner.

Classification of Trademarks
Goods and Services under Trademarks are classified as per the ‘Nice Agreement’ (1957) administered
by WIPO. A total of 149 countries (84 state parties who are signatory to the Agreement and 65
additional states who are following this classification for the Trademarks) and others (African
Intellectual Property Organization, African Regional IP Organization and Trademark Office of
European Union) are using the same Trademark classification.
Trademark classification comprises of 45 classes, out of which 34 are for goods and 11 are for
services. (http://euipo.europa.eu/ec2/static/html/ nice-general-remarksen.html; jsessionid =
8FBC790A663FAC9092ACCDD9ED1AC65E.ec2t1).

Two examples of the classes are:

Class 1 is for Chemicals for use in industry, science and photography, agriculture, horticulture and
forestry; Unprocessed artificial resins, unprocessed plastics; Fire extinguishing and fire prevention
compositions; Tempering and soldering preparations; Substances for tanning animal skins and hides;
Adhesives for use in industry; Putties and other paste fillers; Compost, manures, fertilizers;
Biological preparations for use in industry and science.
Class 45 is for legal services; Security services for the physical protection of tangible property and
individuals; Personal and social services rendered by others to meet the individuals‘ needs.
The Vienna codification established under the Vienna Agreement (1973) is an international
classification of the figurative elements of marks. The relevant Vienna code class can be searched on
the link: https://www.wipo.int/classifications/ nivilo/vienna/index.htm?lang=EN#. The classification
is used to divide all figurative elements into categories (from 1 to 29), divisions (from 1 to 19) and
sections (from 1 to 30). For example, the representation of "a little girl eating" belongs to Category 2
(Human beings), Division 5 (Children), Main Section 3 (Girls). If auxiliary sections are used, the
figurative element can be identified additionally with the Auxiliary Section 18 (Children drinking or
eating, Code A 2.5.18). The codification of this example will be then indicated as 2.5.3, 18 (main and
auxiliary sections).
Registration of a Trademark is Not Compulsory
Although, registration of a Trademark is not compulsory, registration provides certain advantages to
the proprietor of the Trademark, such as:
 Legal Protection – prevents the exploitation of the Registering Trademark by other
companies/organizations/individuals, without proper authorization by the legal owner/s of the
Trademark. In case of legal suits, a registered Trademark can serve as a potent evidence of the lawful
proprietorship of the Trademark.
 Exclusive Right - grants the Trademark owner full rights to use it in any lawful manner to promote
his business.
 Brand Recognition - products/ services are identified by their logo, which helps create brand value
over time. A strong brand is a huge pull for new customers and an anchor for existing customers.
Registering a Trademark early and using it will create goodwill and generate more business for the
brand owner.
 Asset Creation - registered Trademark is an intangible property of the organization. It can be used
for enhancing the business of the company as well as drawing new clients and retaining old one by the
account of brand identification.
To find out more about Registered Trademarks in India, one may look at
http://www.ipindia.nic.in/writereaddata/Portal/ Images/pdf/well-known-trademarks-updated-
newone.pdf.
It is pertinent to mention that no legal course of action can be taken against the unlawful use of an
unregistered Trademark. For unregistered marks (sometimes known as ‘Common Law Trademarks’,
which are defined as the law rights which generally do not require formal registration for enforcement)
action can be brought against any person for the passing off goods or services as the goods or services
provided by another person. In such cases, the unregistered Trademarks have to prove the
establishment of goodwill or reputation connected with the goods or service.
Validity of Trademark
In India, a registered Trademark is valid for 10 years. The period can be extended every 10 years,
perpetually. As per the Indian Trademarks Act, the renewal request is to be filed in the form ‘TM-R’
within one year before the expiry of the last registration of the mark.

Types of Trademark Registered in India

Trademark can be a word that must be able to speak, spell and remember. It is highly recommended
that one should choose the Trademark like invented word, created words, and unique geographical
name. One should refrain from Trademarks like common geographical name, common personal name
and the praising words which describe the quality of goods, such as best, perfect, super, etc. To ensure
all these characteristics in a Trademark, it is suggested to conduct a market survey to ensure if a
similar mark is used in the market.

Following are some examples of the registerable Trademarks:

 Any name including personal or surname of the applicant or predecessor in business or the
signature of the person e.g. the Trademark ‘BAJAJ’ is named after industrialist Mr. Jamnalal Bajaj.
 A word having no relevance to the product/services e.g. Trademark ‘INDIA GATE’ is being used
for food grains and allied products.
 Letters or numerals or any combination thereof e.g. ‘YAHOO’ is the abbreviation of the phrase
‘Yet Another Hierarchical Officious Oracle’. It has now become a worldwide famous Trademark.

Some of the famous examples of Trademarks

Note: Trademark Registry will object to yet to be registered Trademark if it is similar in looks or sound to the ones already
registered e.g. a keyword like Ford can have the following terms that are similar sounding: Foard, Phord, Fordd, Forrd. In
case one wishes to carry out a search (identical as well as similarity), one may use the free government portal
http://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx.
Trademark Registry
In India, the operations of Trademarks are carried out from five cities i.e. Delhi, Mumbai, Ahmadabad,
Kolkata, and Chennai. Each city has been assigned a bunch of states (Table 2.8). The businesses
located in a particular state can only use the services of the assigned Trademark Registration Office.
In the case of foreign applicants, jurisdiction is based on the location of the office of the applicant’s
agent or attorney.

Table 2.8: Territorial jurisdiction of Trademark registration offices.

Process for Trademarks Registration
To seek Trademark registration, the proprietor of the Trademark has to fill an application. The
proprietor may choose to hire an agent to fill and submit the application on his behalf. Before
applying, the applicant needs to conduct a prior art search to ensure the registration criteria.
Prior Art Search - Prior to applying for Trademark registration, it is always prudent to check whether
the intended Trademark is already registered or not. Also, it is ascertained whether the intended
Trademark is not similar to the ones already registered. The requisite search can be carried out using
various web portals, such as:
 Public search for Trademarks by CGPDTM
(https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx).
 WIPO‘s Global Brand Database (https://www3.wipo.int/branddb/en/).
 Trademark Electronic Search System (TESS).
(http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4805:za847u.1.1)
 MARKARIA Trademark Search Engine (https://trademarksearch.marcaria.com/en/asia/india-
trademark-search).
 VAKIL Search (https://vakilsearch.com/trademarksearch/trademarks?search=bajaj).

Once the ‘prior art search’ is over and the applicant is convinced about the distinctiveness of the
Trademark, he can proceed to fill the application form for registration (TM-A). The application is
filed at the Trademarks Office subject to the jurisdiction of the applicant.

The steps involved in the registration process are as follows:

 After the prior art search has been conducted, the applicant can apply for the registration on his
own or with the help of a certified agent.
 The application is assigned an application number within a few days. The same can be tracked
online at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx.
 The application is scrutinized by a professional examiner. If everything is in order, the particulars
of the application are published in the official Trademark journal (http://www.ipindia.nic.in/journal-
tm.htm). Otherwise, he will send the objections to the applicant for rectification. Based on the
satisfactory response, the examiner would recommend the revised application to be published in the
journal. If the application is rejected, the applicant may approach the Intellectual Property Division to
challenge the rejection of an application by the examiner.
 Once the Trademark is published in the official journal, the public has an opportunity to file an
objection, if any, within 90 days. After hearing both the parties, the officer decides whether to proceed
further for the grant of Trademark or disallow the grant of Trademark. In case of unfavourable
outcome, the applicant has the right to contest the decision in front of the IPAB.
 Once the application has successfully completed all formalities, a Trademark registration
certificate is issued in the name of the applicant.

Figure 2.8: Flow chart for the process of Trademark Registration

One should keep in mind that while filing an application for the registration of a Trademark, an
English translation of the non-English words has to be provided. If the applicant wishes to claim the
priority from an earlier-filed application, he has to provide details like application number, filing date,
country and goods/services of that application.
Important Queries/Facts About Trademarks
Can any correction be made in the application or register
Yes, The rectifications are possible, but the applicant has to ensure that the corrections made in the
Trademark do not alter its identity significantly.
Can a registered Trademark be removed from the register
Yes, it can be removed if:
 Trademark was registered without any bona fide intention of using it.
 If the Trademark is not being used for a continuous period of 5 years from the registration date or 3
months prior to filing the application for registration.
 Registered Trademark was disallowed but inadvertently existed in the official register.
 Trademark Registrar has the power to terminate a registered Trademark on a suo moto basis.
Is the sound or smell registrable as a Trademark
Yes, sound or smell is registrable as a mark, as long as it is distinct and can be reproduced
graphically. The Trademark, ‘4711 cologne’ has been registered as a chemical formula. The sound
can be registered as a Trademark, provided it can be recorded in MP3 format and depicted graphically.
Can a registered user restrain the third party from using an identical or similar mark which is not
registered
There is no clear cut answer for such situations. It depends on the circumstances of the matter. But
ordinarily, a registered user cannot restrain the third party from using identical or similar marks if the
third party has been continuously using the mark concerning the same goods or services from a date
prior to the date of use of the registered mark or date of registration.
According to the Trademarks Act, 1999, the rights and protection in the form of remedies are not only
to the registered mark but also to the unregistered Trademarks. Although, a registered Trademark has
been given a statutory remedy under section 28 of the Act, but 27(2) of the Act provides a remedy for
an unauthorized use of unregistered Trademark. Passing off is a common law tort which is most
commonly used to protect goodwill that is attached to the unregistered Trademarks. The action of
passing off is available to both registered and unregistered Trademarks, but a suit for infringement is
available for only registered Trademarks.
Seeking Trademark protection in a foreign country – To file the Trademark in a foreign country,
there are two options available for the applicant. He can either file the Trademark application with the
Trademark Office of the country in which he wishes to seek protection, or he can use WIPO‘s Madrid
System through which the registration can be filed in multiple countries by claiming priority of one of
the signatory countries. This priority has to be claimed within six months of the first filing. The
applicant can file a single application for seeking protection in any number of countries that are
members of WIPO by paying a single set of fee.
List of jurisdictions that can be accessed through Madrid Protocol for filing Trademark is available at
http://www. wipo.i nt/treaties/en/ShowResults.jsp?treaty_id=8.
Trademarks Statistics
Figure 2.9 represents the statistics for Trademarks (filed, examined and registered) for the period
2010-20. During this period, an increase of 95%, 65% and 154% was observed in the parameters of
trademarks filed, examined and registered, respectively. Overall, a gradual increase was seen in the
number of TM filed, but a zig-zag curve was observed for the TM examined for the period 2010-16.
The highest number of TM applications (5,32,230) were examined in 2016-17 followed by dip (nearly
two folds) in the following year (2017-18). The following two years (2018-20) showed some recovery,
with 3,38,551 applications examined in 2019-20. In case of TM registration, first, five years (2010-15)
showed a downward trend. But, a significant leap of nearly four-folds was observed in the next year
i.e. 2016-17. The maximum number of TM (3,16,798) were registered in the year 2018-19.
International Treaties and Conventions
There is a provision to file an international application for the Trademarks to seek protection in other
Convention countries. The rules and regulations to file international applications in Convention
countries are concluded under the following treaties and agreements administered by WIPO.
 The Madrid Agreement for International Registration of Marks (1891)
(wipo.int/treaties/en/registration/madrid/).
 The Nice Agreement for International Classification of Goods and Services (1957).
(https://www.wipo.int/classifications/nice/en/index.html).
 The Trademark Law Treaty (TLT) (1994) (https://www.wipo.int/
treaties/en/ip/tlt/summary_tlt.html).
 Vienna Agreement (1973) for the Classification of Figurative Marks
(https://www.wipo.int/classifications/vienna/en/preface.html).

Famous Case Law:

Coca-Cola Company vs. Bisleri International Pvt. Ltd.
‘MAAZA’, a popular mango fruit drink in India, is a registered Trademark of an Indian company,
Bisleri International Pvt. Ltd.
The company transferred the rights (formulation, IPR and goodwill, etc.) to a beverage company,
Coca-Cola, for the Indian Territory.
However, in 2008, the Bisleri Company applied for registration of Trademark ‘Maaza’ in Turkey and
started exporting the product with the mark ‘MAAZA’. This was unacceptable to the Coca-Cola
Company and thus filed a petition for permanent injunction and damages for passing-off and
infringement of the Trademark.
It was argued on behalf of Plaintiff (Coca-Cola Company) that as the mark ‘Maaza’ concerning the
Indian market was assigned to Coca-Cola, and manufacture of the product with such mark, whether
for sale in India or for export, would be considered as an infringement. After hearing both the parties,
the court finally granted an interim injunction against the defendant (Bisleri) from using the
Trademark MAAZA in India as well as for the export market, which was held to be an infringement
of Trademark.