1

IPR
VBCL UDUPI
PRAVEENA BABU C, B. Com, MBA, LL. B
VIDYA VINOD, BSc, LL. B
VIJAY L, BE, LL. B
80-20 MARKS PATTERN
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UNIT 1

10 MARKS

1. What is Intellectual Property Right? Examine the different forms of Intellectual

Property Rights. (2)
2. Define Patent and explain the procedure of obtaining patent. (2)
3. What is Intellectual property? Explain the laws relating to intellectual properties in
India.
4. Define patent. Explain the principles underlying the patent law in India.
5. Examine the concept of intellectual property rights and the historical background of the
development of intellectual property rights.
6. Examine the importance and types of specification under the patent law.
7. The protection of industrial properties is a necessity than a compulsion'. Elucidate
8. What is patent? Explain legal requisites for patenting.
9. What are the factors responsible for the growth of patent law? Explain.
10. What is a specification? Explain its kinds along with legal requisites for its submission.

6 Marks

1. Write a note on Specification

2. Write a note on Infringement of patents
3. Write a note on patentable inventions
4. 'Z' a person has invented an antivirus software for the protection of computers and wants
to obtain a patent for it. Advise him.
5. An employee working for a firm comes out with an invention after much efforts in the
laboratory. But after the invention, the employer obtains patent in the name of firm on
the invention. Which of the theory supports employee's position?
6. Write a note on 'Rights of patentee'. (2)
7. 'X' has an invention relating to atomic energy and wants to obtain patent for it. Advice
him.
8. The controller of patent in India rejects an application being submitted by the applicant
to seek patent relating to a method and device for accessing information sources and
services on the web holding it as non-patentable. The applicant challenges it before the
High court. Decide.
9. Patent agent.
10. A petitioner challenges Section 126 of Patent Act as unconstitutional on the ground that
it goes against Article 19(1)(g) of the Constitution of India as the said Section does not
permit advocates to carry-out patent practice. Decide
11. Surrender of patent
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10 MARKS

1. What is Intellectual Property Right? Examine the different forms of

Intellectual Property Rights. (2)

INTRODUCTION

Intellectual Property law dates at least as far back as medieval Europe. The first known use of
the term Intellectual Property dates back to the time, when an article published in the Monthly
Review in 1769 used it as a phrase. Intellectual property rights are the rights given to persons
over the creations of their minds. They usually give the creator an exclusive right over the use
of his/her creation for a certain period of time.

DEFINITION

IPR are exclusive legal rights that covers the privileges given to individual who are the owner
and inventors and have created something with their intellectual creativity. The right given to
a person over the creation of their mind, inventions, literarial artistic works, symbols and names
used in commerce. They help Giving the creators an exclusive rights his or her works for a
certain period of time.

Intellectual Property Rights:

Intellectual property rights can be defined as the rights given to people over the creation of
their minds. They usually give the creator an exclusive right over the use of his/her creations
for a certain period of time. The different types of Intellectual Property Rights are:

1. Patents
2. Copyrights
3. Trademarks
4. Industrial designs
5. Geographical indications of goods
6. Trade Secret
7. Plant varieties and Farmers Rights

1.PATENTS

The subject matter of a patent right is an invention such as the idea of a new process, instrument
or manufacture. The person by whose skill or labour the invention or a new process or
manufacture is ‘introduced’ has the exclusive right of patent in it. This is granted to the inventor
by the State. The patents act, 1970 deals with the Patents in India.
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Sec 2(m): "patent" means a patent for any invention granted under this Act;

“A patent is an exclusive right granted by a country to the owner of an invention to make, use,
manufacture and market the invention, provided the invention satisfies certain conditions
stipulated in the law.”

Sec 2(j)"invention" means a new product or process involving an inventive step and capable
of industrial application;

The Indian patent laws were first promulgated in 1856. These were modified from time to time.
New patent laws were made after the independence in the form of the Indian Patent Act 1970.
The Act has now been radically amended to become fully compliant with the provisions of
TRIPS. The most recent amendment was made in 2005.

Patent shall be granted if it fulfills the following requirements:

• Newness
• Usefulness
• Non-Obviousness
• Industrial application.

Patent Infringement:

It means violating the exclusive given to the Patent holder. If any person exercises such
exclusive rights without the authorization of the Patent owner then that person is liable for
Patent Infringement. Section 104-114 of the Patent Act, 1970 provides guidelines relating to
Patent Infringement.

Remedies:

• An injunction issued by a Court.

• Monetary Damages.
• Attorney’s Fees.
• Seizure, Destruction of the infringed goods.

2.COPYRIGHTS

Copyright is a right, which is available for creating an original literary or dramatic or musical
or artistic work. Cinematographic films including sound track and video films and recordings
on discs, tapes, perforated roll or other devices are covered by copyrights. Computer programs
and software are covered under literary works and are protected in India under copyrights. The
Copyright Act, 1957 as amended in 1983, 1984, 1992, 1994 and 1999 governs the copyright
protection in India. The total term of protection for literary work is the author‘s life plus 60
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years. For cinematographic films, records, photographs, posthumous publications, anonymous

publication, works of government and international agencies the term is 60 years from the
beginning of the calendar year following the year in which the work was published. For
broadcasting, the term is 25 years from the beginning of the calendar year following the year
in which the broadcast was made. Copyright gives protection for the expression of an idea and
not for the idea itself.

India is a member of the Berne Convention, an international treaty on copyright. Under this
Convention, registration of copyright is not an essential requirement for protecting the right. It
would, therefore, mean that the copyright on a work created in India would be automatically
and simultaneously protected through copyright in all the member countries of the Berne
Convention.

Infringement of copyright- Section 51 & 52 of the Indian Copyright Act, 1957:

Section 51 defines infringement of Copyright in general. Section 52 gives a long list which
does not constitute infringement. Copyright gives the creator of the work the right to reproduce
the work, make copies, translate, adapt, sell or give on hire and communicate the work to
public. Any of these activities done without the consent of the author or his assignee is
considered infringement of the copyright. There is a provision of fair use‘ in the law, which
allows copyrighted work to be used for teaching and research and development.

Remedies:

• Injunction.
• Impounding and disposition of infringing articles.
• Damages and Profits.
• Attorney’s Fee and Costs.
• Criminal enforcement

3.TRADEMARKS

Section 2(zb) of the Trademark Act, 1999 defines trademark as a distinctive sign, which
identifies certain goods or services as those produced or provided by a specific person or
enterprise. Trademarks may be one or combination of words, letters, and numerals. They may
also consist of drawings, symbols, three dimensional signs such as shape and packaging of
goods, or colours used as distinguishing feature. A trademark provides to the owner of the mark
by ensuring the exclusive right to use it to identify goods or services, or to authorize others to
use it in return for some consideration (payment). The initial registration of a trademark shall
be for a period of ten years but may be renewed from time to time for an unlimited period by
payment of the renewal fees. Enactment of the Indian Trademarks Act 1999 is a big step
forward from the Trade and Merchandise Marks Act 1958 and the Trademark Act 1940.
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Trademark Infringement:

Section 29 and 30 of the Act lay down provisions for protecting the registered trademark in
case it is infringed on by someone else. Section 29 of the Act says that a registered trademark
is infringed when an unregistered proprietor or licensee uses the said trademark for trade and
business purposes. Section 30 lists down the limits on the effect of registered trade mark and
also enumerate certain acts which do not amount for infringement.

Remedy:

• Injunction order.
• Demand damages.
• Demand the restitution of unjust enrichment.
• Demand measures for recovery of reputation.

4.INDUSTRIAL DESIGNS

The industrial design registration in India recognizes the creation new and original three
dimensional features such as new shape of an article, configuration, surface pattern,
ornamentations or two dimensional features, such as patterns, lines or colour applied to articles
which in the finished state appeal to and is judged solely by the eye. The protection of the
design of a product allows the owner to have the exclusive use of certain designs and / or shapes
within the market.

Infringement

The owner of a registered design right may exclusively work the registered design or any design
similar to it. If a third party manufactures or sells, etc., the registered design or any similar
design for commercial purposes (meaning that private or domestic use is excluded) and if the
third party is not licensed to do so by the owner of the registered design right, such activity
constitutes a design right infringement.

Remedies

As per the Design Act of 2000, the liabilities of the one who infringes the design is mentioned
under Section 22(2) of the Act. It is the same section that provides the remedies to the registered
owner of the Design. Therefore, the liability of the infringing party as per Section 22(2) of the
aforesaid Act is as follows:

• Under Section 22(2)(a) of the Design Act, the one who infringes shall pay a sum (not
exceeding) Rs. 25,000/ (Rupees Twenty-five thousand only) for every breach
contravened. The total amount shall sum up to (not exceeding) Rs. 50,000 (Rupees Fifty
thousand only). The above amount is for the recovery of the Infringement.
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• Under Section 22(2)(b), it is mentioned that the owner of the registered Design is vested
with certain rights wherein it can call for recovery of damages and make the infringing
party liable.

5.GEOGRAPHICAL INDICATION

Section 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act,
1999 defines Geographical Indications as Indications which identify a good as originating in
the territory of a member or a region or a locality in that territory, where a given quality
reputation or other characteristics of the good is attributable to its geographical origin. They
can be renewed once in 10 years. The concept of identifying GI and protecting them is a new
concept in India, perhaps in most developing countries, and has come to knowledge in these
countries after they signed the TRIPS Agreement. Principle of national treatment and fair
competition are applicable. TRIPS provide for seizure of goods bearing false indications of GI.
TRIPS provide for refusal or invalidation of registration of a trademark containing a GI with
respect to goods not originating in the territory indicated. The Geographical Indication of
Goods (Registration and Protection) Act came into being in 2000.

Infringement of GI:
Using GI by any means in the designations or presentation of goods that indicates or suggests
that such goods originate in a geographical area other than the true place of origin of such goods
in a manner or usage of goods in a manner which constitutes an act of unfair competition
including passing off.

Remedies:

Injunction.

6.TRADE SECRET

Undisclosed information is also known as trade secret/ confidential information which includes
formula, pattern, compilation, programme, device, method, technique or process. It is perhaps
the most important form of protection for industries. At every stage of development people
have evolved methods to keep important information secret, commonly by restricting the
knowledge to their family members. Laws relating to all forms of IPR are at different stages of
implementation in India, but there is no separate and exclusive law for protecting undisclosed
information/trade secret or confidential information. The Contract Act of 1872 would however
cover many aspects of Trade Secrets.

It may include new product plans, product costing, best material to use, sources of materials,
financial standing of the business, accounting information, employee records, credit rating of
customers, production information, manufacturing methods and processes, business methods,
blueprints, test data, research reports, professional pollsters, technical drawings and
organizational structure, specifications, process manuals, written instructions for operating the
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process and analytical means to check and control the product and processes, details of
workshop practice, technical training and personal visitation and inspection. On the software
side it would include source code; the data file structure, the structure sequence and
organization of computer program. It may also include information relating to a patented
invention not included in the patent specification, inventions capable of being patented but not
patented, inventions incapable of being patented in a particular country because of the subject
matter being excluded in the patent law of that country, inventions incapable of being patented
by reason of lack of inventiveness, industrial designs capable of being registered but not
registered, industrial designs having functional characteristics and skills, experience and
craftsmanship of technicians. The information can be intangible and invisible as well and can
take myriad forms, and therefore, any attempt to define it in an exhaustive manner would be
practically meaningless.

Ex: KFC Chicken, COCA Cola, MAC Donald’s Big Mac Special Sauce etc.

Infringement:

Trade secret infringement is also called as “misappropriation”. It occurs when someone

improperly acquires a trade secret or improperly discloses or uses a trade secret without the
consent or with having reason to know that knowledge of the trade secret was acquired through
a mistake or accident.

Remedy:

• Monetary Relief.
• Equitable Relief.
• Costs and Attorney’s Fees.

7.PLANT VARIETIES AND FARMERS RIGHTS

Plant Breeding is the art and science of genetically improving plants for the benefit of
humankind. Plant breeding can be accomplished through many different techniques ranging
from simply selecting plants with desirable characteristics for propagation to more complex
molecular techniques. Plant breeding has proven track record in increasing crop productivity.

For the first time the concept of protecting the Plant Variety was discussed in UPOV
International Convention by a Diplomatic Conference in Paris on December 2, 1961. This was
the point at which there was recognition of the Intellectual Property Rights of plant breeders in
their varieties on an International Basis. The Protection of Plant Variety and Farmer’s Right
Act was enacted in the year 2001 after a lot of debates as to how can Intellectual Property
Rights can be introduced in Indian Agriculture after the country joined the World Trade
Organization in 1995 and agreed to implement the Agreement on Trade Related Aspects of
Intellectual Property Rights(TRIPS). Article 27(3) (b) of the TRIPS Agreement sates that Plant
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Varieties shall be protected either by Patents or by effective Sui Generis System or by any
combination thereof. The Protection of Plant Variety & Farmer’s Right Act, 2001 (PPV & FR)
was enacted to provide for the establishment of an effective system for protection of Plant
Varieties, the rights of farmers and plant breeders and to encourage the development and
cultivation of new varieties of plants. This was enacted to grant IPR to Plant Breeders,
Researchers and Farmers who have developed any new or extant plant varieties. It is a dual
right- One is for the variety and the other is for the denomination assigned to it by the Breeder.
These rights are heritable and assignable. Essentially derived varieties can also be registered.
Section 3(1) of the PPV & FR Act defines the term Plant Variety and Breeder.

Infringement-Section 64 of the PPV&FRA:-

Any person, who produces, sells imports or exports any variety without the permission of the
owner, infringes the rights of owner. Use of a denomination which is similar to a registered
denomination and likely to confuse the general public also amounts to infringement.

Remedies

Such an infringement attracts both Civil and Criminal Remedy. Criminal action provides
punishment upto 2 years or fine upto 5, 00,000 lakhs or with both.

Conclusion

IPR is a strong tool, to protect the investment, time, money, and effort invested by the
inventor/creator of the IP, as it gives the inventor/creator an exclusive right for a certain period
of time for the use of its invention/creation. Thus, IPR affects the economic development of a
country by promoting healthy competition and encouraging industrial growth and economic
growth. IPR is essential for better identification, planning, commercialization, rendering, and
thus the preservation of inventions or creativity.
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2. Define Patent and explain the procedure of obtaining patent. (2)

INTRODUCTION

Patent is the most important form of Intellectual Property Right (IPR) for an invention, awarded
territorially by the Government of India to the creator of the invention the sole right to make,
use, sell, offer to sell and or import that invention for a set period. the patent law in India is
enforced and administered by the Patents Act, 1970 which is amended by the Patents
(Amendment) Act, 2005.

DEFINITION

Section 2(m): of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for
any invention under the provisions of this Act.
A Patent is a monopoly right granted to a person who has invented a new and useful article or
improved an existing article or a new procedure of making an article.

Section 2(i) of this Act defines “Invention” as a new product or process involving an inventive
step and capable of industrial application.

Patentable Goods

Under Patent act, the invention to be patentable should meet the following criteria,
1) It should be new (Novelty)
2) Non-Obviousness
3) Utility (It should be useful for the industrial purposes)

Non-Patentable goods (Sec 3)

1. Anything that can create fear in general public

2. Anything that is against natural law
3. Anything which merely an abstract or make mere change in scientific formula or
research or which does not improved the efficiency of the product
4. Mathematical model or business method or algorithm or computer programs
5. Discovery of any living or non living substance
6. Mere arrangement or rearrangement or duplication of known device.

Registration of Patent

→ Complete
Filing of Application →
→Provisional
↓
Examination
↓
Publication
↓
Granting of Patent
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Patent
Application

↓ After 18 months or earlier by request

Publication

Opposition
Representation →↓
Representation
accepted
Examination
(only on request within 48
months & within 1 month
→ Rejection of
Patent
after request) (Within 1 month)

Representation overruled (within 1 ↓

month)
Grant

↓
Publication of Grant

↓ 12 months → Notice of Opposition

Opposition Proceedings →
↓
Opposition Successful ↓ Opposition Overruled

Patent Revoked Patent Valid

Who can Apply

1) Any person claiming to be the true and 1st inventor of the invention
2) Any person being the assignee of the person claiming to be the true and first inventor
in respect of right to make such an application
3) The legal representative of any deceased person who immediately before his death was
entitled to make such an application
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APPLICATION FOR PATENT

An application for an invention may be made by any of the following persons i.e-
(a) Any person claiming to be the trye and first inventor of the invention
(b) Any assignee of such invention
(c) The legal representative of any deceased person who could be either the first
true inventor or the assignee.

CASE:

NORRIS PATENT CASE:

In the above case the court held that if there are tow ideas in making an invention by 2 persons,
they become coinventors.

V B MOHAMMED IBRAHIM VS AHRED

In this case court held that patent is given for intellectual rights, a person helping financially
cannot be called as a coinventor and cannot be granted patent rights.
FILING OF APPLICATION

Every application should be in prescribed form and filed in the patent office. In case of the
application made by an assignee he must produce the proof of his rights before making
application.
As per the procedure laid down in section 7, every such application should be accompanied by
a provisional or complete specification of the invention. Specification should be read as a
whole. Every specification, either provisional or complete should describe the invention, it
should begin with a title sufficiently indicating the subject matter to which the invention relates.
If necessary drawings may be supplied. Every complete specification should

i)Fully describe the invention and its operation and use and methods etc.
ii)Disclose the best method of performing the invention
iii) End with a claim or claims defining the scope of the invention for which protection claimed

As regards to provisional specification, it should give sufficient description to indicate the

subject matter like in the case of complete specification beginning with the title. The basic
objective of a prior date of the patent. The applicant gets a maximum period of 12 months
within which he can file complete specification.
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Examination

Chapter IV and section 11A to 21 deal with the publication and examination of the
applications for patents filed before the competent authority, when the complete specification
has been filed in respect of an application for patent, the application along with the specification
should be referred by the controller to an examiner.

The examination system followed in india entrusts the responsibility of deciding the validity
of the application. The examination id conducted based on certain principles and parameters.
The examination or search of the application is done by the controller to determine its
compliance, procedurally as well as substantively with the provisions of the Act and rules
framed thereunder. For the sake of convenience, the examination of the application may be
divided into two types.

• Formal examination which determines whether the application complies with the
prescribed form, fee particulars to be furnished and documents to be submitted.
• Substantive examination, which determines whether the matter is an invention and
complied with this includes a search to determine prior use, Prior claims, prior
publication and prior public working.

After filing complete specification, 48 months is required for examination. Every details like
novelty, utility, and obviousness will be checked. If the application is rejected, then the
application has to be filed from the first step.
But if only some corrections are there, then they can be corrected. If the anticipated result is
not getting while examination, then the application will be rejected.

PUBLICATION

Prior publication means, where the invention claimed in the complete specification was
published before the priority date in India or elsewhere. A prior publication to be valid and
proper, citation must substantially disclose the subject matter of applicants invention. Therefore
where the opponent failed to indicate all the septs and the invention in amu of publication relied
by them, the opposition would be liable to be rejected. Where the opponent claims that the prior
publication is in either a foreign language or a language other than the English, it would be
necessary to produce the translation. If fails to produce translation, the apposition would be
liable to be rejected.

If the same invention is already in existence or known to public then objection is raised. Then
within 12 months, that objection must be replied. If not replied, their application will be
rejected. If replies, then there will be round of discussion with them along with the controller.

If there is no objection within 18 months, then the patent will be granted. If the patent is
rejected, then they may go for appeal.
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GRANT OF PATENT

This is the last stage in acquiring a patent. Chapter VIII and section 43 to 53 deal with this
process. Where a complete specification in pursuance of an application for a patent has been
accepted and

i) The application has not opposed with the time prescribed: or

ii) The application has been opposed and it has been decided in favour of the
applicant: or
iii) The application has not been refused by the controller by virtue of any power
vested in him.

On the request made by the applicant, the patent should be granted to the applicant or applicants
as the case may be. Thereafter the controller should direct the patent to be sealed with the seal
of the patent office and the date of sealing of should be entered in the register

Conclusion

The concept of patent protection in Indian patent law is to limit individuals other than the
inventor’s ability to use, sell, and manufacture the product or technology for their own private
gain or interest. This protection enables the creator to keep the inventions created only for
themselves.
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3. What is Intellectual property? Explain the laws relating to intellectual

properties in India.

Introduction:

Intellectual property (IP) refers to creations of the mind, such as inventions, literary and artistic
works, designs, symbols, and names used in commerce, that are protected by law. In India,
intellectual property rights (IPR) are governed by arange of laws and regulations that provide
protection to various forms of intellectual property. These laws aim to promote innovation and
creativity, and foster economic growth.

1. The Copyright Act, 1957 (Amended in 1994, 1999, 2012).

2. The Patents Act, 1970 (Amended in 1999, 2002 and 2005).

3. The Trademarks Act, 1999. (The Trademarks and Merchandise Act, 1958 stood repealed).

4. The Geographical Indications of Goods (Registration and Protection) Act, 1999.

5. The Designs Act, 2000.

6. The Semiconductor Integrated Circuits Layout Designs Act, 2000.

7. The Protection of Plant Varieties and Farmers' Rights Act, 2001,

8. The Biological Diversity Act, 2002.

1. Patents:

The Indian Patent Act, 1970 is the primary legislation governing patents in India. The Act
defines the criteria for patentability, the process of obtaining a patent, and the rights of the
patent holder.

Patentability Criteria:

The Act provides that an invention must meet certain criteria to be patentable. The invention
must be new, non-obvious, and useful. It must also be capable of industrial application. The
Act excludes certain inventions from patentability, such as inventions that are frivolous or
contrary to public order or morality.
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Patent Application Process:

The process of obtaining a patent in India involves filing a patent application with the Indian
Patent Office. The application must include a specification that describes the invention in
detail. The application must also include claims that define the scope of the invention. The
Indian Patent Office conducts a search and examination of the application to determine whether
the invention meets the criteria for patentability. If the invention is found to be patentable, the
patent is granted for a period of 20 years from the date of filing of the patent application.

Rights of Patent Holders:

The patent holder has the exclusive right to make, use, sell, and import the patented invention.
The patent holder can also license others to use the invention in return for payment of a royalty.

2. Trademarks:

The Indian Trademark Act, 1999 governs trademarks in India. A trademark is a distinctive sign
that identifies and distinguishes the goods or services of one person from those of others.

Trademark Registration Process:

The process of registering a trademark in India involves filing a trademark application with the
Indian Trademark Office. The application must include a representation of the trademark and
a list of the goods or services for which the trademark is being used.

The Indian Trademark Office conducts a search to determine whether the trademark is already
in use or is similar to a trademark that is already registered. If the trademark is found to be
eligible for registration, it is published in the Trademarks Journal.

Opposition and Registration:

Third parties have the right to oppose the registration of the trademark within a specified period.
If no opposition is filed, or if the opposition is unsuccessful, the trademark is registered for a
period of 10 years from the date of filing of the trademark application.

Rights of Trademark Owners:

The owner of a registered trademark has the exclusive right to use the trademark in relation to
the goods or services for which it is registered. The owner can also prevent others from using
a similar or identical trademark in relation to similar or identical goods or services
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3. Copyright:

The Indian Copyright Act, 1957 is the primary legislation governing copyright in India.
Copyright is a legal right that gives the creator of an original work exclusive rights to use and
distribute that work.

Types of Works Protected:

The Act provides protection to a wide range of works, including literary, musical, artistic, and
cinematographic works. The Act also protects computer programs, databases, and other literary
and artistic works.

Ownership and Duration of Copyright:

The creator of the work is the initial owner of the copyright. The Act provides that copyright
protection lasts for the lifetime of the creator plus 60 years after their death. In the case of
anonymous or pseudonymous works, the duration of copyright protection is 60 years from the
date of publication. In the case of works created by a company or government agency, the
duration of copyright protection is 60 years from the date of publication.

Copyright Registration:

Copyright registration is not mandatory in India, but it is advisable to register copyrighted

works for several reasons, such as to establish ownership and to have evidence of the existence
of the work.

The process of copyright registration involves filing an application with the Copyright Office.
The application must include a copy of the work and a fee. The Copyright Office examines the
application and, if it meets the requirements, registers the copyright.

Rights of Copyright Owners:

The owner of the copyright has the exclusive right to reproduce, publish, perform, and display
the copyrighted work. The owner can also authorize others to use the work in return for
payment of a royalty.

4. Designs

The Indian Designs Act, 2000 governs designs in India. A design is the features of shape,
configuration, pattern, ornament, or composition of lines or colors applied to any article,
whether in two-dimensional or three-dimensional form, that gives it a unique appearance.
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Design Registration:

The process of registering a design in India involves filing an application with the Designs
Office. The application must include representations of the design and a fee. The Designs
Office examines the application and, if it meets the requirements, registers the design.

Duration of Design Registration:

Design registration is valid for a period of 10 years from the date of registration. The
registration can be renewed for an additional period of 5 years.

Rights of Design Owners:

The owner of the registered design has the exclusive right to apply the design to the article for
which it is registered. The owner can also prevent others from applying a similar or identical
design to the same or similar article.

5. Geographical Indications:

The Geographical Indications of Goods (Registration and Protection) Act, 1999 governs
geographical indications in India. A geographical indication is a sign used on goods that have
a specific geographical origin and possess qualities or a reputation that are due to that origin.

Geographical Indication Registration:

The process of registering a geographical indication in India involves filing an application with
the Geographical Indications Registry. The application must include a description of the
geographical area and the characteristics of the goods that are associated with that area.

The Geographical Indications Registry examines the application and, if it meets the
requirements, registers the geographical indication.

Rights of Geographical Indication Owners:

The owner of a registered geographical indication has the exclusive right to use the
geographical indication in relation to the goods for which it is registered. The owner can also
prevent others from using the geographical indication in relation to similar or identical goods
that are not associated with the geographical area.

6. The Protection of Plant Varieties and Farmers’ Rights Act, 2001:

India has seen the growth in the industry of research of plant breeds, to give protection to
researcher and to encourage their interest in discovering better breed of plants idea of the Plant
 19

Breeders’ Right came in existence. It promises to sustain agricultural progress, as having vast
portion of land of India being agricultural land it is very essential.

In wake of TRIPS under Article 27 of it, it was necessary to give protection of plant varieties
by patenting or by an effective sui generis system or by any combination thereof, to effect to
the same the government introduced the Protection of Plant

Varieties and Farmers’ Right Act, 2001, to encourage development of new breeds of plants.
Though, the act requires to more investment in research in both private and public sectors for
better research of discovering or developing new breeds.

Further, it also promises to provide better growth in the seed industry and making available to
the Indian farmers better quality of seeds.

7. The Semi Conductor Integrated Circuits Layout Design Act, 2000:

In past three decades, information technology and digital industry has seen biggest
development, the development also getting pace day by day, and can be called fastest growing
sector of the century. The industry has seen significant change in electronic equipments,
computers, telecommunication, etc. and also it has affected human life in the biggest manner
by providing advancement in many ways. Microelectronics, which primarily refers to
Integrated Circuits (ICs) ranging from, Small Scale Integration (SSI) to Very Large Scale
Integration (VLSI) on a semiconductor chip – has rightly can be called the core, strategic
technology world-over, especially for Information Technology (IT) based society. Integrated
circuits require expertise knowledge and the effort to create one depends on complexity of the
output. Hence, it is very necessary to cover the same under IPR and it is also necessary to
encourage continue Research and Development in the field of microelectronics.

copyright and patent was unable to provide enough meaning to the right due to restrictions by
definitions and purpose of those acts are not sufficient to cover this type of complex right. As
the concept of the originality is important, irrespective of the fact that the same is novelty or
not unlike patent law which requires both original and novel. Whereas the copyright law was
too general to accommodate the original ideas of scientific creation of Layout-Designs of
Integrated Circuits. Due to the same, the necessity to provide protection for Layout-Designs of
Integrated Circuits felt and to reward and encourage an adequate level of investment of human,
financial and technological resources.

• Trade Secrets:

A confidential business information that provides a business an edge to a competition can be

considered as Trade Secret. Such information can be both manufacturing and commercial
secret.
 20

A trade secret can be protected for an unlimited period of time but a substantial element of
secrecy must exist so that, except by the use of improper means, there would be difficulty in
acquiring the information. Considering the vast availability of traditional knowledge in the
country, the protection under this will be very crucial in reaping benefits from such type of
knowledge.

• Utility Models:

A utility model is an exclusive right granted for an invention, which allows the right holder to
prevent others from commercially using the protected invention, without his authorization for
a limited period of time. In its basic definition, which may vary from one country (where such
protection is available) to another, a utility model is similar to a patent. In fact, utility models
are sometimes referred to as “petty patents” or “innovation patents.” Only a small but
significant number of countries and regions provide the option of utility model protection. At
present, India does not have legislation on Utility models

Conclusion:

Intellectual property rights are critical for innovation, creativity, and economic growth. In
India, the laws related to intellectual property provide protection to various forms of intellectual
property, such as patents, trademarks, copyrights, designs, and geographical indications.
These laws provide a legal framework for the protection of intellectual property and the rights
of the creators and owners of such property.
 21

4. Define patent. Explain the principles underlying the patent law in

India.

INTRODUCTION

Patent is the most important form of Intellectual Property Right (IPR) for an invention, awarded
territorially by the Government of India to the creator of the invention the sole right to make,
use, sell, offer to sell and or import that invention for a set period. the patent law in India is
enforced and administered by the Patents Act, 1970 which is amended by the Patents
(Amendment) Act, 2005.

DEFINITION

Section 2(m): of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for
any invention under the provisions of this Act.
A Patent is a monopoly right granted to a person who has invented a new and useful article or
improved an existing article or a new procedure of making an article.

Section 2(i) of this Act defines “Invention” as a new product or process involving an inventive
step and capable of industrial application.

Principles underlying the patent law in India

Patent law in India is a subset of intellectual property law, which is aimed at incentivizing
innovation by providing inventors and creators with exclusive rights over their creations for a
limited period. The patent law in India is grounded in a set of principles that inform and guide
the grant, enforcement, and protection of patent rights in the country. In this essay, we will
discuss the key principles underlying the patent law in India.

1. Novelty

The first and foremost principle of patent law in India is novelty. According to the Patents Act,
1970, an invention is considered novel if it is not anticipated by prior art. Prior art refers to any
information that is publicly available anywhere in the world before the date of the patent
application. This includes any document, publication, patent, or product that describes the
invention or a similar invention. The novelty requirement ensures that only truly original
inventions receive patent protection.
 22

2. Inventive Step

The second principle of patent law in India is the requirement for an inventive step. An
invention is said to involve an inventive step if it is not obvious to a person skilled in the art.
In other words, an invention should not be something that any person with basic knowledge of
the relevant field could come up with. The inventive step requirement ensures that only those
inventions that represent a significant advancement in the field are granted patent protection

3. Industrial Applicability

The third principle of patent law in India is industrial applicability. An invention must be
capable of being made or used in an industry to be eligible for patent protection. This means
that the invention must have practical utility and be capable of being manufactured or applied
in some way. The industrial applicability requirement ensures that only those inventions that
have commercial value and can be put to practical use receive patent protection.

4.Non-obviousness

The fourth principle of patent law in India is non-obviousness. An invention is considered non-
obvious if it is not obvious to a person skilled in the art, taking into account the prior art. In
other words, an invention should not be something that any person with basic knowledge of
the relevant field could come up with. The non-obviousness requirement is closely related to
the inventive step requirement, and it ensures that only those inventions that are truly
innovative are granted patent protection.

5.Public Interest

The fifth principle of patent law in India is the public interest. The grant of a patent gives the
patentee a monopoly over the invention for a limited period. However, this monopoly must not
be granted at the expense of the public interest. The public interest includes a range of factors
such as access to essential medicines, the promotion of competition, and the encouragement of
innovation. The patent law in India includes a number of provisions that balance the interest of
patentees with those of the public.

6. Disclosure

The sixth principle of patent law in India is disclosure. An applicant for a patent must provide
a complete and sufficient description of the invention in the patent specification. The patent
specification should enable a person skilled in the art to understand and replicate the invention.
The disclosure requirement ensures that the public is informed about the invention and that the
knowledge gained from the invention can be used to promote further innovation.
 23

7.Examination

The seventh principle of patent law in India is examination. All patent applications must
undergo examination by the Indian Patent Office to determine whether they meet the
requirements for patentability. The examination process involves checking the application for
compliance with the novelty, inventive step, industrial applicability, and non-obviousness
requirements, as well as formal requirements such as the disclosure of the invention in the
specification.

8. Term of Patent

The eighth principle of patent law in India is the term of the patent. The term of a patent in
India is 20 years from the date of filing the patent application. The term of the patent can be
extended by a further five years in certain cases, such as for pharmaceuticals or agrochemicals

9. Patentability of Biological Materials

The ninth principle of patent law in India is the patentability of biological materials. The Indian
Patents Act allows for the patenting of microorganisms, plant varieties, and other biological
materials. However, there are restrictions on the patentability of such materials, and they must
meet the requirements of novelty, inventive step, industrial applicability, and non-obviousness.

10. Public Health

The tenth principle of patent law in India is public health. The Indian Patents Act includes a
number of provisions that seek to balance the interests of patentees with those of public health.
For example, the Act allows for the grant of compulsory licenses in certain circumstances,
which allows third parties to manufacture and sell generic versions of patented medicines at
lower cost. This provision enables access to affordable medicines, particularly for diseases that
affect low-income communities.

11. International Obligations

The eleventh principle of patent law in India is international obligations. India is a signatory to
a number of international treaties and agreements that govern the grant and protection of
patents. These include the Paris Convention for the Protection of Industrial Property, the Patent
Cooperation Treaty, and the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS). India's patent law must be in compliance with these international obligations.

12. Procedural Requirements

The twelfth principle of patent law in India is procedural requirements. The Indian Patents Act
includes a number of procedural requirements that must be met before a patent is granted. For
example, the application must be filed with the Indian Patent Office, and it must include a
 24

complete specification of the invention. The application must also be accompanied by the
required fees

13. Grounds for Opposition

The thirteenth principle of patent law in India is grounds for opposition. The Indian Patents
Act provides for the grounds on which a patent can be opposed. These include the lack of
novelty, lack of inventive step, lack of industrial applicability, and non-disclosure of
information that would have affected the grant of the patent. Any person can file an opposition
to a patent application, and the patentee can also file a counter-statement in response.

14. Infringement

The fourteenth principle of patent law in India is infringement. A patentee has the exclusive
right to make, use, sell, or import the patented invention for the duration of the patent. Any
person who performs any of these acts without the permission of the patentee is said to infringe
the patent. The Indian Patents Act provides for civil and criminal remedies for patent
infringement, including damages and injunctions.

15. Revocation

The fifteenth principle of patent law in India is revocation. A patent can be revoked if it is
found to have been granted in contravention of any of the requirements of the Patents Act,
1970. Any person can file a petition for the revocation of a patent, and the grounds for
revocation include lack of novelty, lack of inventive step, lack of industrial applicability, and
non-disclosure of information that would have affected the grant of the patent.

Conclusion
In conclusion, the patent law in India is grounded in a set of principles that inform and guide
the grant, enforcement, and protection of patent rights in the country. These principles include
novelty, inventive step, industrial applicability, non-obviousness, public interest, disclosure,
examination, term of patent, patentability of biological materials, public health, international
obligations, procedural requirements, grounds for opposition, infringement, and revocation.
 25

5. Examine the concept of intellectual property rights and the historical

background of the development of intellectual property rights.

INTRODUCTION

Intellectual Property law dates at least as far back as medieval Europe. The first known use of
the term Intellectual Property dates back to the time, when an article published in the Monthly
Review in 1769 used it as a phrase. Intellectual property rights are the rights given to persons
over the creations of their minds. They usually give the creator an exclusive right over the use
of his/her creation for a certain period of time.

DEFINITION

IPR are exclusive legal rights that covers the privileges given to individual who are the owner
and inventors and have created something with their intellectual creativity. The right given to
a person over the creation of their mind, inventions, literarial artistic works, symbols and names
used in commerce. They help Giving the creators an exclusive rights his or her works for a
certain period of time.

Concept of IPR

Intellectual property rights are exclusive legal rights that cover the privileges given to
individuals who are the owners and inventors of a work, and have created something with their
intellectual creativity.
Intellectual Property is an asset that can be bought or sold, licensed and exchanged. But of
course, unlike other properties, intellectual property is intangible; rather it cannot be identified
by its specific parameters.

The creator/inventor gets exclusive rights against any misuse or use of work without his/her
prior permission. However, the rights are granted for a limited period of time to maintain
equilibrium.

According to the definition of ‘Intellectual Property’ by the WIPO (World Intellectual Property
Organization), “Intellectual property means the legal rights which result from intellectual
activity in the industrial, scientific, literary and artistic fields.”

There are two main reasons why countries have IP laws. One is to respect the moral and
economic interests of the authors of their works and the rights of the public to access them. The
second is to encourage innovation as a deliberate act of government policy, disseminating and
using the effects, and to promote fair trade that would lead to economic and social development.
 26

HISTORICAL BACKGROUND OF IPR

The first multilateral effort was made through Paris Convention for Protection of Industrial
Property held on 20th March, 1883 in Paris. It was followed by Berne Convention for
Protection of Literary and Artist Works in 1886 in Berne, Switzerland. Together, these two
initial international efforts can be termed as the Magna Carta of IPRs. Since then IPR regime
has made a long journey and with the establishment of WIPO and TRIPs the IPR jurisprudence
has been firmly established at international as well as national level.

B. International Regime of IPRs

(I) Relating to Industrial Property

Paris Convention, concluded on 20th March, 1883, is the first and the oldest international
convention. It is a pioneering international agreement. There are 30 articles in the convention
dealing with various aspects of industrial property like patents, design, trademark, false
indication, utility models and their protection. The convention has set up an institutional
framework by providing administrative organ like Union, the Assembly, the Executive
Committee and the International Bureau. There are more than 140 members and all members
constitute the Union for protection of industrial property. The Paris Convention was
subsequently revised in Stockholm on 4th July, 1967.

(II) Relating to Patents

Beginning from Paris Convention several international convention and agreements have been
held from time to time.

(a) International Convention for Protection of New Varieties of Plants (UPOV), 1968
(subsequently revised in 1991)

The UPOV Convention seeks to provide special title of protection of a patent to the breeders
of new plant variety. The object is to address a long- standing problem in patent law. As the
patent system has not yet developed the mechanism to provide protection to plant breeders, the
UPOV encourages law to provide monopoly rights to plant breeders of new plant variety which
is akin to invention. The minimum period of protection is 15 years. For vines, forests, fruits,
and ornamental trees it is 18 years. The Convention has 42 Articles dealing with protection of
rights, rights of priority and related aspects. The Convention was further revised in 1991.

(b) Patent Co-operation Treaty 1970 (PCT)

The object of PCT is to seek co-operation of States and simplification of procedure in filing
patent application in States which are party to the agreement. The PCT was concluded on 19th
June, 1970 and came into force on 24 January, 1978. The PCT enables and entitles the nationals
or domiciliaries of a contracting State to file an international application for patent protection.
 27

In his application he should indicate the member States in which he wishes to obtain protection.
A claim for priority is to be stated in the application.

(c) Budapest Treaty on International Recognition of Deposit of Micro- organism for

purposes of Patent Procedure, 1980

The Budapest Treaty seeks to resolve the problem resulting from lack of uniformity in national
requirement for micro-organism deposit. Requirement of disclosure of invention to patent
office poses difficulty in the case of micro- organism. Through this treaty series of International
Depository Authorities (IDA) have been established, where micro-organism can be deposited
for the purpose of claiming patent.

Apart of above major conventions Eurasian Patent Convention, European Patent Convention,
1973, Strasbourg Agreement of International Patent Classification can also be referred to in the
field of patent.

(III) Relating to Trademark

Protection of trademark was initially included in Paris Convention, 1883.

(a) Madrid Agreement

The Madrid Agreement concerning International Registration of marks was enforced on 14

April, 1891. Since then it has been revised five times. The last revision took place in Stockholm
on 14 July, 1967. The main object of this Agreement is to simplify the procedure for the filing
of trademarks and service marks in different countries. It provides for a system of international
registration of an approved trademark or service mark by a single application through the
International Bureau of WIPO.

The international registration is published by the International Bureau of WIPO. A copy of

which is sent to each member country in which protection is sought by trademark holder. This
international registration remains effective for 20 years. A protocol for harmonization of
Madrid Agreement with regional trademark system has also been entered in 1995.

In addition to Madrid Agreement, following international agreements have also laid down
norms and guidelines in relation to trademarks and allied matters.

They are:

(i) The Nice Agreement Concerning the International Classification of Goods and Service for
the Purposes of Registration of Marks, 1957.

(ii) The Vienna Agreement established on International Classification of Figurative Elements

of Marks, 1973.
 28

(iii) Trademark Law Treaty for Harmonization of Trademark Registration System concluded
in Geneva in 1994.

With the development of internet the domain name have assumed great importance and are
being recognised as part of Trademark WIPO has developed an international process of
recommendations concerning the intellectual property issues associated with internet domain
names. The Internet Corporation for Assigned Names and Numbers (ICANN) has been formed
to manage the policy and technical aspects of Internet Domain Name System.

(IV) Relating to Copyrights

Beginning made in Berne Convention, 1886 has been supported and strengthened by series of
conventions in the field of copyright and neighbouring rights.

(a) Berne Convention for Protection of Literary and Artistic Works, 1886.

The Berne Convention with 38 articles and with more than 120 countries as members is the
most significant international convention in the field of protecting copyright. It established
Berne Union. It was further revised by Paris Revision in 1971. The scope of Convention is very
wide and includes within it literary and artistic works produced in the literary, scientific and
artistic domain irrespective of mode or form of its expression. Both published. and unpublished
works of authors are covered under the Convention.

The Convention has provided for a minimum term of protection of copyright as life plus 50
years or an alternative of 50 years from publication of anonymous and pseudonymous works.
It also provides for certain limitations to the exclusive rights, such as fair use privilege and a
possible limitation on the right of recording of musical works. Convention also recognizes,
apart of authors' exclusive economic right, the moral right of the authors.

(b) Universal Copyright Convention, 1952 (UCC)

The UCC was entered into by countries like USA, the then Soviet Union and China, as they
did not join the Berne Convention. UCC was thus developed as an alternative of Berne
Convention. The UCC is based on National Treatment and also the requirement of maintenance
of specifie minimum legal safeguard by each contracting state. It was revised in 1971 at Paris
on the demand of developing countries. Special provisions allow the developing countries to
obtain compulsory licence under certain conditions, to translate copyrighted works for
teaching, scholarship and research purposes.

(c) Rome Convention, 1961

For protecting neighboring rights of performers, producers of phonograms and broadcasting

organizations, Rome Convention was concluded in 1961 and it came into effect on 18 May,
 29

1964. The Convention grants protection to performers if their performance takes place in
another contracting State. Unauthorized broadcast of performance is prohibited. Generally the
protection is granted for 20 years computed from the end of the year when the fixation was
made on phonogram and performances incorporated therein. Countries which are members of
either Berne Convention or Universal Copyright Convention can become members of Rome
Convention.

In addition, there are following international conventions having vital bearing on the copyrights
and other related rights:

(1) WIPO Copyright Treaty, 1996 (concluded at Geneva on 20th December, 1996).

(2) WIPO Performance and Phonogram Treaty, 1996 (concluded at Geneva on 20th December,
1996).

(3) Brussels Convention Relating to Distribution of Programme Carrying Signals Transmitted

by Satellite, 1974 (concluded on 21st May, 1974 at Brussels).

(4) Geneva Treaty on International Registration of Audio Visual Works, 1989 (concluded on
20th April, 1989 at Geneva).

(5) Treaty on Intellectual Property in Respect of Integrated Circuit (concluded on 26th May,
1989).

(6) WIPO Performance and Phonograms Treaty, 1996 (WPPT).

(V) Relating to Geographical Indications

Geographical indications as part of intellectual property rights have now been firmly
established and given legal recognition at international and national level.

(a) Madrid Agreement on Repression of False or Deceptive Indications of Source on

Goods, 1967.

This agreement seeks to protect consumer interest against persons using false or deceptive
indications of goods. It provides for remedy of seizure or import prohibition of all goods
bearing false or deceptive indication.

(b) Lisbon Agreement for protection of appellations of origin and their registration, 1979.

This agreement intends to protect appellation of origin defined as, geographical home of
country, region or locality, which serves to design a product originating therein having quality
and characters exclusively or essentially due to the geographical environment including natural
and human factors.
 30

Under this agreement the contracting parties are required to protect 'appellation of origin' of
other contracting countries recognized and protected in the country of origin and registered at
the International Bureau of WIPO.

(VI) Relating to Industrial Designs

There are two major international instruments for protecting infringement of industrial designs:

(a) Hague Agreement concerning the International Deposit of Industrial Design, 1925
(Revised at Hague in 1960).

The primary purpose of this agreement as revised at Hague in 1960 is to facilitate the
international protection of industrial design by providing a single deposit with the International
Bureau of WIPO so that possible infringement in other member countries may be prevented.
The protection is offered only when the industrial design is deposited on payment of prescribed
fee. The international deposit once registered and published, will have the same effect in the
contracting State as if registered under the national laws. The protection is extended to the
initial terms of 5 years and is renewable every 5 years.

(b) Locarno Agreement on establishing an International Classification for Industrial

Design, 1968.

This agreement aims at bringing uniformity to the classification of industrial designs to

facilitate searches for novelty and priority.

The abovementioned description of various international conventions and agreements on

various components of intellectual property rights will be deemed as completed only when a
detailed analysis of WIPO and the agreement on Trade related aspects of intellectual property
rights. (Popularly known as TRIPs) is made. However, looking to the current importance of
TRIPs and WIPO the next chapter is devoted to their detailed study.

Conclusion

Intellectual property means the creation of mind: logos, symbols, writings, machines, etc. The
concept of Intellectual Property emerged way back in time and is considered one of the most
important rights by industries. Many industries have relied on these rights since centuries for
the protection of their work, whereas, consumers use IP to ensure that they purchase safe,
genuine and guaranteed products.
 31

6. Examine the importance and types of specification under the patent

law.

INTRODUCTION

Patent is the most important form of Intellectual Property Right (IPR) for an invention, awarded
territorially by the Government of India to the creator of the invention the sole right to make,
use, sell, offer to sell and or import that invention for a set period. the patent law in India is
enforced and administered by the Patents Act, 1970 which is amended by the Patents
(Amendment) Act, 2005.

DEFINITION

Section 2(m): of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for
any invention under the provisions of this Act.
A Patent is a monopoly right granted to a person who has invented a new and useful article or
improved an existing article or a new procedure of making an article.

The Specification is a techno-legal document containing full scientific details of the invention
and claims to the patent rights.

Specification

In order to obtain a patent, an applicant must fully and particularly describe the invention, in a
complete specification. The disclosure of the invention in a complete specification must be
such that a person skilled in the art may be able to produce the invention. This is possible only
when an applicant discloses the invention fully and particularly including the best method of
performing the invention.

The Specification is a techno-legal document containing full scientific details of the invention
and claims to the patent rights. It, thus, forms a crucial part of the Patent Application. It is
mandatory on the part of an applicant to disclose fully and particularly various features
constituting the invention. The Specification may be filed either as a provisional or as a
complete specification.

The Specification (provisional or complete) is to be submitted in Form-2 along with the

Application in Form-1 and other documents, in duplicate, along with the prescribed fee as given
in the First Schedule. The first page of the Form 2 shall contain:

1. Title of the invention;

2. Name, address and nationality of each of the applicants for the Patent; and
3. Preamble to the description.
 32

The title of the invention shall sufficiently indicate the specific features of the invention. Every
Specification whether provisional or complete shall describe the invention. The Controller may
also require the applicant to submit drawings, if necessary, at the examination stage

Kinds of Specification

1.Provisional specification
2.Complete specification

1.Provisional Specification

When the applicant finds that his invention has reached a stage wherein it can be disclosed on
paper, but has not attained the final stage, he may prepare a disclosure of the invention in the
form of a written description and submit it to Patent Office as a provisional specification which
describes the invention.

A provisional specification secures a priority date for the application over any other application
which is likely to be filed in respect of the same invention being developed concurrently.
Immediately on receiving the Provisional Specification the Patent Office accords a filing date
and application number to the Application.

Section 9 stipulates that an application for a patent accompanying a provisional specification,

a complete specification shall be filed within 12 months from the date of filing of the
application, and if the complete specification is not so filed, the application shall be deemed to
be abandoned.

Under Section 9(2) of the Patent Act, 1970, if in the opinion of the Controller he/she can allow
the applicant to file one Complete Specification with regards of Patent, two or more Provisional
Specifications are filed by an applicant are similar, or if one Specification is a modification of
the other Specification, to all such different Provisional Specifications. Such a Complete
Specification is required to be filed within the time period of 12 months from the date on which
the first provisional Specification of Patent was filed. In such cases where Controller asked to
file one Complete Specification for two or more

Provisional Specifications, the date of filing of the application will be considered the date on
which the earliest Provisional Specification was filed and should also bear the number of that
earliest application.

A request can be made by the applicant, within 12 months from the date of filing of a Complete
Specification (not being a PCT National Phase application or a convention application
Application) to the Controller of Patent to convert the Complete Specification so filed by the
applicant into a Provisional Specification.
 33

Subsequently, the applicant is required to file a Complete Specification within 12 months from
the date of the first filing of the application. Under Section 9(3) (f) of the Patents Act, 1970,
after filing a Complete Specification of Patent, the applicant can make a request to the
Controller of Patent at any time before the grant of Patent to cancel the Provisional
Specification filed by him/her (i.e. the Provisional Specification filed directly under Section
9(1) of the Patent Act, 1970, or the Provisional Specification that was converted from a
Complete Specification under Section 9 (3) of the Patent Act, 1970), the Controller of Patent
can cancel the filed Provisional Specification and post- date the application filed to the date of
filing of the Complete Specification by the applicant.

Essential contents of Provisional Specification

• A Provisional Specification should essentially contain the description and title of the
invention of the inventor.
• It is desirable not to include any of the claims in the Provisional Specification as the
primary purpose of filing a Provisional Specification is to claim a date of priority and
it is only intended for describing the invention.
• The description of the invention starts from the second page with the field of invention,
the main object of the invention, the background of the invention, and the statement of
the invention.
• It is advisable to the applicant of the application to include as much information as the
applicant has in a Provisional Specification, at the time of filing of such Specification.
• It should be noted that a Provisional Specification cannot be filed by the applicant in
case of a Convention, Divisional, or PCT National Phase Application with the Patent
Office.

Complete Specification:

As the complete specification is an extremely important document in the patent proceedings it

is advised that it should be drafted with utmost care, without any ambiguity. Important
Elements of the Complete Specification:

As per Section 10, every complete specification is required to:

1. fully and particularly describe the invention and its operation or use and the method by which
it is to be performed;
2. the best method of performing the invention which is known to the applicant and for which
he is entitled to claim protection; and
3. with a claim or claims defining the scope of the invention for which protection is claimed;
and
4. be accompanied by an abstract to provide technical information on the invention.
 34

Also, the Controller may require the applicant to submit, any time before the grant, models or
samples related to the invention for better illustration of the invention.

Normally, it should contain the following matter:

1. Title of invention;
2. Preamble;
3. Field of invention;
4. Background of invention with regard to the drawback associated with the invention;
5. Object and Statement of invention;
6. A summary of invention;
7. A brief description of the accompanying drawing;
8. Claim(s);
9. Abstract.

Further, According to Section 10, in case of an international application designating India the
title, description, drawings, abstracts and claims filed with the application shall be taken as the
complete specification for the purposes of the Act. The claim or claims of a complete
specification shall relate to a single invention, or to a group of inventions linked so as to form
a single inventive concept, shall be clear, brief and be fairly based on the matter disclosed in
the specification.

A complete specification, therefore, fully and particularly describes the invention that is
claimed. It should be drafted with the utmost care and without any ambiguity. In certain cases,
if the applicant has not exceeded 12 months from filing the complete specification, they may
request the Controller to convert the complete specification to a provisional specification. The
title, description, drawings, abstract and claims filed with regard to International Applications
designating India would be taken as the complete specification.

Requirement of Complete Specification

1) Every Complete Specification is full & particular description of the invention and its
operation or use and the method by which it is to be performed.
2) Disclose the best method of performing the invention which is known to the applicant
& for which he is entitled to create protection.
3) End with the claim or claims defining the scope of the invention for which protection
is claimed
4) It should be accomplished by an abstract to provide technical information on the
invention.

Imperial Chemical Industry Ltd application

The court held that the provisional specification may contain only details of anticipated result.
It need not contain complete details. After filing provisional specification within 18 months the
 35

complete specification must be filed. Provisional specification is a rough sketch of complete

specification.

Conclusion

The procedure provided for patent specification under Indian law is comprehensive, clear and
conducive to the inventor/applicant The applicants must familiarize themselves with various
provisions of law while filing specifications, particularly the Patents Act 1970, the Patent Rules
2003 and the Manual of Patent Office Practice and Procedure.
 36

7. The protection of industrial properties is a necessity than a

compulsion'. Elucidate

Introduction

Industrial property protection, which is a subset of intellectual property (IP) law, includes the
protection of trademarks, patents, industrial designs, and geographical indications. In this
article, we will discuss the necessity of industrial property protection and why it is a
requirement for IP laws.

DEFINITION

IPR are exclusive legal rights that covers the privileges given to individual who are the owner
and inventors and have created something with their intellectual creativity. The right given to
a person over the creation of their mind, inventions, literarial artistic works, symbols and names
used in commerce. They help Giving the creators an exclusive rights his or her works for a
certain period of time.

1. Encourages Innovation and Creativity:

Industrial property protection is essential for promoting innovation and creativity. The legal
framework that protects industrial property rights provides a strong incentive for inventors,
entrepreneurs, and businesses to invest in research and development. Without adequate
protection, there would be little motivation for inventors to invest their time and resources in
creating new products or improving existing ones.

2. Promotes Economic Growth:

Industrial property protection is a critical driver of economic growth. Patents, trademarks, and
other forms of industrial property are essential tools for entrepreneurs and businesses to secure
investment and attract customers. By promoting innovation and creativity, industrial property
protection helps businesses and economies grow and develop.

3. Protects Consumers:

Industrial property protection also benefits consumers. Trademarks, for example, help
consumers identify the source of a product and distinguish it from competing products. Patents
protect consumers from potentially harmful or dangerous products by ensuring that only
products that meet rigorous safety standards are allowed to enter the market.
 37

4. Provides Legal Protection:

Industrial property protection provides legal protection for businesses and individuals. This
protection is critical in today's globalized economy, where intellectual property theft is a
growing problem. By providing legal recourse, industrial property protection helps to deter
theft and prevent the unauthorized use of intellectual property

5. Encourages Foreign Investment:

Industrial property protection is an essential factor in attracting foreign investment. Countries

with strong IP laws are viewed as more attractive investment destinations than countries with
weak or non-existent IP laws. Byoffering a stable legal environment for the protection of
intellectual property, countries can attract foreign investment and improve their economic
development.

6. Fosters Competition:

Industrial property protection promotes competition by enabling businesses to protect their

intellectual property and prevent others from copying their products or services. This
encourages businesses to innovate and develop new products and services that are more
efficient, effective, and cost-effective. As a result, consumers benefit from a wider range of
high-quality products and services.

7. Supports Small Businesses:

Industrial property protection is particularly important for small businesses, which often lack
the resources to compete with larger companies. By offering legal protection for their
intellectual property, small businesses can compete on a level playing field with larger
companies, helping to promote economic growth and development.

8. International Trade:

Industrial property protection is critical for international trade. It helps to ensure that businesses
can compete fairly in the global marketplace and that countries can protect their own
intellectual property when exporting products. International trade agreements often include
provisions for the protection of industrial properties, which can facilitate trade and investment.

9. Cultural Heritage:

Industrial property protection can help to protect cultural heritage by preserving traditional
knowledge and innovations. Traditional knowledge and innovations are often passed down
from generation to generation and are an important part of cultural identity. By protecting
traditional knowledge and innovations, countries can ensure that they are not exploited or
misappropriated by others.
 38

10. Protection of Investment:

The protection of industrial properties is essential to protect the investments made by inventors,
entrepreneurs, and businesses. The high cost of research and development, marketing, and
distribution of new products can be offset by the exclusive rights to manufacture, use, and sell
the product.

Conclusion

industrial property protection is a necessity in today's globalized economy. By promoting

innovation, encouraging foreign investment, fostering competition, and protecting consumers,
industrial property protection provides a range of benefits that are critical to economic growth
and development. Therefore, it is essential for governments to enact and enforce strong IP laws
that protect the intellectual property rights of individuals and businesses, and encourage
innovation and creativity.
 39

8. What is patent? Explain legal requisites for patenting.

INTRODUCTION

Every invention is not worthy of grant of patent. In order to obtain patent, an invention has to
pass through the triple requirement of newness (novelty), non-obviousness and usefulness.
Further even if these conditions are fulfilled, an invention may be denied grant of patent if it is
prohibited under law. In this chapter, essential requirements for grant of patent and details of
non- patentable inventions are discussed

DEFINITION

Section 2(m): of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for
any invention under the provisions of this Act.
A Patent is a monopoly right granted to a person who has invented a new and useful article or
improved an existing article or a new procedure of making an article.

Section 2(i) of this Act defines “Invention” as a new product or process involving an inventive
step and capable of industrial application.

Legal requisites for patenting

(I) Novelty

Novelty is of core value. As defined in sec 2(l) in Patent (Amendment) Act, 2005 a new
invention means any invention or technology which has not been anticipated by publication in
any document or used in the country or elsewhere in the world before the date of filing of patent
application with complete specification, which the subject-matter has not fallen in public
domain or that it does not form part of the state of the art. In other words the element of novelty
(newness) in an invention is dependent upon the state of prior art, i.e., the existing knowledge
and similar inventions already known in the particular field. There would be no novelty if there
has been prior publication and prior use of an identical invention.

For instance, the recent grant of patent in the USA to turmeric products was challenged on this
ground. The Indian Council of Scientific and Industrial Research (CSIR) challenged the grant
of patent on turmeric by the U.S. Patent Office on the plea that the patent could not be granted
since there was no novelty in the invention. Also that what had been patented was already
published in Indian texts and use of turmeric preparations has been made in our country since
times immemorial. The CSIR was successful in getting the grant of patent to an American
Company revoked.
 40

Mariappan v. A.R. Safiullah,

the patent has been granted in respect of a device used for manufacture of manually hauling
the agricultural produce. The plaintiffs alleged that the respondent-defendant, in fact, sold this
device to the Department of Horticulture, Govt. of H.P. and other private parties. The plaintiffs
consequently filed a suit praying for a decree for grant of permanent prohibitory injunction in
their favour restraining the defendant from infringing the Patent No. 195917 and also for a
decree of mandatory injunction virtually in the same terms. The defendant contested the suit
and contended that the plaintiffs have fraudulently obtained the patent and the patent has
wrongly been granted in their favour. The defendant further alleged that there is no novelty or
invention in the patent and in fact it is just centuries old device popularly known as "KILTA"
which was originally made of bamboo and has now been produced in plastic, it is also further
alleged that the defendant had anticipated the device in fact in December 2001. It designed a
similar Kilta and sent drawings of the same for manufacturing of the design to Arries Moulding
Company Ltd., Taiwan and thereafter the production of the Kilta was started and the same was
introduced in the market.

The Court through the Division Bench observed that a bare perusal of the definition of
invention clearly shows that even a process involving an inventive step is an invention within
the meaning of the Act. It is, therefore, not necessary that the product developed should be a
totally new product. Even if a product is substantially improved by an inventive step, it would
be termed to be an Invention. A Kilta is a traditional product which has been used since time
immemorial for carrying produce including agricultural produce in hill areas especially in the
State of Himachal Pradesh. The traditional Kilta is made of bamboo. The shape of a kilta is
conical having a wider circular opening on the top and it tapers and narrows down at the bottom.
There is virtually no difference in the overall design of the tradition Kilta or the devices'
developed by the plaintiffs and the defendant. A visual comparison of the three items prima
facie establishes that the articles manufactured by the plaintiffs and the defendant are virtual
copies of the traditional Kilta. The only difference is that the Kilta is made of bamboo and the
Kilta made by the plaintiffs is made of polymer.

the Court concluded that the device developed by the plaintiffs is in fact the result of traditional
knowledge and aggregation/duplication of known products such as polymers and, therefore,
cannot be said to be an invention. The plaintiffs are, therefore, not entitled to any injunction.

Novartis AG & Ors. v. Union of India,

the Supreme Court while dealing with criteria of novelty and inventive step stated that 'new
product in chemical and especially in pharmaceuticals may not necessarily mean something
altogether new or completely unfamiliar or not existing before. It may mean something
different from recent previous or one regarded as better than what went before. However in
case of chemicals and especially pharmaceuticals if the product for which patent protection is
claimed is a new form of known substance with known efficacy, the subject product must pass,
 41

in addition to clause (j) and (ja) of Section 2(1), the test of enhanced efficacy as provided in
Section 3(d) read with its explanation.

(II) Non-obviousness

Patent rights are not available for new, useful and non-obvious advances that are merely
obvious extensions or modifications of prior designs that could be achieved without the lure of
patent rights. A patent may not be obtained though the invention is not identically disclosed or
described, if the differences between the subject-matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which the said subject-matter pertains.
In addition to novelty, potentiality is to depend, upon the "non-obvious" nature of the "subject-
matter sought to be patented" to a person having ordinary skill in the pertinent art.

Patents ought not be granted for every trivial advancement. Minor improvements were
considered as reflecting the work of a skilful mechanic for which protection ought not be
granted. It is often difficult to determine whether a given improvement is a mere mechanical
advance or the result of the exercise of the creative faculty amounting to a meritorious
invention. The fact that the invention seems simple after it is made does not determine the
question.

Bajaj Auto Ltd. v. TVS Motor Company Ltd.,

Madras High Court observed that the term "obvious" is a circumstance where a person of skill
in the field, on going through the specification would complete the product Therefore, even if
any of the two ingredients, viz., technical advance or economic significance or both are
available, if such invention enables a person of skill in the field, on going through the
specification would complete the product, such invention can never be treated as an "inventive
step" and consequently no patent can be validly issued.

It further observed that even after the grant of patent under Section 43 of the Patents Act, 1970,
which is given effect from the date of filing of application for the patent under Section 53(1)(i),
it is open to a party, who is opposing the patent to prove that there are no inventive step in the
invention of a patentee and therefore, the patent granted need not be taken into consideration
at least at the stage of granting an order of interim injunction.

(III) Industrial application

An invention must be capable of industrial application' for grant of patent. The patent protection
is not available to purely abstract or intellectual creation. The use may not be for profit and
hence it includes agricultural use also. Capable of industrial application doesn't require proof
of actual use The potential to be used or made in industry is sufficient evidence for proof of
industrial application.
 42

Indian Vacuum Brake Co. v. E.S. Luard,

the Calcutta High court held that mere usefulness was not sufficient to support a patent.

The inventions which are not so useful are protected in some countries as 'utility model', but
this concept is not recognized in India.

Conclusion

Any creation, invention, idea or artistic work which is a result of the intellect of any person
falls within the ambit of intellectual property and the rights conferred upon such person for his
creation, work, idea or invention are known as intellectual property rights. Patents are a kind
of intellectual property. Any invention that results in the production of a new product or service
or the manufacturing of an already existing product through new means and technology can be
patentable provided that it does not fall into the list of non-patentable inventions.
 43

9. What are the factors responsible for the growth of patent law?
Explain.

INTRODUCTION

Every invention is not worthy of grant of patent. In order to obtain patent, an invention has to
pass through the triple requirement of newness (novelty), non-obviousness and usefulness.
Further even if these conditions are fulfilled, an invention may be denied grant of patent if it is
prohibited under law. In this chapter, essential requirements for grant of patent and details of
non- patentable inventions are discussed

DEFINITION

Section 2(m): of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for
any invention under the provisions of this Act.
A Patent is a monopoly right granted to a person who has invented a new and useful article or
improved an existing article or a new procedure of making an article.

Section 2(i) of this Act defines “Invention” as a new product or process involving an inventive
step and capable of industrial application.

Factors responsible for the growth of patent law

1.Economic Liberalization:

The liberalization of the Indian economy in the 1990s led to the opening up of various sectors
to foreign investment and increased competition. As a result, the importance of intellectual
property rights, including patents, increased significantly. In order to attract foreign investment,
India had to improve its intellectual property laws, which led to the growth of patent law.

2.TRIPS Agreement:

The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, signed by

India in 1995, mandated that member countries provide patent protection for pharmaceutical
products and processes. This led to the introduction of the Indian Patents Act, 1970, which was
amended in 2005 to comply with the TRIPS Agreement. The amendment made the Indian
patent law more stringent and provided greater protection to patent holders, thereby leading to
the growth of patent law.

3.Technological Advancements:

The growth of technology and the rise of the knowledge economy led to the growth of patent
law in India. Companies in the technology sector rely heavily on patents to protect their
 44

inventions and ideas, and the growth of this sector in India has led to a corresponding growth
in patent law.

4.Increased International Trade:

With the growth of international trade, it became important for India to comply with
international standards in intellectual property law. This led to the introduction of more
stringent patent laws to protect the interests of Indian companies in international trade.

5.FDI Inflows:

The growth of foreign direct investment (FDI) in India also led to the growth of patent law.
Foreign companies that invest in India want to protect their intellectual property rights and the
growth of patent law has provided them with the necessary protection.

6.Rise of Indian Pharma Industry:

The rise of the Indian pharmaceutical industry has been one of the key factors in the growth of
patent law in India. The industry has grown significantly over the years, and has become a
major player in the global pharmaceutical market. The industry relies heavily on patent
protection, and the growth of patent law in India has provided them with the necessary
protection to continue their growth.

7.Increase in Patent Applications:

The number of patent applications filed in India has increased significantly over the years. This
is due to the growth of the Indian economy, the rise of the technology sector, and the increased
importance of intellectual property rights. The growth of patent law in India has provided a
conducive environment for patent filing and has contributed to the increase in patent
applications.

8.Improved Enforcement Mechanisms:

The growth of patent law in India has also led to the introduction of improved enforcement
mechanisms. The Indian patent system has become more efficient and effective in protecting
the interests of patent holders, which has led to increased confidence in the system and
contributed to its growth.

9.Role of the Judiciary:

The Indian judiciary has played a crucial role in the growth of patent law in India. The judiciary
has been proactive in interpreting and enforcing patent laws, which has provided greater clarity
and certainty to patent holders. This has contributed significantly to the growth of patent law
in India.
 45

10.Awareness and Education:

The growth of patent law in India has also been driven by increased awareness and education.
The government and other stakeholders have undertaken various initiatives to educate people
about the importance of patents and intellectual property rights. This has led to increased
understanding and appreciation of the value of patents, which has contributed to the growth of
patent law in India.

Conclusion

the growth of patent law in India can be attributed to a combination of factors such as
international obligations, domestic needs, technological advancements, and the recognition of
the value of intellectual property rights. The Indian government'sefforts to strengthen the patent
law regime, including the amendment of the Indian Patent Act, establishment of specialized
intellectual property courts, and the appointment of specialized judges have also contributed to
the growth of patent law in India. The growth of patent law has led to increased investment,
promotion of innovation, and protection of intellectual property rights, which have helped to
boost the Indian economy.

10.What is a specification? Explain its kinds along with legal requisites

for its submission.

Refer 10 marks qstns 6 and 8

 46

6 MARKS

1. Write a note on Specification

Refer 6 marks qstn 6

2. Write a note on Infringement of patents

Introduction

The patent grants to the owner of patent, the right to prevent third parties from making, using,
offering for sale, selling or importing the products in India without the consent of the patent
holder. Any violation of the rights of patentee will constitute infringement of patent. But the
Act provides the procedure and remedies for preventing infringement. In this chapter, issues
relating to infringement and remedies are discussed in detail.

DEFINITION

Section 2(m): of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for
any invention under the provisions of this Act.
A Patent is a monopoly right granted to a person who has invented a new and useful article or
improved an existing article or a new procedure of making an article.

Section 2(i) of this Act defines “Invention” as a new product or process involving an inventive
step and capable of industrial application.

B. What amounts to Infringement

Following acts may constitute infringement:

(i) The colourable imitation of an invention

(ii) Immaterial variations in the invention

(iii) Mechanical equivalent

(iv) Taking essential features of the invention

A colourable variation or immaterial variation amounting to infringement is where an infringer

makes slight modification in the process or product but in fact takes in substances the essential
features of the patentee's invention. Infringement by mechanical equivalents would occur when
 47

he uses mere substitutes for those features so as to get the same result for the same purpose as
obtained by the patentee.

In determining whether what the alleged infringer is doing amounts to an infringement of a

particular patent, three questions are involved:

(i)The extent of monopoly right conferred by the patent which has to be ascertained by a
construction of the specification, particularly the claims;

(ii) Whether the alleged acts amount to making, using, exercising. selling or distributing a
product or using or exercising a method or process in the case of a process patent; and

(iii) Whether what the alleged infringer is doing amounts to an infringement of the monopoly
conferred by the patent grant.

Doctrine of pith and marrow

The pith and marrow of the invention is the essence of the invention which if taken and
reproduced in the infringed article even by incorporating a colourable variation of it within the
invention, it can be presumed that infringement has taken place. Courts apply the doctrine of
pith and marrow which means that the court is not to detect an absolute similarity between the
two but is to see whether the pith and marrow of the invention has been taken and if it has been
so done, there is an infringement.

Dunlop Pneumatic Tyre Co. Ltd. v. Neal,

The court held that purchaser of a patented article can carry out repair to it. But he cannot
manufacture a new article and claim that he has not infringed the patent claim based on reverse
engineering.

Acts which do not amount to infringement (Sections 47 and 107-A)

Following acts shall not be considered as an infringement of patent:

(i) Import of any machine, apparatus or other articles (of which patent is granted) by or on
behalf of government.

(ii) Manufacturing or use of patented process by or on behalf of government.

(iii) Manufacturing or use of patented articles or patented process by any person for the purpose
merely of experimentation or research including imparting instruction to pupils.

(iv) Import of patented drugs or medicines by the government for the purposes merely for its
own use or for distribution in any hospital or dispensary or medical institution run or
maintained by government.
 48

(v) Any act of making, constructing, using, selling or importing a patented invention solely for
uses reasonably related to the development and submission of information required under any
law for the time being in force, in India, or in a country other than India, that regulates the
manufacture, construction, use, sale or import of any product.

(vi) Importation of patented products by any person from a person who is duly authorized by
the patentee to produce, sell or distribute the product

Who can sue

(a) The patentee, including co-owner of patent.

(b) The exclusive licensee if the licence is registered.

(c) A compulsory licensee when the patentee refuses or neglects to institute proceedings.

(d)A licensee other than the above two licensees can bring an action for infringement
depending upon the terms of the contract between the licensor and licensee.
(e)Assignee, he can sue only after the application for registration of the assignment in his favour
has been filed. If a patent is assigned after the commencement of action, the assignee is to be
joined as a co- plaintiff.

Remedies

According to Section 108, if the plaintiff is able to prove the infringement by defendant, the
court may grant following reliefs:

(i) Injunction whether interlocutory or final.

(ii) Damages or Account of profits,

(iii) Delivery up or destruction of infringing goods.

(iv) Certificate of validity.

I. Injunction

The plaintiff may at the commencement of the suit or any time during the suit, move the court
for grant of an interim injunction to restrain the defendant from committing and continuing to
commit the acts of alleged infringement.
 49

Telemecanique & Controls (1) Limited v. Schneider Electric Industries SA,

The Madras High Court observed that, a monopoly of the patent is the reward of the inventor.
Patent creates a statutory monopoly protecting the patentee against any unlicensed user of the
patented device and therefore, the patent is entitled to injunction.

A. Temporary Injunction

For grant of temporary injunction, requirement of satisfying the Court about prima facie case,
validity of patent and balance of convenience should be established.

National Research and Development Corporation of India v. Delhi Cloth and General
Mills Co. Ltd.,

the Delhi High Court laid following principles:

1. Plaintiff has made prima facie case

2. Patent is valid and infringed

3. Patent is sufficiently old and has been worked

4. Balance of convenience is in favour of injunction being granted

5. The plaintiff will suffer irreparable loss if injunction is not granted.

Cadila Pharmaceutical Ltd. v. Instacare Laboratories Pvt. Ltd.,

the Gujarat High Court refused to grant temporary injunction on the ground that no prima facie
evidence of validity of patent was found.

Franz Xaver Huemer v. New Yash Engineers,

Delhi High Court denied prayer for temporary injunction on the ground of non-use of patent.

B. Final Injunction

Such injunction is granted at the conclusion of suit. The final injunction will remain in force
till the remaining term of the patent. But when the infringement relates to a patent endorsed as
"Licence or right", no injunction will be granted if the defendant is willing to take a licence.

II. Damages or Account of Profits

Plaintiff may be awarded either of the two. Both cannot be awarded together. The damages
may be awarded to compensate for the loss or injury suffered by plaintiff due to the action of
defendant. Whereas, the account of profits is determined on the basis of actual use of patentee's
 50

invention by infringer during the period of commission of the act or infringement. However,
in cases where infringement was committed during lapse of patent or before date of amendment
of specification, the damages or accounts of profit may not be granted.

Microsoft Corporation v. K. Mayuri and Ors.,

the Delhi High Court explained the principle laid down in computing damages or account of
profits giving an illustration court clarified that the amount of royalty payable for
manufacturing patented article will be multiplied by the number of infringed articles sold. For
example, if a person committing infringement has sold 2000 articles and royalty/licence fee
payable is 200/- per article. The infringer would have to pay damages to the extent of Rs. 4
lacs.

III. Delivery up or destruction of infringing goods

An order for delivery up or destruction is made with a view to prevent the defendant from
making use of the infringing articles which might be in his possession. It is a discretionary
order. The property in the articles which are made in violation of a patent resides in the infringer
though he is prevented from using them.

IV. Certificate of validity

If in any proceeding before the Appellate Board or a High Court for the revocation of a patent
the validity of any claim of a specification is contested and that claim is found by the Appellate
Board or the courts to be valid, the court may certify that the validity of that claim was contested
in that proceeding and was upheld. Where a certificate has been granted in respect of a claim,
in a subsequent suit for infringement or proceeding for revocation if the patentee relying on the
validity of that claim obtains a final judgment in his favour he will be entitled to full costs in
respect of that claim.¹

Bajaj Auto Ltd. v. TVS Motor Company Ltd.,

the Madras High Court held that prima facie there is novelty which means an invention and the
same has been registered under the Patents Act with priority date and the enablement of novelty
has been on the face of it proved by the applicant by marketing the product in large extent and
also without objection for fairly 5 long years and it is not proved that so far the product of the
applicant is "obvious". Therefore, the concepts of prima facie case, balance of convenience and
inadequacy of damages lean largely towards the applicant/plaintiff and the necessary
conclusion can only be the grant of injunction in favour of the applicant/plaintiff.

Novartis AG v. Mehar Pharma and Anr.,

the court observed that the settled law appears to be in relation to a patent, that the Court will
not grant an interlocutory injunction unless satisfied that (a) there is a real probability of the
plaintiffs succeeding in the trial of the suit, and (b) where the patent is of a recent date, no
interim injunction should be granted. More so, when there is a serious question as to validity
of the patent raised by the defendants to be tried in the suit.
 51

Gandhimathi Appliances Limited v. L.G. Varadaraju and others,

The court stated that though the grant of a patent by itself does not guarantee its validity, the
fact that a patent has been granted must be given some weight and significance while
considering the question of prima facie case. The plaintiffs are entitled to place reliance on the
fact that they have already secured patent. The grant of the patent does not on the basis of such
grant, make the patent impregnable. The burden is always on a plaintiff to establish its case
prima facie before it can claim any interlocutory relief. It is always open to the defendant to
question the validity of patent.
Conclusion
Patent infringement refers to the unauthorised use or manufacture of a patented invention
without the consent of the patent owner. The Indian Patent Act, 1970 provides several remedies
to address patent infringement, including injunctions, damages, and seizure, forfeiture or
destruction.

3. Write a note on patentable inventions

Refer 10 marks qstns 8

4. 'Z' a person has invented an antivirus software for the protection of

computers and wants to obtain a patent for it. Advise him.

5. An employee working for a firm comes out with an invention after

much efforts in the laboratory. But after the invention, the employer
obtains patent in the name of firm on the invention. Which of the
theory supports employee's position?
 52

6. Write a note on 'Rights of patentee'. (2)

Introduction

A patent shall confer on the patentee a monopoly right for a fixed term, but subject to certain
conditions and obligations. A patentee has exclusive right to exploit, use, sale or transfer his
patent. He can exclude others from exercising those rights which are available to him alone. It
shall be made clear that the rights discussed hereunder are not absolute rights; they are subject
to some limitations. Further, a patentee has some duties also which are found necessary in
larger interest of public.

DEFINITION

Section 2(m): of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for
any invention under the provisions of this Act.
A Patent is a monopoly right granted to a person who has invented a new and useful article or
improved an existing article or a new procedure of making an article.

Section 2(i) of this Act defines “Invention” as a new product or process involving an inventive
step and capable of industrial application.

B. Rights of Patentee

(i) Right to exploit patent (Sections 48 and 50)

Section 48 confers the rights to exploit the patent on patentee or his licensee or assignee or
agent. It means the patentee or the person legally authorised by him can make commercial use
of the patented invention. He can exclude third parties who do not have his consent. However,
this right is subject to the conditions laid down in Section 47 which empower the Government
to import or use the patent product for its own use. The co-owners of a patent shall also be
entitled to equal undivided share in patent.

(ii) Right to licence (Section 70)

10 If a patentee is not able or willing to exploit the patent himself, he can grant licence to some
other person and authorise him to exploit the patent and pay him the consideration or royalty.

(iii) Right to assign (Sections 70 and 68)

A patentee can fully or partially assign his patent to another person through sale, gift or any
other legal mode. Section 68 requires that such assignment should be in writing. In case of joint
patent, the co-owner can assign his share in patent.
 53

(iv) Right to surrender the patent (Section 63)

Under Section 63 of the Act, the patentee has the right to surrender his patent.

A patentee, if he so wants may offer to surrender his patent, at any time by giving notice in the
prescribed manner. When such an offer is made, the Controller should publish the offer with a
view to notifying every person other than the patentee whose name appears in the register as
having an interest in the patent. It is necessary to protect the interests of person like licensees,
equitable assignees, and others with whom the patentee might have contractual obligations
which are dependent on the continuance of the patent.

(v) Right to be issued duplicate Patent (Sections 154 and 118)

If a patent is lost or destroyed or its non-production is explained satisfactorily to the Controller,

the patentee has a right to apply for duplicate patent.

(vi) Rights against infringement (Sections 104-108)

The exclusive rights of patentee can be legally protected by excluding unauthorized persons
from exploiting patent of others. Violation of rights of patentee amounts to infringement.
Patentee has right to seek legal remedies including civil suit against infringer.

(v) Rights before sealing:

The patentee enjoyed certain rights even before the sealing of the patent also, under SECTION
24 OF THE ACT. Under this provision, on form the date or advertisement of the acceptance
of a complete specification and until the date

(vi) Right to apply for ‘patents of addition’:

CHAPTER IX OF THE ACT SECTIONS 54 TO 56 deal with patents of addition. A patent of

addition is the improvement of modification of an invention disclosed in the complete
specification of the main invention to apply for a “Patent of addition” relating to his “Main
invention”

(vii) Right of make conversion application:

Every patentee in India has a right to make a convention application on a basic application for
protection of his patent in other convention countries, in case of international instruments being
signed by India and those other convention countries. Generally, this right is dependent on the
principle of ‘reciprocity’ and ‘national treatment’ in international law.
 54

(ix) Right to be supplied copies and certificates:

Certified copies of any entry in the register, or certificates of or extracts from patent application
and other public documents in the patent office or from the register and other records kept
there, maybe obtained by the patentees and also other by paying the prescribed fee.

OBLIGATION OF PATENTEE:

The patent granted confers not only rights but also certain duties and obligations.

i) If the patent is nor used and the granted monopoly is abused, compulsory license
may be granted to any person who is willing to work the patent.
ii) Patent should be made available to public at reasonable price.
iii) Patentee should submit periodical statements to the controller as to the as to the
extent which the patented work has been worked on the commercial basis in India

Conclusion

The legislation has explicitly granted a number of rights to the patentee. From applying for a
patent to surrendering the same, from choosing to be a single patentee to co-ownership of a
patent, the legislation has been flexible and quite modern in its approach, considering its
enactment year being 1970.

7. 'X' has an invention relating to atomic energy and wants to obtain patent for it.
Advice him.

8. The controller of patent in India rejects an application being submitted by the

applicant to seek patent relating to a method and device for accessing information
sources and services on the web holding it as non-patentable. The applicant
challenges it before the High court. Decide.
 55

9. Patent agent.

Introduction

A patent agent is a person who is registered and authorized by law to practice before an Indian
Patent Office and deal with patent applications. The expertise of a patent agent is used to protect
intellectual property and prevent infringement. In order to become a patent agent, one has to
qualify the Indian Patent Agent Exam conducted by the Department for Promotion of Industry
and Internal Trade. Chapter XXI of the Patents Act, 1970 prescribes the provisions dealing
with patent agents.

Definition

Section 2(1)(n) of the Patents Act, 1970 defines a patent agent as “a person for the time being
registered under the Act as a patent agent”. Therefore, a patent agent is qualified to deal with
all the legal aspects associated with a patent application for eg. drafting technical applications,
filing of patent applications, etc.

Patent Agents (Sections 125 to 132)

Patent agents are authorised practitioners in the field of patent. They are registered by the
Controller and legally authorised to transact business and represent the patent holder before
Controller.

Qualification for Registration as Patent Agent

According to Section 126, a person with following qualifications is eligible for registration as
patent agent.

(a) he is a citizen of India;

(b) he has completed the age of 21 years;

(c) he has obtained a [degree in science, engineering or technology from any University
established under law for the time being in force] in the territory of India or possesses such
other equivalent qualification as the Central Government may specify in this behalf, and, in
addition,-

(i) has passed the qualifying examination prescribed for the purpose; [or]
(j) has, for a total period of not less than ten years, functioned either as an examiner or
discharged the function of the Controller under Section 73 or both, but ceased to hold
any such capacity at the time of making the application for registration;]
 56

(d) he has paid such fee as may be prescribed.

Registration of Patent Agents

Rule 109 of the Patents Rules, 2003 prescribes that any person who wants to be registered as a
patent agent should make an application in Form 22 and must furnish any information which
may be required by the Controller. Any person who wants to appear in the qualifying
examination should make a request to the Controller along with the prescribed fee after the
examination has been announced.
After the qualifying exam has been passed by the candidate and after the Controller has
obtained further information which he considers necessary, he shall on receipt of the requisite
fee, enter the name of the candidate in the register of patent agents and issue a certificate of
registration to him as a patent agent. For a person’s name to be continued in the register of
patent agents he/she must pay the requisite fee.

Rights and Restrictions on Practice as Patent Agents

A patent agent is entitled to:

• practice before the Controller; and
• prepare all documents, transact all business and discharge other functions in connection
with any proceeding before the Controller under the Act.
• apply for or obtain patents in India or elsewhere;
• prepare specifications or other documents required under the Act or of the patent law
of any other country;
• giving advice related to the validity of patents and their infringement.
However, the rights of a patent agent are not absolute and are subject to certain restrictions.
The various restrictions on the practice as a patent agent are as follows:
• No person can practise, describe or hold himself out as a patent agent whether alone or
in partnership nor permit himself to be so described unless he or his partners are
registered as a patent agent;
• No company or body corporate can practise, describe or hold itself out as a patent agent
nor allow itself to be so described.

Conclusion
The Controller can remove the name of any person who is registered as a patent agent from the
register after giving that person a reasonable opportunity of being heard, where the Controller
is satisfied and after further inquiry which the Controller thinks fit to make.
 57

10.A petitioner challenges Section 126 of Patent Act as unconstitutional

on the ground that it goes against Article 19(1)(g) of the Constitution
of India as the said Section does not permit advocates to carry-out
patent practice. Decide

11.Surrender of patent

Introduction

The monopoly rights granted to patentee, as discussed in chapter eighteen is subject to certain
obligations and restrictions. A patentee can surrender his patent, if he is not willing to carry out
those obligations. Similarly if the Patent is obtained erroneously or contrary to legal provisions
of Patent Act, it can be revoked. The Patent Act also provides an opportunity to patentee to get
his lapsed patent restored on fulfilling some conditions.

DEFINITION

Section 2(m): of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for
any invention under the provisions of this Act.
A Patent is a monopoly right granted to a person who has invented a new and useful article or
improved an existing article or a new procedure of making an article.

Section 2(i) of this Act defines “Invention” as a new product or process involving an inventive
step and capable of industrial application.

Sec 63. Surrender of patents.

(1) A patentee may, at any time by giving notice to the Controller, offer to surrender his patent.

(2) Then Controller shall publish the offer and notify every person whose name appears in the
register as having an interest in the patent.

(3) Then Any person interested may, within the prescribed period after such publication, give
notice to the Controller of opposition to the surrender, and the Controller shall notify the
patentee.
(4) If the Controller is satisfied after hearing the patentee and any opponent, he may accept the
offer and, by order, revoke the patent.
 58

Revocation of Patent: Sec 64

A patent may be revoked on a petition of any person interested or of the central govt or the
appellate Board or on a Counter claim in a suit for infringement of patent by the H.C

Grounds for Revocation.

1) That the invention was claimed in a valid claim of earlier priority date in the Complete
specification of another patent granted in India.

2) That the patent was granted on the application of a person not entitled under the provisions
of this Act

3) That the patent was obtained wrongfully in Contravention of the rights of the petitioner.

(4) that the subject of any claim in the complete Specification is not an invention.

5) That the invention claimed is not new which was already known by the public or used in
India.

6) That the invention claimed, is obvious or does not involve any inventive step.

7) That the invention claimed is not useful.

8) That the Complete specification does not Sufficiently and fairly describe the invention or
the Method for working of invention are not sufficient to work the invention or it does not
disclose the best method of performing it, which was known to the applicant.

9) that the scope of any claim is not sufficiently & clearly defined

10) That the patent was obtained on a false suggestion or representation.

11) That the subject of any claim in any claim of Complete specification is not patentable.

12) That the invention was secretly used in India.

13) That the applicant failed to disclose any information which is material.

14) That the applicant Contravened any direction for secrecy under sec 35.

15) That leave to amend complete Specification was obtained by fraud.

16) That the Complete specification dees not disclose or wrongly mentions the Source or origin
of biological material used for invention.
 59

17) That the invention was anticipated having regard to the knowledge, oral or available within
any Local or any Indigenous Community in India.

Sec 65: Revocation of patent or Amendment of Complete Specification on direction from Gort
in cases at relating to Atomic energy

After grant of a patent, if the centralis satisfied that a patent is for an invention relating to
atomic energy for which no patent can be granted under sec 20 (1) of Atomic energy Act, 1962,
then it may direct the Controller to revoke the patent after giving notice.

Sec 66: Revocation of patent in Public interest

If the Central govt ins of opinion that a patent or the mode in which it is exercised is
mischievous to the state or to the public, it may be revoked after after giving opportunity to be
heard.

Conclusion

Section 63 of the Patents Act, 1970 allows a patentee to surrender a patent. The patentee can
offer to surrender his patent by giving notice to the Controller. The offer to surrender the patent
should be published by the Controller, and every person interested in the patent must also be
notified of the same
 60

UNIT 2

10 MARKS

1. Explain the salient features of Trade Mark Act, 1999. (2)

2. Examine the powers and functions of Registrar of Trade Marks.
3. What are the essential features of a trademark? Enumerate the trademarks that are
registrable and not registrable
4. What is passing off action? How it is different from infringement?
5. Explain the procedure for the registration of trade mark under Trade Mark Act, 1999.
6. Examine the essential features of a trademark and the different types of trademarks.
Or
Explain kinds of Trade Mark
7. Explain the grounds of refusal for the registration of a trademark.
Or
What are the grounds on which the registration of trade mark may be refused? Examine
8. Define Trade Mark. Explain functions of Trade Mark
9. Define Mark. Explain essentials of trade mark

6 Marks

1. Write a note on Deceptively Similar Trade Marks. (2)

2. Write a note on Domain name (2)
3. 'X' is a registered user of a trademark 'Nirma'. Now 'Y' wants to apply the trademark
'Nima' for his products. Advise him
4. The plaintiff holds trade mark on Andalsnuff. The defendant begins to use trade mark
as Ambalsnuff. The plaintiff challenges it. Decide.
5. Write a note on 'Certification marks'.
6. Examine the difference between infringement and passing off.
7. The plantiff company which is assigned with all rights, titles and interests along with
trade mark existing in the personality of the artist, a famous pop star, challenges
unauthorised use of artist's reputation in selling minature dolls of the artist by the
defendant company before the High court. Decide.
8. Defences available to the defendant against infringement of trade mark.
9. The defendant company assigns its trade mark 'MAAZA to the plaintiff company with
all intellectual property rights and its goodwill in India concerning mango fruit drink.
Afterwards the defendant company starts exporting fruit drink under the name of
'MAAZA' to Turkey. The plaintiff company seeks legal action against the defendant
company. Decide.
10. Collective mark.
 61

10 MARKS

1. Explain the salient features of Trade Mark Act, 1999. (2)

Introduction

Trade and commerce is the lifeline of economy of any nation. In an era of competitive
economics, the goods are traded by their names which may indicate their quality and identity
distinct from others. Trademark is, by far, the most commonly used intellectual property right.
The importance of trademark was recognized at global level through Madrid agreement way
back in 1891. From Madrid to TRIPs, the international legal system in the field of trademark
has developed significantly. In India the trademark law has undergone major changes with the
enactment of new Trademarks Act, 1999. In this chapter, the legal developments of Trademarks
in India are discussed.

Meaning

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Section 2(m) defines "mark" as a device, brand, heading, label, ticket, name, signature, words,
letter, numerals, shape of goods, packaging or combination of colours or any combination
thereof.

Salient Features of Trademarks Act, 1999

The Trade and Merchandise Marks Act, 1958 has served its purpose over the past four decades.
It was felt that a comprehensives review of the existing law be made in view of developments
in trading and commercial practices, increasing globalization of trade and industry, the need to
encourage investment flows and transfer of technology, need for simplification and
harmonization of trademark management systems to give effect to important judicial decisions.
To achieve these purposes, the Act proposes to incorporate inter alia the following features:

(a) Providing for registration of trademark for services, in addition to goods. This is a novel
feature introduced by the Act of 1999.

(b) Registration of trademarks, which are imitation of well known trademarks, not to be
permitted, besides enlarging the grounds for refusal of registration, consequently, the
provisions for defensive registration of trademarks have been proposed to be omitted.

(e) Amplification of factors to be considered for defining a well-known trademark.

 62

(d) Doing away with the system of maintaining registration of trademarks in Part-A and Part-
B with different legal rights, and to provide only a single register with simplified procedure for
registration and with equal rights.

(e) Simplifying the procedure for registration of registered user and enlarging the scope of
permitted use.

(f) Providing for an Appellate Board for speedy disposal of appeals and rectification of
applications which under the Act of 1958, were entrusted to the High Court.

(g) Providing for registration of "Collective Marks" owned by associations etc.

(h) Transferring the final authority relating to registration of certification trademarks to the
Registrar instead of the Central Government.

(i) Providing for enhanced punishment for the offences relating to trademarks on par with the
present Copyright Act, 1957 to prevent the sale of spurious goods.

(j) Prohibiting the use of someone else's trademarks as part of corporate names, or name of
business concern.

(k) Extension of application of convention country to include countries which are members of
Group or Union of countries and Inter- Governmental Organisations.

(l) Increasing the period of registration and renewal from 7 years to 10 years as required by
TRIPS.

(m) Filing of single application for registration in more than one class.

(n) Making trademark offence cognizable.

The Trademarks (Amendment) Act, 2010 and the Trademarks (Amendment) Rules, 2013 came
into force on July 08, 2013. In principle, the amendment marks the official entry of India to the
International Filing System under the Madrid Protocol.

The amendments are primarily to streamline the Indian Trademarks Law in the line with the
Madrid system-

• Classification of goods and services will be as per the current edition of the NICE
classification as published by World Intellectual Property Organization (WIPO). In
addition to NICE classification, the Registrar will also publish a classwise and
alphabetical index of such goods and services including goods and services of Indian
origin.
 63

• Registration of trademarks in respect of textile goods (consisting exclusively of

numerals or letters) has been done away with.
• An opposition can be filed within 4 months from the date of advertisement/re-
advertisement of the application in the trademarks journal doing away with filing of
application for extension of one month before the expiry of the initial 3 months period.

Bringing in these amendments gets India to move a step closer to standard and a practice
followed by other countries. Moreover, it avoids conflict with the laws of other countries in
which the applicant seeks to protect their trademarks especially when the applicant maintains
an international portfolio. In respect of the Madrid protocol, we will have to watch how the
Indian Trademark Office would handle the applications when they are already buried neck deep
tons of applications crying for attention.

From 1958 to 1999, the Trademark Law in India has come to a full circle. Like other laws on
intellectual property, the law relating to trademarks in India is now harmonized with TRIPs
mandate

Conclusion

The New Trade Marks Act provides for registration of Trademarks, service marks, filing of
multiclass applications in multiple entries, increasing the term of registration of a trademark
and recognition of the concept of well-known marks, etc. The trademarks Act provides for
various violations, wrongful uses, infringements, deception of trademarks.
 64

2. Examine the powers and functions of Registrar of Trade Marks.

Introduction:

The Trademarks Act is mainly implemented through two important functionaries, namely,
Registrar and Intellectual Property Appellate Board. These bodies are empowered with
necessary powers for proper discharge of their duties. In this chapter their powers and role is
described.

Meaning

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Section 2(m) defines "mark" as a device, brand, heading, label, ticket, name, signature, words,
letter, numerals, shape of goods, packaging or combination of colours or any combination
thereof.

Powers

Registrar is the key functionary under the Act. The Central Government appoints Controller
General of Patents, Designs and Trademarks as Registrar of Trademarks. The Central
Government may also appoint such other officers with such designation as it thinks fit under
the superintendence and direction of the Registrar, for the purpose of discharge of such
functions of Registrar as may be authorised. The Head Quarter of Trademark Registry is at
Mumbai with branches at Kolkata, Delhi, Chennai and Ahmedabad.

The Registrar of Trademarks mainly deals with registration of trademarks and issues related to
registration. He is vested with wide ranging discretionary powers. In all proceedings under the
Act, before the Registrar, he shall have all the powers of a Civil Court for purposes of receiving
evidence, administering oath, enforcing the attendance of witnesses, compelling discovery and
production of documents and issuing commission for the examination of witnesses. He can
also review his decisions.

▪ A trademark registration center has the obligation to enlist requests, petitions and
applications;
▪ The applications for change of allure, or resulting procedures, or the request or
application is gotten by the selected registrar.
▪ A registrar is under the position to get applications for new request or sees and the
related administrations.
 65

▪ He has the power to move a request to the common court as coordinated by Tribunal.
▪ The short date summons and notification are additionally needed to be gotten by the
registration center.
▪ Under section 4 of the Trademark Act, 1999, an trademark registration center
recorded as a hard copy can pull out or move any forthcoming matter before him to
another official, and it is his circumspection to choose if the subject is to be managed
either all over again or, from the stage from which it was removed or moved.
▪ He gets applications that worry the orders with respect to the affirmation, assessment
and check of records.
▪ The registrar presents the innate powers of a common court.
▪ He can call for proof, can control pledge for the reasons, implement the participation
of witnesses, uphold and request the records.
▪ Can lead the assessment of witnesses;
▪ He has the execute orders that he sees as sensible, and exposed to arrangements
referenced under section 157.
▪ A registrar holds the powers to survey his own choice on an application that has been
placed up for his sake.
▪ Certain optional powers are additionally vested in the possession of a registrar in
regards to the issues. In any case, section 128 advances a condition saying that, on the
off chance that a chance of being heard has not been given to the trademark
registration center, then, at that point, he can’t exercise such power unfavorably
against an individual concerned.
▪ The registration center might rely on the realities that vests with him in his normal or
general information. He might take legal notification of the utilization and notoriety
of any trademark registration, despite the fact that Intellectual Property Appellate
Board has affirmed that the standing and use are needed to be demonstrated.

Functions of Registrar

Registrar is empowered to discharge various functions relating to

i) classification of goods and services for purpose of registration (Section 7);

ii) granting or refusing to register a trademark (Sections 8 to 16);
iii) correction and amendment of register (Section 22);
iv) renewal, removal and restoration of registration (Section 25),
v) registration of assignment and transmission of trademark (Section 45).

The appeal against the decision of Registrar shall lie to Intellectual Property Appellate Board
within ninety days from the date on which the order or decision sought to be appealed against
is communicated to such person preferring appeal.

The registrar of Trade Marks envoys very vast powers under different sections of the Trade
Marks ordinance 2001. The important powers and functions of the registrar under different
sections areas under.
 66

(1)Responsibility:

He is responsible for the superintendence and direction of the trademarks registry under sub-
section 2 of section

(2)Review:

under section 8 he may review, any function, matter, case or decision of any officer, or
withdraw any function, matter or case from any officer or staff, and deal with such functions,
matter or case himself either de novo or stage from which was so withdrawn or transfer the
same to another officer or staff at any stage

(3)Determination:

to determine the class of goods or services under section 12(2).

(4)Publication:

publish alphabetical index of classification of goods and services under section 13(1)

(5)Refusal:

refuse to admit an application if it does not contain all the particulars under section 22(4)

(6)Examination:

Examine the application and make a search of earlier trademarks under section 27.

(7)Apposition:

Publish the application for opposition under section 28

(8)Issuance of certificate:

register a trade mark under section 33(1); publish the registration and issue a certificate under
sub section 4 and abandon the application under sub section 5 if registration is not completed
under 12 months.

(9)Informing the proprietor:

inform the proprietor about the expiry and manner of renewal of registration under section
35(2) restore the registration under sub-section 6.
 67

(10) Alteration:

aloe alteration of registration under section 37(2)

(11) To register as an object:

to register a Trade Mark as an object of the property under section 71.

(12)Revocation:

refer an application of revocation under to the high court or district court under section 73.

(13)To refer the application:

to refer the application for grounds of invalidity of registration to the high court or district
court under section 80.

(14) Inspection:

keep and make available for public inspection by any person a list of state emblems, official
marks, hallmark, abbreviations and names of international organisations under section 89

(15)Changes and ratification:

make changes, ratification and correction of errors or omission under section 96.

(16) Shoe cause:

ask for shoe cause under section 102 for falsely representing a trade mark as registered.

(17)File a suit

the registrar can file a suit for restrain of use of government arm and state emblems under
section 103

(18)Provide information:

to provide information about applications and registered trademarks under section 109.

(19)Impose fine etc:

to award costs to the aggrieved party, take security for costs, impose fine and determine the
mode of costs or fines under section 110
 68

(20) Power of civil court:

the registrar have the powers of civil court for receiving evidence, administrating oaths,
enforcing the attendance of witnesses, compelling the
discovery of any production of documents, issue commission for examinations of witnesses
and grant a certificate, take evidence orally or by affidavit under section 111 by giving an
opportunity of hearing

(21) statement in writing:

to submit a statement in writing signed by him instead of appearing before high court.

(22) Issue certified copies:

issue certified copies of any entry in the registered or any document under section 121.

(23) Extend time for submitting an application:

registrar may extend time on an application under section 123 and cannot be compelled for
production of register under section 124.

Conclusion

The registrar is the officer in charge of the registry office and having the powers and functions
regarding registration of Trade Marks which has been vested to, by the ordinance, and the
complete procedure of appointment of Registrar
 69

3. What are the essential features of a trademark? Enumerate the

trademarks that are registrable and not registrable
Or
Define Mark. Explain essentials of trade mark
Or
Examine the essential features of a trademark and the different types
of trademarks.
Or
Explain kinds of Trade Mark

Introduction

Trademark is a product of competitive trade practices. Every trader seeks to sell his product by
its name and distinctiveness. The changing business practices have also changed the concept
and philosophy of trademark It is therefore, necessary to understand the essential characteristics
and the purposes for which a trademark is used. This chapter deals with general aspects of
trademarks.

Definition of Trademark

A trademark is a visual symbol in the form of a word, device or a label, applied to articles of
commerce with a view to indicate to the purchasing public, that they are the goods
manufactured or otherwise dealt by a particular person as distinguished from similar goods
manufactured or dealt by other persons.

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Section 2(m) defines "mark as a device, brand, heading, label, ticket, name, signature, words,
letter, numerals, shape of goods, packaging or combination of colours or any combination
thereof. Reading together, we may conclude that the definition of trademark is inclusive and
not exhaustive. There could be various types of combinations of words, names, letters to create
a trademark. Distinctiveness is the hallmark of a trademark.

Characteristics of Trademark

Based on various judicial verdicts, certain essential characteristics of trademark may be

highlighted as under:
 70

(i)The definition of trademark and mark includes within itself, trade name under which articles,
goods are sold. (Use of "Kirloskar", "Bajaj" or "Godrej" as corporate names is permissible)
(ii) Trademark is a kind of property and is entitled to protection under law.
(iii) Trademark is generally transmitted in connection with the goodwill of a business.
Therefore, law does not recognise transfer of trademark per se, separate from goodwill of the
business.
(iv) Trademark may by registered or unregistered. Registration/ ensures ownership of
trademark and it enables him to avoid proving his title against any infringement or the mark.
But in case of unregistered trademark the only way in which the owner can protect the
infringement in the passing off action
(v) Trademark has many species such as service certification marks, collective marks and well
known trademarks.
(vi) Distinctiveness is the best quality of a trademark.

Imperial Tobacco V. Registrar,

Trademarks the word Distinctiveness was held to be some quality in trademark which
earmarked the goods marked as distinct from those of other products or such goods.

Essential for a good Trademark

Besides possessing a distinctive trademark, it should possess the following attributes:

1. it should be easy to pronounce and remember, if the mark is a word;

2. the device should be capable of being described by a single word;
3. it should be of such character, which makes it spell correctly and write legibly;
4. it should be short
5. it should be attractive to eye;
6. it should satisfy the requirement of registration.

Some Illustrations of Various Forms of Trademarks

A trademark can be visualized in many forms, viz., word, letter, numerals, name and so on. We
shall give hereunder some illustrations of various well-known prevalent trademarks found in
different forms.

a) Brand: It usually refers to those kind of marks which are branded on goods themselves
constituting the trademark. Illustration-PERRY brand rice, TORTOISE brand mosquito coil.

b) Letters: The letterforms have been very useful elements for designers to work with and
develop a popular trademark. Some reputed examples of letter marks are, LG, GM, IBM

c) Label and Ticket: Label is a composite mark containing various features including device,
words usually painted on paper and attached to goods themselves. A ticket may be said to be a
 71

label attached to goods by a string. Some popular examples relating to garments are
"WRANGLER" jeans, 'PENTALOON" shirts, ZODIAC' ties.

d) Numerals- A combination on numerals can also be used as a trademark-Illustration 303

capsules, '555' cigarettes.

e) Symbol or Logos- A logo is a visual depiction of a manufacture or a company and gives an

identity to it. Generally logos are used as service marks. Illustration-TATA, IDBI, ICICI, LIC,
The artistic element in a symbol or logo is also protectable under Copyright Act.

f) Containers- A container in a three dimensional form may be treated as a mark under Section
2(m), a two dimensional mark may also form part of a trademark.

g) Shape of Goods- A unique shape of goods may also be protected as trademark. Illustration-
shape of soap. shape of tooth brush.

h) Packaging- A Packaging' can also get trademark protection. (A pouch containing tooth paste
or cream with a distinctive feature).

i) Device- A mark which may not fall under any categories mentioned hereinabove, may be
covered under device.

j) Title- A title of book or magazine or periodical is also qualified to be a valid trademark.

Example-India Today, Outlook, Femina).

Kinds or Types of Trade Mark

A.Service Mark
B. Collective Marks
C. Certification Trademark
D. Well-known Trademarks
E. Internet Domain Name
F. Modern Marks
(i) Sound mark-
(ii) Smell Mark-
(iii) Taste Mark-
(iv) Shape of Goods-
(v) Holograms and Moving Images:
(vi) Colour marks:
(vii) Motion marks:
G. Trade Dress
 72

A.Service Mark

Trade in services has become a major business activity at national and global level. Since
inception of WTO the global exchange of services have become very frequent. Like
commodities and goods, services are represented in some visual forms. Under the Trade and
Merchandise Marks Act, 1958 concept of service marks was not available. But in the
Trademark Act, 1999 the service marks are legally protected by grant of registration.

The Act defines service as under:

"Service" means service of any description, which is made avain ble to potential users and
includes the provision of services in connection with business of any industrial or commercial
matters such as banking, communication, education, financing, insurance, chit funds, real
estate, transport, storage, material treatment, processing, supply of electrical or other energy,
boarding, lodging, entertainment, amusement, construction, repair, conveying of news or
information and advertising. (Illustration-Logos of SBI, ICICI, IDBI, LIC, Hotels and other
service providers Industries). It may be noted that the definition given under the Act is similar
to the one given in the Consumer Protection Act, 1986. The service mark protection can be
claimed in relation to services rendered in connection with business of any industrial or
commercial nature and not of philanthropic or gratuitous nature.

B. Collective Marks

A collective mark means a trademark distinguishing the goods or services of the members of
an association of persons not being a partnership firm, which is the proprietor of the mark from
those of others, whereas the trademark belongs to an individual but a collective mark belongs
to an association of persons, other than partnership firm. Illustration-Bajaj, Godrej etc. As
regard registration a collective mark is not registered if it is likely to deceive or cause confusion
on the part of public, particularly if it is likely to be taken to be something other than a collective
mark.

C. Certification Trademark

Certification Trademark means a mark capable of distinguishing the goods or services in

connection with which it is used in the course of trade which are certified by the proprietor of
the mark in respect of origin material, mode of manufacture of goods or performance of
services, quality, accuracy or other characteristics of goods or services not so certified and
registerable under the Act. A mark shall not be registerable as a certification trademark in the
name of a person who carries trade in goods of the kind certified or a trade of the providing of
services of the kind certified. (Illustrations-'Agmark' for food items, 'Hallmark' for Jewellery).

D. Well-known Trademarks

The concept of well-known trademarks has been introduced by Trademarks Act, 1999. Section
2(zg) states as under: "Well-known trademark", in relation to any goods or services. means a
 73

mark which has become so to the substantial segment of the public which uses such good 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. (Illustration-Reliance, Bata, Colgate, Ponds, Parle, Britenin etc.).

Enfield India Ltd. v. Deepak Engineering Syndicate,

the application for registration of a trademark 'Bullet' in respect of diesel oil engines in class 7
claiming user since 1978, has been filed. It was opposed by Enfield India Ltd., the proprietor
of the mark 'BULLET' and having much reputed name 'ENFIELD BULLET' in the market. It
was held that a person adopting a well-known mark would take advantage of reputation of that
well known mark which could not be permitted.

E. Internet Domain Name

Use of computer and information technology have brought revolutionary changes in business
methodology. The Information Technology Act, 2000 has paved the way for Ecommerce. In
the present scenario Internet domain names play a very vital role in promotion of business.
They are valuable corporate assets. With the advancement and progress in the technology, the
services rendered on the Internet site have also come to be recognized and accepted and are
being given protection so as to protect such provider of services.

Marks and Spencer P.L.C. v. One in a Million,

it was held that any person who deliberately registers a domain name on account of its similarity
to the name, brand name or trademark of an unconnected commercial organisation must expect
to find himself on the receiving end of an injunction to restrain the threat of passing off, and
the injunction will be in terms which will make the name commercially useless to the dealer.
It was held in that decision that the name "Marks and Spencer" could not have been chosen for
any other reason than that it was associated with the well-known retailing group. The decision
further goes on to say that the value of the name consists solely in its resemblance to the name
or trademark of another enterprise, the court will normally assume that the public is likely to
be deceived, for why else would the defendants choose it? Its coming upon a website called
https:/marks and spencer.co.UK would naturally assume that it was that of the plaintiffs.

Card Service International Inc. v. McGee

it was held that the domain name serves function as the trademark and is not a mere address or
like finding number on the internet and, therefore, it is entitled to equal protection as trademark.
It was further held that a domain name is more than a mere internet address for it also identifies
the internet site to those who reach it, much like a person's name identifies a particular person
or more relevant to trademark disputes, a company's name identifies a specific company.
 74

Celedar Production Ltd. v. Gaurau Mehrotra,

the Delhi High Court held that since the domain name was more than an internet address,
thereto, person could certainly seek protection of its domain name. To resolve the issues
relating to registration of domain name globally and resolve the issues of cyber piracy and
trademark dilution, The WIPO has formulated Uniform Domain Names Dispute Resolution
Policy (UDRD). WIPO has also developed a Domain name system (DNS) and an independent
global institution, Internet Corporation for Assigned Names and Numbers (ICANN) has been
established.

Kamal Trading Co. v. Gillette UK Ltd.,

injunction was sought against defendant who was using the mark 7 O'clock on their
toothbrushes. The Bombay High Court held that plaintiff trademark 7 O'clock on shaving,
razors, shaving cream and blades is a well-known trade mark and has acquired an extensive
reputation all over the world. Use of an identical mark by defendant would lead to deceptive
similarity and confusion. The defendant was prohibited from using 7 O'clock mark for their
toothbrushes.

Rolex Sa v. Alex Jewellery and Ors.,

the plaintiff brought an action against defendant's further use of trade mark. ROLEX on their
artificial jewellery. Invoking the provisions of Sections 2 (Z)g) read with section 11 (6) of
trademarks Act 1999 the Delhi High Court held that trademark ROLEX is a well-known
trademark of plaintiff and its use by defendant to sell their jewellery may cause a confusion in
the mind of customers that there is a connection of defendant's product with plaintiff. The court
restrained defendant from using ROLEX for their Jewellery Products.

Yahoo, Ine. v. Akash Arora,

the single Judge of the Delhi High Court rejected the argument that the provisions of the Indian
Trademark Act would not be attracted to the use of the domain trade name or domain name on
the Internet. The Judge held that the two marks/domain names. "Yahoo" of the plaintiffs and
"Yahoo India" of the defendants are almost similar excepting for the use of suffix "India" in
the latter. The Court also rejected. the argument of the defendants that the Internet users are
sophisticated users and only literate people who are able to ascertain can approach the actual
Internet site that they intend to visit. The Judge observed that if an individual is a sophisticated
user of the Internet, he may be an unsophisticated consumer of information and such a person
may find his/her way to the different Internet site which provides almost similar type of
information as that of the plaintiff and thereby confusion could be created in the mind of the
said person who intends to visit the Internet site of the plaintiff, but in fact reaches the Internet
site of the defendant.
 75

Rediff Communication Ltd. v. Cyber Booth,

the Bombay High Court held that the domain name "Radiff" is deceptively similar to plaintiff's
domain name "Rediff" and therefore, Court restrained the defendant from using domain name
"Radiff" by granting injunction. The above foreign and Indian judicial verdicts clearly establish
that Internet domain name are also treated as trademark capable of legal protection.

F. Modern Marks

With the advancement of technology and competition in marketing at global level a new
category of modern marks are emerging. These marks include, sound marks, smell marks, three
dimensional marks, such as shape of goods, taste marks, feel marks and hologram marks.
Courts in Indian and foreign jurisdiction have also recognized them as trademarks, provided
they can be graphically represented and fulfil the necessary conditions. Each of the above mark
is discussed hereunder with latest position.

(i) Sound mark-

Sound marks are gaining global recognition and they are being registered. WIPO standing
committee on the Law of Trademark, Industrial Designs and Geographical Indications has
agreed that Trademark Registry may require that the representation of Sound mark consisting
of musical notation on a stave, a description of the sound constituting the mark, or an analog
or digital recording of that sound or of any combination thereof.

Over the years, there have been only a handful of registration of sound marks in India. The first
being the Yahoo Yodel of Yahoo Inc, which was registered in 2009. But the Trademark Rules
2017 have revised the procedure and made it easier for companies to file application for
registration of sound marks, by appending an MP3 File in the application. Some noted sound
marks which have been registered are as under.

1. Theme Song of National Stock Exchange.

2. Corporate jingle Dhin Chick Dhin Chick of ICICI Bank
3. Foure Note bell sound of Britannia Industries.
4. Tarzan yell by its toy action figure of Edgar Rice.
5. Guitar note on switching mobile device of Nokia.

(ii) Smell Mark-

To attract the customers, manufacturers add pleasant smells to their products, such as soaps,
cosmetic items and" perfumes. Registration can be granted if the applicant is able to visually
represent the product's scent and must show its distinctiveness from the product itself. Any
written description of a smell in precise manner is difficult and problematic. An application by
Chanel to register its well-known No.5 fragrance as smell mark in United Kingdom was not
accepted on the ground that scent of the perfume being essence of the product. But some smell
 76

marks of Dutch Company's tennis balls with scent of newly mown grass and tyres with floral
fragrances and 'darts' with strong smell of bitter beer have been registered in U.K.

(iii) Taste Mark-

Attempt to register a taste has not been encouraged. The WIPO report states the 'graphic
representation requirement may be satisfied by using a written description of taste and an
indication that it concerns a taste mark, But the attempt of pharmaceutical company eligibility
to register taste of artificial strawberries did not find favour Similarly, in fe N.V. Organan the
USPTO rejected the attempt of company to register an orange flavour for pharmaceuticals in
2006.

(iv) Shape of Goods-

The product shape and packaging qualify for registration under category of three dimensional
trademark. The Coca Cola Company has obtained 3D registration of Coca Cola bottle in Japan.
In India, shape of goods and their packaging have been in the definition of trademark under
T.M. Act 1999.

(v) Holograms and Moving Images:

Multimedia production technology has raised the opportunities for holograms, gestures,
motions and moving images as modern marks. Their registration require the use of sequence
of pictures or drawings to depict as to how the mark functions.

(vi) Colour marks:

These are marks that consist of a specific colour or combination of colours, which are capable
of distinguishing the goods or services of one person from those of others. Examples include
the purple colour used by Cadbury for its chocolate packaging and the pink packaging used by
Vanish for its Detergent Products.

(vii) Motion marks:

These are marks that consist of moving images or animations, which are capable of
distinguishing the goods or services of one person from those of others. For example, the MGM
lion logo in motion.

G. Trade Dress

The literal meaning of Trade Dress in the overall image of a product used in its marketing or
sales that is composed of the non-functional elements of its design, packaging or labelling (as
colours, package shape or symbols). Which means that there is a specific way of writing any
product name, its unique background and other remarkable signs. The concept of trade has
 77

much importance in a country like India where one-third of the population is still illiterate.
Trade Dress helps the illiterate people who cannot read the trademark on the product as well
as the manufacturers to reach the people easily.

Colgate Pamolive Company and Anr. v. Anchor Health and Beauty Care Pet. Ltd.

where the plaintiffs have filed the case for the passing off of trademark and the dispute was on
the colour scheme and combination of colours in a significant manner. Colgate Company who
was the plaintiff, was questioning the use of a mark on dental product which is the combination
of 'red' and 'white' in proportion of 1/3-2/3 respectively and the way of writing the name of
product was also in dispute. Plaintiffs were using the mark of particular fashion from 1951 and
the respondents started using it in 1996. Plaintiffs have filed the application to stop the
respondents from using the particular mark.

The plaintiff's showed to the Court that the look of trade dress of the two articles, one
manufactured by the plaintiff and another by the defendant from the point of not only unwary,
illiterate customer/servants of the household but to the semi-literates also, as the trademarks
'Colgate & 'Anchor are written in English language cannot be distinguished by ordinary
customer. There is every likelihood of confusion as to the source on account of the similarity
of substantial portion of the container having particular colour, combination and also shape of
the container. Such an action on the part of infringing party also has an element of unfair
competition.

Court said in this matter that may be, no party can have monopoly over a particular colour but
if there is substantial reproduction of the colour combination in the similar order on the
container or packing which over a period has been unprinted upon the minds of customers, it
certainly is liable to cause not only confusion but also dilution of distinctiveness of colour
combination. Colour combination, get up, lay out, and size of container is sort of trade dress
which involves overall image of the product's features. There is a wide protection against
imitation or deceptive similarities of trade dress as trade dress is the soul of identification of
the goods as to its source and origin and as such is liable to cause conclusion in the minds of
unwary customers particularly those who have been using the product over a long period.

Court said that significance of trade dress and colour combination is so immense that in some
cases even single colour has been taken to be a trademark to be protected from passing off
action Hence the Court had allowed the application of the plaintiffs and restrained defendants
from: using the colour combination of red and white in the disputed order on the
container/packaging of its goods.

Conclusion

A trademark exclusively identifies a product as belonging to a specific company and confirms

the ownership of the brand. It helps in legally differentiating a particular product from all others
of its kind. Hence, the importance of the trademark is immense for commercial purposes.
 78

4. What is passing off action? How it is different from infringement?

Introduction

A trademark owner has right either to use himself or assign others the use of his trademark.
Unauthorized use of trademark which may be identical or deceptively similar to the original
trademark would amount to infringement. In case of registered trademark, the registered
proprietor or registered user may take action against infringement. But in case of trademark
which is not registered the common law remedy of passing off action is maintainable.

Infringement of Registered Trademark (Section 29)

A registered trademark is infringed by a person who, not being a registered proprietor or the
registered user, uses in the course of trade, a mark which is identical or deceptively similar in
relation to the same goods or services in respect of which the trademark is registered.

Essential Conditions of Infringement

In order to constitute infringement following requirements must be fulfilled:

i) The person is not authorized to use the trademark.
ii) The infringing trademark is either similar or identical or deceptively similar to the already
registered trademark.
iii) The infringing trademark must be used in the course of regular trade in which the registered
proprietor or user is already engaged.
iv) The use of the infringing trademark must be printed or in case of usual representation of
mark in advertisement, invoices or bills. Mere oral use of trademark is not infringement.
v) Using either whole of the registered trademark or one by making a few addition and
alteration.

Common forms of Infringement (Section 29)

A trademark can be infringed in different ways. Some commonly noticed forms of infringement
are mentioned hereunder:

i) Using of mark identical or similar to trademark by unauthorized person in relation to similar

or same trade. Use of identical or similar marks in trade not similar or same may also amount
to infringement.
ii) Advertisement of registered trademark of another for promotion of one's trade also amounts
to infringement.
iii) A registered trademark is also infringed when a person makes unauthorized application of
such trademark to a material intended to be used for labelling or packaging his goods.
 79

iv) A registered trademark is also infringed by the spoken use of words as well as their usual
representation in cases where the distinctive elements of that mark consist of or include such
work.
v) Use of deceptive similar mark as to goods or services and as to trade origin which results
into confusion or deception in the mind of buyer.
vi) Taking substantial features of already registered trademark which is in use, amounts to
infringement.
vii) Unauthorized use of registered trademark on reconditioned or second-hand articles may
constitute infringement.
viii) Unauthorized printing of label of registered trademark would also amount to infringement.
If the label has copyright, it will cause infringement of copyright.
ix) When the owner of trademark gets the goods manufactured by third party solely for mark,
sale of goods bearing that mark by third party manufacturer to other persons would constitute
infringement.

PASSING OFF ACTION

So far, we have discussed the issues relating to infringement of registered trademark. But in
case of unregistered trademark the remedy based on passing off action has been provided under
Section 27(2).

Section 27: "No action for infringement of unregistered trademark-

(1) No person shall be entitled to institute any proceedings to prevent, or to recover damages
for the infringement of an unregistered trademark.
(2) Nothing in this Act shall be deemed to affect the right of action against any person for
passing off goods or services as goods of another person or as services provided by another
person, or the remedies in respect thereof."

Essential Features of Passing off Action

The object of this remedy is to protect the goodwill and reputation of a business from
encroachment by dishonest competition. The basis of passing off action is misrepresentation.
It is an actionable wrong for any person to pass off his goods or business as and for the goods
or business of another person. In an action based on passing off the plaintiff must show that:

i) there is a misrepresentation made by defendant in the course of trade, to prospective

customers or ultimate customers of goods or services supplied by him;
ii) there is a misrepresentation calculated to injure his business or goodwill; and
iii) the plaintiff has suffered damage to business or goodwill.

Test to find likelihood of marks

1. Nature of Mark
2. Degree of resemblance
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3. Class of purchases
4. Similarity in nature, characteristics and performance of rival traders

Difference between Passing off and Infringement

Passing off Infringement

registration of trademark is not relevant. It is infringement is based on statutory right
based on property in goodwill acquired by acquired by registration of trademark
use of the mark
the defendant's goods need not be same as the defendant's use of the offending mark
that of the plaintiff; they may be allied or may be in respect of the goods for which the
even different mark is registered or similar goods. In the
claims of infringement based on wellknown
trademarks, the barrier of goods stands
further diluted in view of the provisions of
the Trademarks Act, 1999
identity or similarity of marks is not if the marks are identical no further proof is
sufficient; there must also be likelihood of required
confusion.
The Company will not registered The company will be registered
Passing off is a common law remedy infringement is a statutory remedy
the burden of proof lies on the plaintiff the burden of proof lies on the plaintiff
the remedy has to be sought under Section the remedy has to be sought under Section
20 of Civil procedure code 1908 134 of the Trademarks Act 1999.
Goodwill, damage, misrepresentation is registration is essential
essential.

Cases

In Pidilite Industries Ltd. v. S.M. Associates,

the plaintiff was registered proprietor of trademark "M-SEAL". The defendant adapted and
used mark 'SM SEAL', with all essential characters of trademark 'M-SEAL The Bombay High
Court ruled that defendant's use of impugned mark was causing confusion and deception. The
Court restrained defendant from using trademark "SM-SEAL".

Lakme Ltd. v. Subhash Trading,

Use of trademark 'LIKE ME by defendant is similar to the mark "LAKME" which is a

registered trademark of plaintiff. the Delhi High Court held that both the trademarks were, apart
from dealing with the same range of cosmetic products, phonetically also similar. There was,
 81

therefore, every possibility of deception and confusion being caused in the minds of
prospective buyer. The court restrained defendant from using mark "LIKE ME".

Vinayak Tea Co. v. Kothari Products Ltd.,

the plaintiff is the manufacturer and seller of pan masala under registered trademark Parag.
Defendant is dealing in tea, prefixing the words of goods manufactured and sold by it. The tea
and pan masala are different commodities. The Allahabad High Court vacated the injunction
on the ground that there is no prima facie evidence to show confusion or deception.

Bombay Oil Industries Put. Ltd. v. Ballarpur Industries,

the Delhi High Court found that use of trademark "SHAPOLA" for edible oil which is similar
to the registered trademark 'SAFFOLA' is an act of infringement. The Court held that both the
marks are in respect of edible oil, therefore, the nature of goods is same. There is marked degree
of phonetic similarity. The Court restrained defendant to use trademark "SHAPOLA".

Rediff Communication Ltd. v. Cyber Booth,

the Bombay High Court held that the domain name "Radiff" is deceptively similar to plaintiff's
domain name "Rediff" and therefore, Court restrained the defendant from using domain name
"Radiff" by granting injunction. The above foreign and Indian judicial verdicts clearly establish
that Internet domain name are also treated as trademark capable of legal protection.

Glaxo Smith Kline Pharmaceuticals v. Unitech Pharmaceuticals Pvt. Ltd.,

the plaintiff claimed that defendants are selling products under the trademark 'FEXIM' that is
deceptively similar to the plaintiffs mark PHEXIM', which is used for pharmaceutical
preparations. The defendants are selling anti-biotic tablets with the trademark 'FEXIM' with
the packing material deceptively similarly to that of the plaintiff, whereby intending to not only
to infringe the trademark but also to pass off the goods as that of the plaintiff as the two marks
are also phonetically similar. The Court restrained the defendant from using the trademark
FEXIM' or any trademark deceptively similar to the trademark of the plaintiff PHEXIM any
label/packaging material deceptively similar and containing the same pattern as that of the
plaintiff.

Amruthdhara Pharmacy v. sathyadev Gupta

The court held that to find out whether there is passing off, only through the likelihood of
confusion in the common people in identifying passing off can be proved.
 82

5. Explain the procedure for the registration of trade mark under Trade
Mark Act, 1999.

Introduction

Trademark may be registered or unregistered. Legal remedies against infringement are

provided for both. The registration offers prima facie evidence of ownership of trademark,
whereas, in case of non-registration the user of trademark has to establish the prior use and
passing off. The whole subject of registration can be explained in two parts viz., conditions and
grounds for registration and procedure for registration. First we will discuss the conditions and
grounds for Registration.

Definition

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Section 2(m) defines "mark as a device, brand, heading, label, ticket, name, signature, words,
letter, numerals, shape of goods, packaging or combination of colours or any combination
thereof. Reading together, we may conclude that the definition of trademark is inclusive and
not exhaustive. There could be various types of combinations of words, names, letters to create
a trademark. Distinctiveness is the hallmark of a trademark.

Procedure for Registration (Sections 18 to 26):

Sections 18 to 26 of Trademarks Act, 1999 deal with procedure for registration,

Who can apply

(i) Any person claiming to be the proprietor of a trademark used or (proposed to be used by
him) who is desirous of registering it, shall apply in writing to the Registrar in the prescribed
manner for the registration of his trademark
(ii) A single application may be made for registration of a trademark for different classes of
goods and services and/fee payable therefor shall be in respect of each such class of goods or
services.

Place of filing application

Every application shall be filed in the office of the Trademark Registry within whose territorial
limits the principal place of business in India of the applicant or in the case of joint applicants
the principal place of business in India of the applicant whose name is first mentioned in the
application as having a place of business in India is situate:
 83

Provided that where the applicant or any of the joint applicants does not carry on business in
India, the application shall be filed in the office of the Trademarks Registry within whose
territorial limits the place mentioned in the address for service in India as disclosed in the
application, is situate.

Acceptance or refusal of application:

On receipt of application the Registrar may accept or refuse to accept the application. But if he
refuses to accept the application he will record the reasons for refusal. The application may be
accepted with or without amendments, modifications, conditions and limitations. However, if
the Registrar, after acceptance of application, but before registration, finds that the application
was erroneously accepted may withdraw the acceptance

Advertisement of application (Section 20)

When an application for registration of a trademark has been accepted whether absolutely or
subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance,
cause the application as accepted together with the conditions or limitations, if any, subject to
which it has been accepted, to be advertised in the prescribed manner.

The application is advertised in the Trademark Journal. The purpose of advertisement is to

invite objections from interested persons whose trade interests are likely to suffer. The
Registrar may cause the application to be advertised before acceptance if the trademark is
devoid of any distinctive character or consists of only marks or indications or consists of marks
or indications which became customary in the current language or trade practice Further if the
trademark is deceptively similar or identical to another trademark, which may lead to confusion
on the part of the public etc., then also the Registrar may cause the application to be advertised
before acceptance.

Opposition of Application (Section 21)

Any person may, within three months from the date of the advertisement or readvertisement of
an application for registration or within such further period, not exceeding one month in the
aggregate, as the Registrar, on application made to him in the prescribed manner and on
payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the
Registrar, of opposition to the registration.

The Registrar shall send the copy of notice to the applicant and the applicant is required to give
his counter-statement within two months from the receipt of notice. If he fails to send counter-
statement within two months' period, it will be presumed that he has withdrawn the application.

When the third party prefers an opposition and the applicant files his counter-statement, they
are required to produce any evidence to the Registrar, who should give an opportunity to both
 84

of them to be heard, if they so desire. After considering their case, based on the application,
opposition, counter-statement and oral representation etc., the Registrar should decide whether
and subject to what conditions or limitations, if any, the registration is to be permitted.

Registration (Section 22)

After accepting application for registration and disposing the objections, if made by any
relevant person, the Registrar shall, unless the Central Government otherwise directs, register
the said trademark with effect from date of application. After registering the trademark, the
Registrar shall issue to the applicant a certificate in prescribed form.

One important point to be noted is that if on account of default on the part of applicant the
whole process of registration could not be completed within twelve months, the Registrar may.
After giving notice to the applicant, treat the application as abandoned." The purpose of
imposing this time limit is to avoid delay and discourage non-serious and indolent applicants

Effect of Registration

The registration of a trademark is prima facie evidence of its validity. But registration under
the Act does not confer any new right to the mark claimed or any greater right than what already
existed at common law and at equity without registration. It does, however, facilitate remedy
which may be enforced and obtained throughout the State Registration itself does not create a
trademark. The trademark exists independently of the registration which merely affords further
protection under the statute.

Renewal, Removal and Restoration (Section 25)

(1) The Registrar shall, on application made by the registered proprietor of a trademark in the
prescribed manner and within the prescribed period and subject to payment of the prescribed
fee, renew the registration of the trademark for a period of ten years from the date of expiration
of the original registration or of the last renewal of registration, as the case may be

(2) At the prescribed time before the expiration of the last registration of a trademark the
Registrar shall send notice in the prescribed manner to the registered proprietor of the date of
expiration and the conditions as to payment of fees and otherwise upon which a renewal of
registration may be obtained, and, if at the expiration of the time prescribed in that behalf those
conditions have not been duly complied with, the Registrar may remove the trademark from
the Register:

Provided that the Registrar shall not remove the trademark from the Register if an application
is made in the prescribed form and the prescribed fee and surcharge is paid within six months
from the expiration of the last registration of the trademark and shall renew the registration of
the trademark for a period of ten years under sub-section (2).
 85

(3) Where a trademark has been removed from the Register for non-payment of the prescribed
fee, the Registrar shall, after six months and within one year from the expiration of the last
registration of the trademark. on receipt of an application in the prescribed form and on
payment of the prescribed fee, if satisfied that it is just so to do, restore the trademark to the
Register and renew the registration of the trademark either generally or subject to such
conditions or limitations as he thinks fit to impose.

Conclusion

Trademarks are the exclusive rights which a person enjoys with respect of his good and
services. It allows the owners to have the benefits from their works when these are exploited
commercially. A party who holds the rights to a certain trademark can sue other parties for
trademark infringement.
 86

6. Explain the grounds of refusal for the registration of a trademark.

Or
What are the grounds on which the registration of trade mark may be
refused? Examine

Introduction

Trademark may be registered or unregistered. Legal remedies against infringement are

provided for both. The registration offers prima facie evidence of ownership of trademark,
whereas, in case of non-registration the user of trademark has to establish the prior use and
passing off. The whole subject of registration can be explained in two parts viz., conditions and
grounds for registration and procedure for registration. First we will discuss the conditions and
grounds for Registration.

Definition

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Section 2(m) defines "mark as a device, brand, heading, label, ticket, name, signature, words,
letter, numerals, shape of goods, packaging or combination of colours or any combination
thereof. Reading together, we may conclude that the definition of trademark is inclusive and
not exhaustive. There could be various types of combinations of words, names, letters to create
a trademark. Distinctiveness is the hallmark of a trademark.

Refer 10 marks qstn 5 for procedure for registration

Absolute Grounds for refusal of registration:

Under Section 9 following categories of trademarks shall not be registered:

(a) Which are devoid of any distinctive character, that is to say, not capable of distinguishing
the goods or services of one person from those of another person.

(b) Which consist exclusively of marks or indications which may serve in trade to designate
the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods or
service.

(c) Which consist exclusively of marks or indications, which have become customary in the
current language or in the bona fide and established practices of the trade.
 87

(d) It is of such nature as to deceive the public or cause confusion.

(e) It contains or comprises of any matter likely to hurt the religious susceptibilities of any class
or section of the citizens of India.

(f) It comprises or contains scandalous or obscene matter.

(g) Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950.
Further, a mark shall not be registered as a trademark if it consists exclusively of

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c)the shape, which gives substantial value to the goods.

However, if a trademark before making an application has acquired distinctive character as a

result of the use made of it or is a well-known trademark, the registration shall not be refused.

Conclusion

Trademarks are the exclusive rights which a person enjoys with respect of his good and
services. It allows the owners to have the benefits from their works when these are exploited
commercially. A party who holds the rights to a certain trademark can sue other parties for
trademark infringement.
 88

7. Define Trade Mark. Explain functions of Trade Mark

Introduction

Trademark is a product of competitive trade practices. Every trader seeks to sell his product by
its name and distinctiveness. The changing business practices have also changed the concept
and philosophy of trademark It is therefore, necessary to understand the essential characteristics
and the purposes for which a trademark is used. This chapter deals with general aspects of
trademarks.

Definition

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Section 2(m) defines "mark as a device, brand, heading, label, ticket, name, signature, words,
letter, numerals, shape of goods, packaging or combination of colours or any combination
thereof. Reading together, we may conclude that the definition of trademark is inclusive and
not exhaustive. There could be various types of combinations of words, names, letters to create
a trademark. Distinctiveness is the hallmark of a trademark.

Functions of Trademark

The function of a trademark is to give an indication to the purchaser or possible purchaser as

to the manufacture or quality of the goods. It gives the purchaser a satisfactory assurance of
the make and quality of the article is buying. The goodwill of a product is also reflected through
its trademark.

We may classify the functions of a trademark in the following four categories:

i. It identifies the product and its origin. (Illustration-trade name "VIDEOCON signifies the
electronic products produced by VIDEOCON company of India).

ii. It guarantees its established quality. (Illustration The quality of toothpaste COLGATE is
well-established. A purchaser of 'Colgate' toothpaste is assured of its quality).

iii. It is a means of advertisement of product. Every company who wishes to popularize his
product among public has to give its product a trade name and then create its brand value
Illustration "LUX" is a popular name for soap).
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iv. It creates an image of product in the mind of public (Illustration trade name 'PARLE creates
an impression and image about the quality of confectionary and biscuits sold by the company).

Product Differentiation Function

Trademarks are the basic means of achieving product differentiation. The term “product
differentiation” refers to an imperfection in substitutability to the buyers of products or
services of competing sellers in an industry. It refers to an image of product entrenched in a
manner that a buyer, for example, believes that he needs ‘Surf’ and it is not consider a washing
powder, or he necessarily a ‘Honda’ and not a motor cycle.
Patents and industrial design which are important for differentiating products are protected for
specific term. But trademark, which is an important element in the differentiation process,
receives legal protection for unlimited time. Other elements responsible for making a product
different in the eyes of the buyer are weaker when compared of trademarks.Because other
elements are easier to copy. A legally protected trademark makes the process of intimation of
the product much more difficult, even impossible.
In the case of price competition, the demand curve is accepted. In perfect
competition, trademarked products or services of different sellers are perfect substitutes
from the point of view of the buyer. But in product differentiation competition, such
trademarked products or services are just close substitutes. The competition takes place in
advertising effort and building brand loyalty based on non-substitutability of the products and
services. The advertisers seek to build an image that the branded ‘Surf’ has such qualities that
it cannot be replaced by any other detergent, as all the other detergents like RIN or Ariel possess
different characteristics or quality. A message is built up that the customer is looking for
product ‘Honda’ and not a motor-bike.

Identification of Source and Origin Function

according to Cornish, marks deserve protection so that they may operate as indicators of the
trade source from which goods or services come, or are in some other way connected. This
protection is taken to be both for the benefit of the proprietor against his competitors and
as a guarantee of quality for buying public. According to Jennifer Davis the essential
function of registered trademarks and their specific subject matter have been confirmed by
the Court of Justice in a number of cases.

Arsenal Football Club plc v Reed (2002),

the Club had claimed trade mark infringement against the defendant who sold Arsenal
memorabilia for over 30 years. However, claimed that the use was not a trade mark use, by
putting a disclaimer up in his shop for customers to see. The case was referred to the European
Court of Justice who decided in favour of the club, who then came back to the High Court in
the instant case to enforce that decision with an injunction. It was held that, The European
Court appeared to have exceeded its jurisdiction, by finding a fact contrary to that found by the
referring court, namely that some consumers would be confused as to the origin of the goods.
 90

Accordingly, the claimant was not entitled to its injunction to support that finding. The subject
matter was also summerised by the Advocate General in Bristol-Myers Squibb (1996) ‘ in so
far as the trade mark protects the interest of consumer by acting as a guarantee that all goods
bearing the mark are of the same commercial origin this is known in the Courts terminology,
as the essential function of the trade mark’

Transformation of origin function

The indication of origin function has been transformed in modern times through brand
registration. The brand proliferation has been one of the more important consequences of brand
marketing. If the product is one for which consumers switch brands frequently, then brand
proliferation on the portion of the existing company derives the excepted sales of a newly
entering firm, thereby producing a barrier to the entry of new company. The rationale for
continuous introduction of new brands can be understood by the marketing needs of
maintaining market shares by a relatively small number of manufacturers.
One drawback of such brand proliferation is that the trademarks fail to perform their
indication of origin function properly. As consumers can trace the source of a product, they are
assisted in their purchasing decision by trademarks. Once a product is identified through a
certain trademark, it can be purchased again by the consumer if he is satisfied with it or vice-
versa. Identification of a given source through a particularly successful and advertised
trademark ordinarily creates a substantial market power.

Quality Function

Marks deserve protection because they symbolise qualities associated by consumers with
certain goods or services and guarantee that the goods or services measure up to expectations.
The use of trademarks causes consumers, perhaps, unconsciously, to recongise a certain quality
of goods or services in connection with mark. Historically, the trade marks were used primarily
to indicate the source of goods or services so that consumer loyalty to their goods or services
by using their sign in order to promote their reputation in the market place. The similarity of
products creates an increased emphasis on the quality function trademarks serve because
consumers will have difficulty in determining which good to purchase in place of another if all
the choices with a specific class of products are nearly identical. Herein lays the importance of
trademarks to ensure that consumers may determine their preference for goods or services
depending on identifying qualities maintained by a trademark

An Ancillary Function

Identification of products and their quality is a secondary function of a trademark, ancillary

to its basic function of creation of goodwill. The goodwill embodied in
a trademark constitutes property in a trademark, has already been mentioned. The goodwill
function brings the costs of the trademarks to the society while the identification of source and
quality is good to the buying public of their registered mark.
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Protection against unfair competition

In respect of the quality identification function, doubts have been expressed as to its
effectiveness. But it must be understood that it is closely related to protection against unfair
competition. The trademarks contribute in protecting consumers against confusion in the
market place for their logo. They facilitate quality-checking carried out by consumers
themselves through their own experience. In the sense, trademarks give a gurantee of thinness
or uniformity of quality rather than a stipulate of quality for their logo is to be superior.
As to quality, the view differs whether trademarked goods or services are of the same level of
quality or they give consistency of quality. In reality, it is always a felt or experienced quality
by the consumer which is related with expectations of quality. Moreover the place
in Chennai had given its approval of registration to the concept of applying the same
trademark on different quality products, through in different countries.

Investment or advertising function

marks are symbols around which investment in the promotion of a product is built and
that investment is a value which deserves protection as such, even when there is no abuse
arising from misrepresentations either about origin or quality. A case which identified a
lot of problems with the use of AD words and advertising is the case of

L’Oréal v. eBay International. Case

L’Oréal has a closed selective distribution network in places across Europe within
authorised distributors are restrained from supplying products to their distributors. They have
a trademark for UK and EU. Sellers and buyers on eBay have to accept eBay's online market
user agreement, one term of which is a prohibition on selling counterfeit items and infringing
trade mark rights. In some circumstances, eBay assists sellers to enhance their offerings and
may also advertise some of the products using search engines to trigger the display of adverts.

The ECJ held that eBay could be injuncted as an intermediary and also in relation to past, as
well as future, infringements in order to fulfil the requirements of Article 11. It also found that
eBay could not benefit from the Article 14 defence. This defence is confined to merely
technical and automatic processing of data, where there is no actual knowledge of unlawful
activity or information.

Conclusion

trade marks not only determine origin and provide quality assurance, today they provide a point
of reference allowing proprietors to advertise associated goods and services and customers to
make inform decisions. The proprietor can also build a reputation and create value in the sign,
in some instances the value of the trade mark is more valuable than the goods or services
associated with the sign.
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6 Marks

1. Write a note on Deceptively Similar Trade Marks. (2)

Introduction

Trademarks are essential in developing a company’s brand name and goodwill. It not only aids
in the creation of brand value but also aids in the generation of revenue. A trademark is
vulnerable to being infringed and/or misused because it is so important. One such way of a
trademark is making “deceptively similar” trademarks.

Definition

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Section 2(h) of the Indian Trade Marks Act, 1999 defines "deceptively similar" as, "A mark
shall be deemed to be deceptively similar to another mark if it so nearly resembles that other
mark as to be likely to deceive or cause confusion."

Deceptive similarity
Deceptive similarity is a legal concept used in trademark law to determine whether a trademark
is likely to cause confusion with another trademark. It refers to the situation where a trademark
is so similar to another trademark that it is likely to deceive or confuse consumers into thinking
that the products or services associated with the two trademarks come from the same source.

Deceptive similarity is assessed by comparing the two trademarks in question and considering
factors such as their visual, phonetic, and conceptual similarity. In general, the more similar
the trademarks are in these respects, the more likely it is that they will be found to be
deceptively similar.
Trademark owners have the right to prevent others from using a trademark that is deceptively
similar to their own. This is because such use could dilute the value of the trademark, confuse
consumers, and damage the reputation of the trademark owner

If a court finds that a trademark is deceptively similar to another trademark, it may order the
infringing party to stop using the trademark, and may award damages to the trademark owner
for any harm caused by the infringement.
In India, the concept of deceptive similarity is an important aspect of trademark law, and is
used to determine whether one trademark is likely to deceive or cause confusion with another
trademark.
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Elements of Deceptive Similarity

Deceptive similarity is a legal concept used in trademark law to determine whether a trademark
is likely to cause confusion with another trademark. It refers to the situation where a trademark
is so similar to another trademark that it is likely to deceive or confuse consumers into thinking
that the products or services associated with the two trademarks come from the same source.
The following are the key elements of deceptive similarity

1. Visual similarity:

The visual similarity between the two trademarks is an important factor in determining whether
there is deceptive similarity. The trademarks should be compared in terms of their colour, font,
shape, design, and other visual elements.

2. Phonetic similarity:

The phonetic similarity between the two trademarks is also important. The trademarks should
be compared in terms of their pronunciation, including any similar sounds, intonation, or
rhythm.

3. Conceptual similarity:

The conceptual similarity between the two trademarks is another important factor. The
trademarks should be compared in terms of their underlying concepts, meanings, and
associations.

4. Nature of goods or services:

The nature of the goods or services associated with the trademarks is also a key factor in
determining whether there is deceptive similarity. If the goods or services are similar or related,
it is more likely that consumers will be confused by similar trademarks.

5. Target audience:

The target audience of the goods or services associated with the trademarks is also relevant. If
the trademarks are aimed at the same or similar consumer groups, it is more likely that
consumers will be confused by similar trademarks

Ground for Determination of Deceptive Similarity in Passing off Action

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.,

following factors have stated by Supreme Court in determining deceptive similarity in action
based on passing off:
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a) The nature of the marks, i.e., whether the marks are word marks or label marks or composite
marks, i.e., both words and label marks,
b) The degree of resemblance between the marks, similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trademarks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on
their education and intelligence and a degree of care they are likely to exercise in purchasing
and/ or using the goods.
f) The mode of purchasing the goods or placing orders for the goods.
g)Any other surrounding circumstances which may be relevant in the extent of dissimilarity
between the competing marks.

In D/S Delhi Lakme vs. Subash Trading,

the plaintiff was dealing with a cosmetic product

called “LAKME” and the defendant i.e., Subash Trading was dealing with a cosmetic product
called “LIKEME”. The Delhi high court held that both the trademarks are deceptively similar
and granted permanent injunction

SM Dychem Ltd. vs. Cadbury India Ltd.,

the plaintiff was dealing with a Wafers and Chips called “PIKNICK” and the defendant i.e.,
SM Dychem was dealing with a Wafers, Chips and Chocolates called “PICNIC”. The court
held that the two trademarks are phonetically similar and hence it amounts to infringement of
trademark of the plaintiff

Parle Products Pvt. Ltd. v. J.P. and Co., Mysore

where the Supreme Court held that the comparison should be done by the overall look, sound,
and/or spelling of the trademarks.

Conclusion

Deceptive Similarity as a ground for refusal of trademark registration is the most important
feature of the Act, To establish infringement of a registered trademark, it is necessary to
establish that the infringing mark is identical or deceptively similar to the registered mark,
and no additional proof is required. In a passing-off action, proving that the marks are identical
or deceptively similar is not enough. The mark’s use should be likely to deceive or confuse.
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2. Write a note on 'Certification marks'.

Introduction

Trademark is a product of competitive trade practices. Every trader seeks to sell his product by
its name and distinctiveness. The changing business practices have also changed the concept
and philosophy of trademark It is therefore, necessary to understand the essential characteristics
and the purposes for which a trademark is used. This chapter deals with general aspects of
trademarks.

Definition

Sec 2(e) of Trade marks act, 1999, “certification trade mark” means a mark capable of
distinguishing the goods or services in connection with which it is used in the course of trade
which are certified by the proprietor of the mark in respect of origin, material, mode of
manufacture of goods or performance of services, quality, accuracy or other characteristics
from goods or services not so certified and registrable as such under Chapter IX in respect of
those goods or services in the name, as proprietor of the certification trade mark, of that person;

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Kinds or Types of Trade Mark

A.Service Mark
B. Collective Marks
C. Certification Trademark
D. Well-known Trademarks
E. Internet Domain Name
F. Modern Marks
(i) Sound mark-
(ii) Smell Mark-
(iii) Taste Mark-
(iv) Shape of Goods-
(v) Holograms and Moving Images:
(vi) Colour marks:
(vii) Motion marks:
G. Trade Dress
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Certification Trademark

Certification marks are essentially trademarks that are used to certify that the goods or services
on which they are affixed comply with certain quality standards prescribed by a certifying
entity. In India, a person or entity seeking to register a certification mark has to file an
application before the Indian Trademarks Registry.

The sole purpose of a certification trademark is to indicate that certain standards set by the
proprietor of the mark have been met. Some examples of Indian certification trademarks are as
follows: WOOLMARK (that certifies that a product is made from 100% wool), ORGANIC
INDIA (that certifies a method or mode of manufacture), ISI mark (that certifies that products
conform to a set of standards laid by the Bureau of Indian Standards).

Indian law does not allow the proprietor of a certification trademark to use the mark in
association with its own goods or services. The proprietor can only authorize others to use it.
Further, the proprietor of the certification trademark must oversee others’ use of the
certification trademark to ensure that the mark is being properly used.

Registration of certification trademarks

Applicants must file applications to register the certification trademarks in the classes of goods
or services being certified. Applicants must submit, with a certification trademark application,
a Statement of Case that sets out the grounds of the application, i.e., grounds that demonstrate
why an applicant is entitled to file the application. Every certification trademark application
must be accompanied by draft regulations that contain detailed provisions relating to the
applicant’s competence to administer the certification scheme, characteristics of the mark being
certified, manner of monitoring use of the mark, etc.

Once the application to register a certification trademark is filed, the Indian Trade Marks
Registry shall ascertain whether the application satisfies the necessary requirements as per
Indian law, such as determining whether the certification trademark is capable of distinguishing
the certified goods or services from those not so certified. Once the Registry is satisfied that
the requirements set out under the law have been met, the application will be advertised in the
Trade Marks Journal. The application will remain open to opposition by any third party for
four (4) months. If there is no opposition or the opposition proceeding has been decided in
favor of the applicant, the certification trademark will be registered. The term of registration
for a certification trademark is ten (10) years.

REMEDY OF INFRINGEMENT:

Section 78 of the Act provides that the proprietor of a Certification Trade Mark will have
exclusive right to use the mark in relation to those goods or services for which it is registered,
however the said exclusive right is subject to any condition and limitation to which the
registration is subject to.
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One such pre- condition for registration of every Certification Trade Mark is provided under
Section 70 of the Act itself i.e. that a mark shall not be registrable as a Certification Trade
Mark in name of a person, who carries a trade of the same goods/services for which
Certification Trade Mark is applied. In simple words, it means that if a person is trading in
Medical equipments, he shall not be able to get a Certification Trade Mark registered in respect
of Medical equipments. Such condition is imposed apparently to prevent the abuse of
dominance which the proprietor may have while certifying and trading the same
goods/services.

The pre-conditions for infringement of a Certification Trade Mark are given in Section 75 of
the Act. As per Section 75 of the Act, a Certification Trade Mark is said to be infringed when:

1. the said certification mark is being used by a person other than its registered proprietor or
its authorized user under the regulations, in the course of trade;

2. a mark which is identical or deceptively similar to the certification mark in relation to any
goods or services in respect of which it is registered;

3. the use is in such a manner as to render the use of the mar likely to be taken as being used
as a trade mark.

If the above conditions as mentioned in Sections 75 and 78 of the Act, are satisfied, the
proprietor shall have the remedy to file a civil suit for infringement of its Certification Trade
Mark under Sections 75, 78, 134 and 135 of the Act. However, the relief of grant of damages
in an infringement and passing off suit in respect of a Certification Trade Mark, shall be for
nominal damages as is stated in Section 135 (3) of the Act.

In case proprietor of certification marks wants to initiate criminal action against an infringer,
they can file a complaint for offences of cheating, fraud and misrepresentation under the
Indian Penal Code, 1960 before the concerned police station. However, if the police fails to
register FIR, the proprietor can file a complaint under Section 156 (3) of the Code of Criminal
Procedure, 1973 for passing directions to police for registration of FIR.

Tea Board V. ITC

The grievance of Tea Board was that ITC was operating a lounge under the name
DARJEELING LOUNGE in its hotel in Kolkata, which is an infringement of its registered
geographical indication 'DARJEELING', the name and logo and/or amounts to passing off so
as to discredit the fame of DARJEELING tea as a geographical indication and/or to mislead
persons as to the nature of the beverages sold at the said premises of ITC so as to confuse
persons in any manner. Tea Board in appeal alleged that since it is the registered proprietor of
DARJEELING as a certification trade mark, it is the sole authority to certify that any tea
marked by the said name DARJEELING or logo is guaranteed to be 100% DARJEELING tea
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originating from the 87 tea gardens in the Darjeeling District of West Bengal and possesses
certain organoleptic qualities and characteristics. The Hon'ble Division Bench while rejecting
the contentions of Tea Board held that the Board only had certification trademark within the
meaning of Section 2(e) of the Trade Marks Act 1999. It is not the case of the Tea Board that
ITC is using the word 'DARJEELING' for the purpose of falsely asserting that it has the right
to certify that the tea is served in the lounge is grown in the region Darjeeling nor has ITC used
its logo. The Hon'ble Court observed that we must not lose sight of the fact that the protection
given in respect of certification trademarks relates to any goods or services in respect of which
it is registered and the Plaintiff has not registered its name as holder of the mark DARJEELING
in respect of hotel business but for the purpose of certification of tea as one grown in Darjeeling
district, where benefit of Sections 28 and 29 of the Act is not available. On the claim of passing
off, the Hon'ble DB held that the Tea Board has not even made out a prima facie case of passing
off and therefore, dismissed the appeal upholding the order of the learned Single Judge. In the
year 2019, the suit also came to be dismissed against Tea Board and the Judgement throws
more light on both the statues i.e. Trade Marks Act, 1999 and Geographical Indications of
Goods (Registration and Protection) Act, 1999 (hereinafter referred to as 'the GI Act') in respect
of relief of injunction for infringement of a Certification Trade Mark as well as passing off
action.

CONCLUSION:

In India, WOOLMARK, AGMARK, BIS, HALLMARK and ISI are some of the well-
recognized examples of Certification Trade Marks. Though, Certification Trade Marks found
there place even in the repealed Trade and Merchandise Act, 1958 however, this section of a
Mark is yet to start its journey of interpretation through judicial pronouncements.

3. Examine the difference between infringement and passing off.

Refer 10 marks qstn 4

4. Defences available to the defendant against infringement of trade

mark.

Introduction

A trademark owner has right either to use himself or assign others the use of his trademark.
Unauthorized use of trademark which may be identical or deceptively similar to the original
trademark would amount to infringement. In case of registered trademark, the registered
proprietor or registered user may take action against infringement. But in case of trademark
which is not registered the common law remedy of passing off action is maintainable.
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Definition

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Infringement of Registered Trademark (Section 29)

A registered trademark is infringed by a person who, not being a registered proprietor or the
registered user, uses in the course of trade, a mark which is identical or deceptively similar in
relation to the same goods or services in respect of which the trademark is registered.

When trademark is not infringed (Section 30)

As per Section 30(2), the use of a registered trademark in following manner would not amount
to infringement:

(1) Use of registered trademark by any person for the purposes of identifying goods or services
as those of proprietor provided the use is in accordance with honest practices in industrial or
commercial matters, and further the use is not such as to take unfair advantages of or be
detrimental to the distinctive character or repute of the trademark.

(2) A registered trademark is also not infringed where-

(a) the use in relation to goods or services indicates the kind, quality, quantity, intended
purpose, value, geographical origin, the time of production of goods or of rendering of services
or other characteristics of goods or services; and

(b) a trademark is registered subject to any conditions or limitations, the use of the trademark
in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation
to goods to be exported to any market or in relation to services for use or availablility or
acceptance in any place or country outside India or in any other circumstance, to which, having
regard to those conditions or limitations, the registration does not extend.

(c) The use by a person of a trademark :-

(i) in relation to goods connected in the course of trade with the proprietor or a registered user
of the trademark if, as to those goods or bulk of which they form part, the registered proprietor
or the registered user conforming to the permitted use has applied for the trademark and has
not subsequently removed or obliterated it, or has at any time expressly or impliedly consented
to the use of the trademark; or
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(ii) In relation to services to which the proprietor of such mark or of a registered user
conforming to the permitted use has applied the mark, where the purpose and effect of the use
of the mark is to indicate, in accordance with the fact, that those services have been performed
by the proprietor or a registered user of the mark;

(iii) The use of a trademark by a person in relation to goods adapted to form part of, or to be
accessory to other goods or services in relation to which the trademark has been used without
infringement of the right given by registration under this Act or might for the time being be so
used, if the use of the trademark is reasonably necessary in order to indicate that the goods or
services are so adapted. and neither the purpose nor the effect of the use of the trademark is to
indicate, otherwise than in accordance with the fact, a connection in the course of trade between
any person and the goods or services, as the case may be,

(iv) The use of a registered trademark, being one of two or more trademarks registered under
this Act which are identical or nearly resemble each other, in exercise of the right to the use of
that trademark given by registration under this Act.

(3) Where a registered trademark is used by a person who has acquired it through assignment
or is authorized under a licence, such use would obviously not constitute infringement.

Burden of Proof

In a suit for infringement burden of proof lies on plaintiff. The plaintiff must prove that
trademark use by defendant is deceptively similar to the trademark of plaintiff. Similarly, in
action for passing off the plaintiff must prove that his mark has become distinctive. He must
further prove the defendant's use of disputed mark is likely or calculated to deceive or cause
confusion or injury, actual or probable to the goodwill of the plaintiff's business.

Defences which may be set up by defendant

In a suit for infringement or passing off action, the defendant may raise either of the following
defenses:

(i) That the use of trademark is protected by the provisions of Section 30 of the Act in which
the acts which do not constitute infringement are listed out.

(ii) That the defendant has been an honest and concurrent user.

(iii) That the defendant is the prior user of the disputed mark.

(iv) That the defendant has also obtained the concurrent registration.

(v) That the use complained is bona fide use of defendant's own name, address and description
of goods protected by the Act.
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(vi) That the plaintiff is debarred from suing or claiming relief by his own conduct in the form
of acquiescence, delay or laches

1. Fair Use:
In order to claim this defense, the accused infringer need to show that he got the
consent of the authorized owner or either proves that he acted without intending to
defraud or mislead the consumers of the goods. "Fair use" has been covered in two
types:

a. Descriptive Fair Use:

Descriptive fair can be taken as a defence where a trademark is used in good
faith for a descriptive purpose and not for a specific mark or goods and
services.

b. Nominative Fair Use:

Nominative fair use can be taken as defence where a mark is listed in
reference to the registered proprietor's goods and services rather than the
goods and services of the user. It is justifiable when the use of the mark is
required to make the goods and services easier to identify.

2. 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.

3. 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.

4. 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.

Coca Cola Vs. Bisleri International Pvt Limited & Others:

The defendant (Bisleri International Pvt Ltd) by agreement transferred trademark rights of
MAAZA to the plaintiff (Coca-Cola Company) and also gave away the formulation rights, IPR,
and know-how along with the goodwill for India for bottling and selling a mango fruit drink
MAAZA to Coca Cola.
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In 2008, the defendant subsequently filed an application to register trademark "MAAZA" in

Turkey and begin exporting the same fruit drink under name "MAAZA". Coca Cola claimed a
permanent injunction and infringement damages for passing off and trademark since it was
given to them by Bisleri.

The Hon'ble Delhi High Court in this case upheld the injunction against defendant "Bisleri"
for using trademark "MAAZA" and passed an interim order of permanent injunction to
prevent the plaintiff from irreparable loss and injury.

Industria De Diseno Textil Sa Vs Oriental Cuisines Pvt Ltd And Ors, Popularly Known
As Zara Fashion Vs. Zara Food:

In this case, renowned fashion brand ZARA filed a suit for infringement and passing of their
well- known brand ZARA against a restaurant "ZARA TAPAS BAR".
The Delhi High Court ruled out in favour of the renowned fashion brand ZARA, ordered the
restaurant to change its name.

Conclusion:

The importance of registering a brand name is becoming more widely recognized in India.
However, the proprietors are still passive about the unauthorized use of their registered
trademarks. Violations of the right over trademark can occur within an organization, which
impact the brand's value as well as the market share of the owner's company. With the help of
a Trademark Attorney, one may be able to recover and compensate the damages occurred due
to the infringement.

5. Collective mark.

Introduction

Trademark is a product of competitive trade practices. Every trader seeks to sell his product by
its name and distinctiveness. The changing business practices have also changed the concept
and philosophy of trademark It is therefore, necessary to understand the essential characteristics
and the purposes for which a trademark is used. This chapter deals with general aspects of
trademarks.

Definition

Sec 2(g) of Trademarks Act, 1999 “collective mark” means a trade mark distinguishing the
goods or services of members of an association of persons (not being a partnership within the
 103

meaning of the Indian Partnership Act, 1932 (9 of 1932) which is the proprietor of the mark
from those of others;

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Kinds or Types of Trade Mark

A.Service Mark
B. Collective Marks
C. Certification Trademark
D. Well-known Trademarks
E. Internet Domain Name
F. Modern Marks
(i) Sound mark-
(ii) Smell Mark-
(iii) Taste Mark-
(iv) Shape of Goods-
(v) Holograms and Moving Images:
(vi) Colour marks:
(vii) Motion marks:
G. Trade Dress

Collective mark.

A collective mark is a trademark owned by an organisation or association and used by its

members to indicate membership in the group in order to distinguish their products and services
or to identify themselves with a level of quality, accuracy, geographical origin etc. Generally
trademarks serve as “badges of origin” by indicating the source of the goods or services.
Collective marks on the other hand can be used by more than one trader or individual concern
provided that they are the member of the collective. Similar to trademarks, collective marks
are also in the form of word, symbol, or group of words.

Section 61 of the Trade Marks Act, 1999 prescribes the special provisions for collective
trademarks. The provisions of the Trade Mark Act, 1999 are applicable to collective marks but
they are subject to provisions under Chapter VIII of the Act

Examples of collective marks are:

1. McDonald’s®, a trademark of McDonald’s Corporation
2.100% Recycled Paperboard®, registered by Recycled Paperboard Alliance Inc.
 104

Benefits of a Collective Trademark

1. Exclusive Trademark Rights:

When it comes to collective trademark registration, the business owner secures exclusive rights
over the use of the trademark. For this reason, the owner has the right to utilise the collective
mark for all the products produced by his/her business or services rendered submitted in the
trademark application.

2. Builds Reputation and Goodwill:

A trademark on the product helps build brand reputation and generates goodwill. This will
further help customers identify products accordingly and form trust. Thus, enabling a loyal set
of customers who will always choose products belonging to one particular brand for regular
use.

3. Unique Products:

Concerning competition, a good service mark registration can help make a service unique and
further help in its promotion. The trademark will represent the vision or quality of the brand,
and in turn, help associate the business with it.

4. Identifies Value:

Another benefit of trademark registration of a product is that it helps attach identity to the value
provided by the product. This way, the brand also becomes part of that identity prompting
customers to associate the same value and draw in new customers or clients. They will be able
to distinguish the quality of the product by its trademark.

5. Product Symbol:

A registered trademark can use the symbol on its logo to communicate that it is part of a
registered trademark, and no one can use any of its symbols. It is inclusive of its different uses,
just as rights. If someone replicates the design, logo or symbol then that person can be sued by
the business.

6. Protection Against Infringement:

Through a product brand name registration, the trademark becomes an exclusive right for the
business owner, in terms of usage. Hence, competitors or individuals cannot use the trademark
or logo without the endorsement of the business owner. Thus registering a product with the
help of trademark attorneys helps in protecting against infringement of the logo.
 105

7. 10-Year-Validity:

Registered trademarks have a 10-year validity and can be renewed indefinitely. It is cost-
effective and enables the business to create and maintain a unique identity. The trademark
renewal process can be easy and convenient for the registered users if you seek help of an
experienced trademark agent around you.

8. International Collective Mark Registration:

To secure a trademark on products in foreign countries, the trademark must be applied in that
respective company. For this reason, the trademark applied in India can be used as a premise
when applying in other countries. This will be used as a base when applying for a trademark
in other countries, along with the goodwill earned in India.

Infringement of Collective Mark

As per section 67 of the Trademark Act, 1999, in the event of an infringement a lawsuit can be
filed by the registered user of the collective mark. Moreover while adjudicating the suit the
court will take into account the damages of all authorised users and not just the registered user
of the mark and may impose monetary fine to make up for those losses.

Conclusion

Collective marks have become an instrument used by consumers to differentiate between

various brands/companies competing in the sale of similar goods and services. Correct use of
the collective mark can assist the company in Goodwill building in terms of quality,
accuracy, origin at an early stage.

6. 'X' is a registered user of a trademark 'Nirma'. Now 'Y' wants to apply

the trademark 'Nima' for his products. Advise him
 106

7. The plaintiff holds trade mark on Andalsnuff. The defendant begins

to use trade mark as Ambalsnuff. The plaintiff challenges it. Decide.

8. The plantiff company which is assigned with all rights, titles and
interests along with trade mark existing in the personality of the artist,
a famous pop star, challenges unauthorised use of artist's reputation
in selling minature dolls of the artist by the defendant company before
the High court. Decide.

9. The defendant company assigns its trade mark 'MAAZA to the

plaintiff company with all intellectual property rights and its goodwill
in India concerning mango fruit drink. Afterwards the defendant
company starts exporting fruit drink under the name of 'MAAZA' to
Turkey. The plaintiff company seeks legal action against the defendant
company. Decide.
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UNIT 3

10 MARKS

1. Explain the salient features of Information Technology Act, 2000 (3)

or
Explain the objectives and salient features of Information technology act,2000
Or
Explain internet policy of Government of India
2. What are the essentials of E-Contract?
or
Explain E-contract
3. Define cyber crime and explain the different types of cyber crimes.
4. What are cyber crimes? Classify computer related crimes enumerated in Information
Technology Act, 2000.
5. Explain E-governance and electronic signature certificate.
6. Examine the development and importance of E-commerce.
7. Discuss emergence of cyber crimes.

6 MARKS

1. Write a note on cyber crimes. (2)

2. Write a note on protection of computer software.
3. Write a note on Internet domain names (2)
Or
Write a note on Domain name
4. Write a note on E-contracts.
5. Write a note on 'Certifying Authority'.
6. Write a note on Data protection in cyberspace (2)
7. Internet service provider.
8. Software patent.
9. copyright in micro software
 108

10 MARKS

1. Explain the salient features of Information Technology Act, 2000 (3)

or
Explain the objectives and salient features of Information technology
act,2000
Or
Explain internet policy of Government of India

Introduction

The United Nations Commission on International Trade Law in 1996 adopted a model law on
e-commerce and digital intricacies. It also made it compulsory for every country to have its
own laws on e-commerce and cybercrimes. In order to protect the data of citizens and the
government, the Act was passed in 2000, making India the 12th country in the world to pass
legislation for cyber-crimes. It is also called the IT Act and provides the legal framework to
protect data related to e-commerce and digital signatures. It was further amended in 2008 and
2018 to meet the needs of society

Definition

As per Section 2(v) of the Information Technology Act, 2000, information includes data,
message, text, images, sound, voice, codes, computer programmes, software and databases or
microfilm or computer-generated micro fiche.

Dictionary meaning of the term 'Information Technology' is 'the study or use of systems such
as computers and telecommunications for storing, retrieving and sending information. The
International Formulation for Information Technology (IFIT) provided three definitions for
Information Technology (IT):

1. The technology used for the study, understanding, planning, design, construction, testing,
distribution, support and operations of software, computers and computer related systems that
exist for the purpose of Data, Information and knowledge processing.

2. The industry that has evolved to include the study, science, and solution sets for all aspects
of Data, Information and Knowledge management and/ or processing.

3. The organization in an enterprise or business that is held responsible and accountable for the
technology used for planning, design, construction, testing, distribution, support and operations
 109

of software, computers and computer related systems that exist for the purpose of Data,
Information and Knowledge management and/or processing in a business context.

Aims or objects of the Information Technology Act, 2000

The 1990s, increased global economic liberalization and the growth of e-commerce owed the
United Nations Commission on International Trade (UNCITRAL) to adopt few model laws to
promote the harmonization and unification of international trade law, so as to remove
unnecessary obstacles to international trade caused by inadequacies and divergences in the law
affecting international trade.

In 1996, in furtherance of this mandate the Model Law on Electronic Commerce was adopted.
Against this background of the UN model law, the Government of India enacted the
Information Technology Act of 2000 (hereinafter referred to as the “IT Act”) applicable to
whole of India. The Act was amended in 2008 wherein new sections were added addressing
the offences through offensive messages and cyber terrorism. This is the primary law that deals
with cyber-crime and electronic commerce in India.

It provides legal recognition for transactions that are carried out by means of electronic data
interchange and other means of electronic communication. Further, it defines cyber-crimes and
prescribes specific penalties for the same. Additionally, the IT Act mandated for the formation
of a Controller of Certifying Authorities who has the power to regulate the issuance of digital
signatures. It further established a Cyber Appellate Tribunal which can resolve disputes
specifically arising from cyber law. The Act, further proposes to amend the IPC, the Evidence
Act, the RBI Act, and the Bankers’ Books Evidence Act so as to make them in tune with the
provisions of IT Act.

(a) A facilitating Act:

The Information Technology Act, 2000 is a facilitating Act as it facilitates both e-commerce
and e-governance. Interestingly, the UNCITRAL Model Law of Ecommerce on which this Act
is based has made no reference to e-governance. But it was the collective wisdom of the
legislature, which saw the necessity of introducing concepts like egovernance in this Act. In
fact, the entire Chapter III of the Act is devoted to e-governance and egovernance practices.
There are 7 sections in the aforesaid Chapter III of the Act, from section 4 to section 10, which
deal with e-governance issues. These sections form the basic law related to electronic
governance rights, which have been conferred to the persons and the Government(s) both
Central and State Governments. It is applicable to the whole of India, including the State of
Jammu and Kashmir. It is important to understand that the Information Technology Act, 2000
is the first enactment of its kind in India, which grants e-governance rights to the citizens of
India.
 110

(b) An enabling Act:

The Information Technology Act, 2000 is an enabling Act as it enables a legal regime of
electronic records and digital signatures. That is, in order to be called legally binding all
electronic records, communications or transactions must meet the fundamental requirements,
one authenticity of the sender to enable the recipient (or relying party) to determine who really
sent the message, two messages integrity, the recipient must be able to determine whether or
not the message received has been modified en route or is incomplete and third, non-
repudiation, the ability to ensure that the sender cannot falsely deny sending the message, nor
falsely deny the contents of the message. The Act provides for Digital signatures, which may
be considered functional equivalent to physical world signatures capable of meeting all the
fundamental requirements, like authenticity of the sender, message integrity and
nonrepudiation. Digital signature is a misnomer. It does not mean scanning the handwritten
signatures electronically. In fact by applying digital signatures one may actually transform an
electronic message into an alphanumeric code. It requires a key pair (private key for encryption
and public key for decryption) and a hash function (algorithm).

(c) A regulating Act:

The Information Technology Act, 2000 is a regulating Act as it regulates cyber-crimes. As

stated above, cyber-crime is a collective term encompassing both cyber contraventions and
cyber offences. The Act not only demarcates contraventions from offences, but also provides
a separate redressal mechanism for both.

The objectives of the Information Technology Act, 2000 are;

1. Provide legal recognition for transactions:

a) Carried out by means of electronic data interchange,

b) other means of electronic communication, commonly referred to as electronic commerce',

involving the use of alternatives to paper-based method of communication and storage of
information.

2. to facilitate electronic filing of documents with the Government agencies

3. To protect:

a) all electronic systems for intrusion;

b) privacy of certain messages

c) the computer system from authorised access

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4. To ensure

a) compliance to the provisions of the Act

b) Non-publishing of obscene information

c) assistance in the decrypting information with interest of State and Crime control.

5. To prevent misrepresentation, falsity and fraud

6. To boast e-commerce in India

7. To provide for the legal framework to facilitate electronic commerce and electronic
transations.

8. To prevent computer crimes by providing for penalty.

9. To promote eletronic filing or documentation and digital signature; and

10. To amend the Indian Penal Code, evidence Act, 1872; the Banker's Book Evidence Act,
1891 and the Reserve Bank of India Act, 1934.

The Statement of Objects and Reasons stated in the Information Technology Bill, 2000 (Act
21 of 2000) and the Amendment Bill, 2000 (Act. 10 of 2009) state the aims and objective as
given below.

"New communication systems and digital technology have made dramatic changes in the way
we live. A revolution is occurring in the way people transact business. Businesses and
consumers are increasingly using computers to create, transmit and store information in the
electronic form instead of traditional paper documents. Information stored in electronic form
has many advantages. It is cheaper, easier to store, retrieve and speedier to communicate.
Although people are aware of these advantages, they are reluctant to conduct business or
conclude any transaction in the electronic form due to lack of appropriate legal framework. The
two principal hurdles which stand in the way of facilitating electronic commerce and electronic
governance are the requirements as to writing and signature for legal recognition. At present,
many legal provisions assume the existence of paper based records and documents and records
which should bear signatures. The Law of Evidence is traditionally based upon paper based
records and oral testimony. Since electronic commerce eliminates the need for paper based
transactions, hence to facilitate e-commerce, the need for legal changes have become an urgent
necessity. International trade through the medium of commerce is growing rapidly in the past
few years and many countries have switched over from traditional paper based commerce to e-
commerce.
 112

2. The United Nations Commission on International Trade Law (UNCITRAL) adopted the
Model Law on Electronic Commerce in 1996. The General Assembly of United Nations by its
Resolution No. 51/162, dated 30th January, 1997 recommended that all States should give
favourable considerations to the said Model Law when they enact or revise their laws. The
Model Law provides for equal legal treatment of users of electronic communication and paper
based communication. Pursuant to a recent declaration by member countries, the World Trade
Organisation is likely to form a work programme to handle its work in this area including the
possible creation of multilateral trade deals through the medium of electronic commerce.

3. There is a need for bringing in suitable amendments in the existing laws in our country to
facilitate e-commerce. It is, therefore, proposed to provide for legal recognition of electronic
records and digital signatures. This will enable the conclusion of contracts and the creation of
rights and obligations through the electronic medium. It is also proposed to provide for a
regulatory regime to supervise the Certifying Authorities issuing Digital Signature Certificates.
To prevent the possible misuse arising out of transactions and other dealings concluded over
the electronic medium, it is also proposed to create civil and criminal liabilities for
contravention of the provisions of the proposed legislation.

4. With a view to facilitate Electronic Governance, it is proposed to provide for the use and
acceptance of electronic records and digital signatures in the Government offices and its
agencies. This will make the citizens interaction with the Governmental offices hassle free.

5. It is also proposed to make consequential amendments in the Indian Penal Code and the
Indian Evidence Act, 1872 to provide for necessary changes in the various provisions which
deal with offences relating to documents and paper based transactions. It is also proposed to
amend the Reserve Bank of India Act, 1934 to facilitate electronic fund transfers between the
financial institutions and banks and the Bankers' Books Evidence Act, 1891 to give legal
sanctity for books of account maintained in the electronic form by the banks

6. The proposal was also circulated to the State Governments. They have supported the
proposed legislation and have also expressed urgency for such legislation.

7. The Bill seeks to achieve the above objectives. Further the preamble of the information
Technology Act, 2000 states the aims and objects as follows:

An Act to provide legal recognition for transactions carried out by means of electronic data
interchange and other means of electronic communication, commonly referred to as "electronic
commerce", which involve the use of alternatives to paper-based methods of communication
and storage of information, to facilitate electronic filing of documents with the Government
agencies and further to amend the Indian Penal Code, the Indian Evidence Act, 1872, the
Banker's Book Evidence Act, 1891 and the Reserve Bank of India Act, 1934 and for matters
connected therewith or incidental thereto.
 113

Salient features of the Information Technology Act, 2000 (after the amendments in 2003
and 2008)

1. Based on UNCITRAL Model Law

The Information Technology Act, 2000 was enacted based on the The UNCITRAL Model
Law on Electronic Commerce, 1996. (See the topic 'Aims and Objectives of IT Act) and the
Amendment Act, 2008 was enacted based on UNCITRAL Model Law on Electronic
Signatures, 2001. Hence it is the law on par with the Law of other countries relating to
Information Technology.

2. The IT Act provides:

a) Legal recognition of Electronic Documents (Sec.4-5) It accepts the electronic form of any
offer, culmination in an electronic contract, and declares them legal and enforceable. It
legally recognises email as a valid form of communication in India (Sec.10A).

b) Legal recognition of electronic signatures (Sec.5)- Legal recognition of digital signature

was recognised for the first time in Indian Law,

c) the use of electronic records and electronic signatures in government and its agencies
(Sec.6). It aims to create an enabling environment to e-governance.

d) the delivery of services by service provides through electronic means (Sec.6A) e) the
retention of electronic records (Sec.7).

3. The IT Act authorising the Central Government to provide the regulation of certifying
authority through the appointment of controller of certifying Authority for the purpose of IT
Act (Secs.17-34).

4. The IT Act provides for the Establishment of Cyber Appellate Tribunal (Secs.48-64).

5. The IT Act provides a legal frame work to facilitate electronic commerce and electronic
transaction. It aims to boost e-commerce in the country.

6. IT Act provides for admissibility of Electronic data/evidence in a Court of Law.

7. The IT act declares the following as Cyber offences (Secs.65-78):

i) Tampering with computer source documents.

ii) Hacking with computer system.

iii) Publishing of information which is obscene in electronic form.

 114

iv) Not to obey the direction of controller.

v) Direction of Controller to a subscriber extend facilities to decrypt information.

vi) Penal action for misrepresentation.

vii) Breach of confidentiality and privacy.

viii) Publishing digital signature certificate false in certain particular.

ix) Act to apply for offence or contravention committed outside India and

x) Confiscation.

8. IT Act provides for penalties, compensation and adjudication (Sec.43-47). The act aims at
preventing misrepresentation, falsity and fraud and computer crimes and provides for penalty.
It provides punishment for cyber obscenity and crimes. Indian Cyber Law talks of the arrest of
any person who is about to commit a cyber-crime.
9. The IT Act simultaneously amended the following Acts:

(i) Indian Penal Code;

(ii) Evidence Act,

(iii) Reserve Bank of India Act,

(iv) Banker's Book Evidence Act. The anomalies of IT Act:

1. IT Act provides provisions on cyber liberties and freedom. A Police officer of the rank of a
Deputy Superintendent of Police has been granted arbitrary powers to do almost anything for
the purpose of nabbing a Cyber Criminal (Sec.80).

2. The IT Act gives immunity to the Central Government and its officials, including the Police
from any suit, prosecution and other legal proceedings for any act, done in good faith, in
pursuance of the provisions of the Act (Sec.84).

3. The IT Act makes itself applicable to not only the whole of India but also to any
contravention or offence committed outside India by any person of any nationality throughout
the World. Internet is about abolishing boundaries and not about creating them. The said new
law will lead to numerous conflicts of jurisdiction (Sec.75).

4. The IT Act takes immovable property out of the ambit of electronic commerce as immovable
property.
 115

5. Under IT Act, the Government of India claims immunity from judicial review in its power
of appointing the presiding officer of the Cyber Appellate Tribunal, a feature unknown to
Indian jurisprudence.

6. The IT Act begins by granting a legal infrastructure for e-commerce, without touching on
other important legal issues for the corporate sector like Intellectual property Rights, Domain
Names, Internet Policy, linking or Disclaimer.

7. The IT Act takes a contrary stand from emerging Global Cyber Law. Trends relating to
liability of Internet Service Providers (ISPs) for third Party data and information contrary to
global trends ISPs, as a matter of Principle, are made liable for third party data and information,
made available by them through their service. However, the ISP is not liable in two exceptional
cases: (i) if the ISP proves that he had no knowledge of the Commission of any offence or
contravention of the provisions of the Act.

If the ISP proves that he acted with due diligence to prevent the commission of any offence or
contravention of the provisions of the Act. However, both these exceptions are loosely defined
and may become a tool that is available to the authorities for the harassment of companies.
10. The IT Act does not lay down parameters for its implementation.

Salient features of the Information Technology (Amendment) Act, 2008 (Act 10 of 2009)

Indian government realising the changing terrain of online interactions, formed an expert
committee under Ministry of IT to suggest amendments to act to keep it relevant. The
Committee pointing out several lacunas in the enactment. Proposed amendments to it in the
report it tendered to the of IT. As a result, the Information Technology (Amendment) Bill, was
introduced with Parliament in 2006, but it was referred to the Standing Committee of
Parliament. In December, 2008 the bill was passed by the Parliament and it became Information
Technology (Amendment) Act, 2008 (Act 10 of 2009)

The salient features of IT (Amendment) Act, 2008 are as follows:

1. Change of the term

'digital signature' as 'electronic signature": The term 'digital signature has been replaced with
electronic signature" to make the Act more technology neutral.

2. Some New definitions

A new Sub-section has been inserted to define communication device(See 2(ha)) A new sub-
section has been added to define 'cyber cafe' (Sec.2(na)). A new sub-section has been added to
define 'intermediary' (Sec.2(w))
 116

3. Corporate responsibility

A new Section 43 A has been inserted to protect sensitive personal data or information
possessed, dealt or handled by a body Corporate in computer resources which such body
corporate owns, controls or operates. If such body corporate is negligent in implementing and
maintaining reasonable security practices and procedures and thereby causes wrongful loss or
wrongful gain to any person, it shall be liable to pay damages by way of compensation to the
person so affected.

4. Punishments redefined

A host of new sections have been added to Section 66 as Sections 66 A to 66-F prescribing
punishment for various offences. Many Cyber-crimes for which no express provisions existed
in the IT Act, 2000 now stand included by this amendment. Phishing and spam i.e., sending of
offensive or false message (Sec.66-A), receiving stolen computer resource (Sec.66-B), identity
theft i.e., misuse of digital signature (Sec.66C), cheating by personation (Sec.66-D), violation
of privacy (Sec.66E) and Cyber terrorism (Sec.66-F) for which punishment can be extended to
imprisonment for life. Punishment prescribed is generally upto 3 years and fine of one/two
lakhs has been prescribed. In certain offences, such as Hacking (Sec.66) punishment is
enhanced from 3 years of imprisonment and fine of two lakhs to five lakhs. While all offences
carrying penalties above three years imprisonment have been made cognizable, they have also
been made bailable and lesser offences have been made compoundable.

To Section 67 of the old Act, a host of new sections have been inserted as Sections 67-A to 67-
C. While Section 67A and B insert penal provisions in respect of offences of punishing or
transmitting of material containing sexual explicit act and child pornography in electronic form,
Section 67-C deals with the obligation of an intermediary to preserve and retain such
information as may be specified for such duration and in such manner and format as the Central
Government may prescribe.

5. Governments Drastic Powers

In order to compact cyber terrorism the government has further armed itself with drastic
powers. Section 69 of the Act amended enhances the scope of the original Act to include
interception and monitoring of decryption of any information through any computer resource.
Further Sections 69-A and B, two new sections, grant power to the State to issue directions for
blocking any website and to monitor and collect traffic data or information through any
computer resource for Cyber security.

Under the new IT Act, any Government official or policeman well be able to listen in all your
phone calls, read your SMSs and e-mails, and monitor the websites you visit. And he will not
require any warrant from a magistrate to do so.
 117

6. Encryption

The amendment does not really bring about much of a change with respect to encryption, except
for expanding the scope of the government's power to order decryption. While earlier, under
Section 69, the Controller had power to order decryption for certain purposes and order
'subscribes to aid in doing so (with a sentence of up to seven years upon non-compliance), now
the government may even call upon intermediaries to help it with decryption (Sec. 69 (3)).

7. Intermediaries

Section 79 of the Act which exempted intermediaries has been modified to the effect that an
intermediary shall not be liable for any third party information data or communication link
made available or hosted by him if:

a) the function of the intermediary is limited to providing access to a communication system

over which information made available by third parties is transmitted or temporarily stored or
hosted.

b) the intermediary does not initiate the transmission or select the receiver of the transmission
and select or modify the information contained in the transmission.

c) the intermediary observes due diligence while discharging his duties. However, Section 79
will not apply to an intermediary if the intermediary has conspired or abetted or aided or
induced whether by threats or promise or otherwise in the commission of the unlawful act.

The amendment to the provision on intermediary liability seeks to make only the actual
violators of the law liable for the offences committed. The intermediary loses protection of the
act if:

a) it initiates the transmission;

b) selects the receiver of the transmission; and

c) selects or modifies the information.

8. Dilutions -

The major dilutions of the Amendment Act, 2008 are: less punishment for violation of privacy
under Section 66 E and for failure to comply with the direction of controller under Section
68(2).
 118

Conclusion

The Act is a step toward protecting the data and sensitive information stored with the
intermediaries online. It gives various provisions which benefit the citizens and protect their
data from being misused or lost. However, with the advancement of e-commerce and online
transactions, it is necessary to deal with problems like internet speed and security, transactions
that are struck, the safety of passwords, cookies, etc. Cyber crimes are increasing at a great
pace, and there is a need to have a mechanism to detect and control them.
 119

2. What are the essentials of E-Contract?

or
Explain E-contract

Introduction

The Indian Contract Act, 1872 governs the manner in which contracts are made and performed
in India. E-contract is one of the divisions of e-business. It is similar to a traditional business
wherein goods and services are switched for a particular amount of consideration. The
important factor involved is that the contract takes place through a digital mode of
communication.

Definition

"Section 10-A of the Information Technology Act, 2000: Validity of contracts formed through
electronic means. -
Where in a contract formation, the communication of proposals, the acceptance of proposals,
the revocation of proposals and acceptances, as the case may be, are expressed in electronic
form or by means of an electronic record, such contract shall not be deemed to be unenforceable
solely on the ground that such electronic form or means was used for that purpose."
Essentials for Creating a Valid E-Contract

There are several essential elements and conditions that must be met in order to build an
effective e-contract. Here are the important points to consider:

1. Offer and Acceptance

An e-contract, like conventional contracts, calls for a specific offer from one party and the other
side’s acceptance of that offer. Electronic channels, such as emails, online forms, or electronic
communication on a website, may be used to communicate the offer and acceptance. Both
parties must accept the agreement’s provisions and demonstrate their desire to be bound by it.

In many contacts (whether online or conventional) the offer is not made directly one-on-one.
The consumer ‘browses’ the available goods and services showed on the seller’s website and
then chooses what he would like to purchase. The offer is not made by website showing the
items for sale at a particular price. This is essentially an invitation to offer and hence is
revocable at any time up to the time of acceptance. The offer is made by the customer on
introduction the products in the virtual ‘basket’ or ‘shopping cart’ for payment.

2. Consideration

Consideration is the term used to describe an exchange of money, products, or services for
something of worth between the parties. A sufficient amount of attention must be given by both
 120

parties for an e-contract to be deemed genuine. This requirement ensures that each party
receives a benefit or suffers a detriment due to the contract.

Any contract to be enforceable by law must have legal consideration, i.e., when both parties
give and receive something in return. Therefore, if an auction site eases a contract between two
parties where one Ecommerce – Legal Issues such as a person provides a pornographic movie
as consideration for purchasing an mp3 player, then such a contract is void.

3. Intention to Create Legal Obligations

A valid e-contract requires an intention from both parties to create legally binding obligations.
Therefore, it is important to establish that the parties intended to enter into a legal agreement
and not merely engage in casual or preliminary discussions.

If there is no intention on the part of the parties to create lawful relationships, then no contract
is possible between them. Usually, agreements of a domestic or social nature are not contracts
and therefore are not enforceable, e.g., a website providing general health related data and
instructions.

4. Meeting of Minds

Also known as consensus ad idem (or meeting of minds), a valid e-contract necessitates a
meeting of minds between the parties. This means that both parties must have a shared
understanding of the essential terms and conditions of the contract. The use of clear and
unambiguous language in electronic communication is crucial to ensure that the parties agree.

5. Electronic Signatures

E-contracts often require the use of electronic signatures to authenticate the identity of the
parties and indicate their intention to be bound by the contract. Different jurisdictions may have
specific laws governing electronic signatures, such as the use of digital signatures, encrypted
codes, or other electronic authentication methods. Compliance with the applicable electronic
signature laws is essential for the enforceability of the e-contract.

6. Compliance with Applicable Laws and Regulations

E-contracts must abide by the rules and guidelines that apply to electronic transactions in the
country where the contract is created or enforced. These may include laws related to data
protection, consumer rights, electronic commerce, and electronic evidence. It is important to
be aware of and adhere to the legal requirements specific to e-contracts in one’s jurisdiction.
 121

7. The parties must be able to contract.

Contracts by minors, lunatics etc. are void. All the parties to the contract must be lawfully
competent to enter into the contract.

8. There must be free and unaffected consent

Consent is said to be free when there is absence of coercion, misrepresentation, undue influence
or fraud. In other words, there must not be any agitation of the will of any party to the contract
to enter such contract. Usually, in online contracts, especially when there is no active real-time
communication between the contracting parties, e.g., between a website and the customer who
buys through such a site, the click through process ensures free and genuine consent.

9. The object of the contract need to be lawful

A valid contract presumes a lawful object. Thus a contract for selling narcotic drugs or
pornography online is void.

10. There must be conviction and possibility of performance

A contract, to be enforceable, must not be ambiguous or unclear and there must be possibility
of performance. A contract, which is impossible to perform, cannot be enforced, e.g., where a
website promises to sell land on the moon.

Trimex International FZE Ltd. vs Vedanta Aluminum Ltd. (2010)

In this case, the Supreme Court of India recognised the enforceability of an e-contract formed
through email correspondence. The court held that electronic communications, such as emails,
can constitute valid contracts if they satisfy the essential elements of a contract, including offer,
acceptance, and consideration.

M/s. Enter Electronics vs S Ramachandran (2013)

The Madras High Court held that a contract formed through electronic communication,
specifically through an exchange of emails, is valid and enforceable. The court emphasised that
as long as the essential elements of a contract are fulfilled, the mode of communication does
not affect the enforceability of the contract.

Andhra Pradesh Power Coordination Committee vs Lanco Kondapalli Power Pvt. Ltd.
(2014)

The Supreme Court of India recognised the enforceability of an e-contract formed through the
electronic bidding process. The court held that electronic transactions, including electronic
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bidding, are valid and enforceable if they adhere to the procedures specified in the relevant
rules and regulations.

Trimex International FZE Ltd. vs Vedanta Aluminum Ltd. (2016)

In a subsequent case between the parties mentioned earlier, the Supreme Court reiterated the
enforceability of e-contracts formed through email communications. The court emphasised that
electronic communications can constitute valid contracts, provided they meet the essential
requirements of a contract under Indian law.

Conclusion

E-contracts represent a significant milestone in the digital transformation of business

transactions in India. While their adoption offers numerous benefits, various legal and
technological challenges must be addressed to ensure their seamless integration within the
Indian Contract Act, 1872.
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3. Define cyber crime and explain the different types of cyber crimes.

Introduction

In India, cyber crimes are covered by the Information Technology Act, 2000 and the Indian
Penal Code, 1860. It is the Information Technology Act, 2000, which deals with issues related
to cyber crimes and electronic commerce. However, in the year 2008, the Act was amended
and outlined the definition and punishment of cyber crime. Several amendments to the Indian
Penal Code 1860 and the Reserve Bank of India Act were also made.

Meaning

Cybercrime may be defined as “Any unlawful act where computer or communication device
or computer network is used to commit or facilitate the commission of a crime”.

Cyber Crime means illegal use of computers and the Internet. It is a crime committed using a
computer and internet to steal a person's identity or sell contraband or stalk victims or disrupt
operations with malevolent programs.

Cyber Crime encompasses any criminal act dealing with computers and networks (called
hacking). Additionally, Cyber Crime also includes traditional crimes conducted through the
internet. For example, hate crimes, telemarketing and internet fraud, identity theft, and credit
card account thefts are considered to be cyber-crimes when the illegal activities are committed
through the use of a computer and the internet.

Cyber-crimes are defined as "offences that are committed against individuals or groups of
individuals with a criminal motive to intentionally harm the reputation of the victim or cause
physical or mental harm to the victim directly or indirectly, using modern telecommunication
networks such as Internet (chat rooms), e-mail, noticeboards and groups, and mobile phones
(SMS/MMS).

Cybercrimes

Cybercrimes can be basically divided into 3 major categories being Cybercrimes against
persons, property and Government.

1. Cybercrimes committed against persons- include various crimes like transmission of

child-pornography, harassment of any one with the use of a computer such as e-mail, and cyber-
stalking. The trafficking, distribution, posting, and dissemination of obscene material including
pornography, indecent exposure, and child pornography, constitutes one of the most important
Cybercrimes known today. The potential harm of such a crime to humanity can hardly be
overstated. This is one Cybercrime which threatens to undermine the growth of the younger
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generation as also leave irreparable scars and injury on the younger generation, if not
controlled.

2. Cybercrimes against Government- Cyber Terrorism is one distinct kind of crime in this
category. The growth of Internet has shown that the medium of Cyberspace is being used by
individuals and groups to threaten the international governments as also to terrorize the citizens
of a country. This crime manifests itself into terrorism when an individual &"cracks&" into a
government or military maintained website.

3. Cyber-crime committed against property - Cybercrimes against all forms of property.

These crimes include unauthorized computer trespassing through cyberspace, computer
vandalism, transmission of harmful programs, and unauthorized possession of computerized
information

Different Types or kinds of Cyber crimes

Cyber Crime is an evil having its origin in the growing dependence on computers in modern
life. The following are some types of cyber-crimes where in the computer is a tool for an
unlawful act:

1. Financial Crimes:

this would include cheating, credit card frauds, money-laundering etc.

2. Cyber pornography: This would include pornographic websites: pornographic magazines

produced using computer and the Internet (to down load and transmit pornographic pictures,
photos, writings etc.).

Child sexually abusive material (CSAM) refers to a material containing sexual images in any
form, of a child who is abused or sexually exploited. Section 67 (B) of the IT Act states that “it
is punishable for publishing or transmitting of material depicting children in the sexually
explicit act, etc. in electronic form.

3. Sale of illegal articles:

This would include sale of narcotics, weapons and wild life etc., by posting information on
websites, bulletin boards or simply by using e-mail communications.

4. Online gambling:

There are millions of websites, all hosted on servers abroad, that often online gambling. They
are fronts for money laundering.
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5. Intellectual property crimes:

These include copyright infringement, trademark violation patent violations, domain name
registration, software piracy etc.

6. E-mail spoofing or E-mail forging:

Spoofing occurs where one computer on a network pretends to have the identity of another
computer on the network. A spoofed e-mail is one that appears to originate from one source
but actually has been sent from another source.

7. Forgery:

Counterfeit currency notes, postage and revenue stamps, mark sheets etc., can be forged using
sophisticated computers, printers and scanners.

8. Cyber Defamation:

This occurs when defamation takes place with the help of computers and or the Internet e.g.,
someone published defamatory matter about someone on a websites or sends e-mail containing
defamatory information to all of that person's friends.

9. Cyber stalking:

Cyber stalking involves following a person's movements across the internet by posting
messages on the bulletin boards frequented by the victim, entering the chat-rooms frequented
by the victim.
Cyberstalking is the use of electronic communication by a person to follow a person, or
attempts to contact a person to foster personal interaction repeatedly despite a clear indication
of disinterest by such person; or monitors the internet, email or any other form of electronic
communication commits the offence of stalking.

10. Hacking or unauthorised access to computer system or network:

Hacking means unauthorised attempts to bypass the security mechanisms of an information

system or network.

11. Theft of information contained in electronic form:

This includes information stored in computer hard disk, removable storage media etc.
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12. E-mail bombing:

This refers to sending a large amount of e-mails to the victim resulting in the victim's e-mail
account or mail servers.

13. Data diddling:

This kind of attack involves altering the raw data just before it is processed by a computer and
then changing it back after the processing is completed.

14. Salami attacks:

Those attacks are used for the commission of financial crimes. The key here is to make the
alteration so insignificant that in a single case it would go completely unnoticed e.g., a bank
employee inserts a program into bank's servers, which deducts a small amount from the account
of every customer.

15. Denial of Service:

This involves flooding customer resources with more fequests than it can handle. This causes
the resources to crash thereby denying authorised users the service offered by the resources.

16. Virus:

They are the programmes that attach themselves to a computer or a file and then circulate
themselves to other files and to other computers on a network. They usually affect the data on
a computer, either by altering or deleting it. Five famous computer viruses ever created in
history are:
i) creeper - 1971;
ii) Michelangelo 1991,
iii) I Love you, 2000,
iv) Code Red, 2001, and
v) conficker 2008.

17. Trojan Horse:

This is an unauthorised program which functions from inside what seems to be an authorised
programme, thereby concealing what it is actually doing.

18. Internet Time Theft:

This connotes the usage by unauthorised persons of the Internet hours paid for by another
person.
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19. Physically damaging a computer system:

This crime is committed by physically damaging a computer or its peripherals.

20. Cyber Bullying

A form of harassment or bullying inflicted through the use of electronic or communication

devices such as computers, mobile phones, laptops, etc.

21. Cyber Grooming:

Cyber Grooming is when a person builds an online relationship with a young person and tricks
or pressures him/ her into doing a sexual act

The various types of new cyber-crimes are presented below:

1. Bot and Bot Nets:

Bots are programs installed covertly on a user's system which allows the attacker to remotely
control the targeted computer through a communication channel, such as Internet Relay Chat
(IRC), Peer to Peer (P2P), or HTTP. These communication channels allow the attacker to
control a large number of compromised computers in a single channel in a "botnet' (an
abbreviation for robot network).

2. Key Loggers:

Key logger is a software program or a device designed to secretly monitor and log all
keystrokes. The key logger software means computers, their processes, and data, the moment
a person strikes a key on the keyboard. This information is immediately carried over to an
external controller.

3. Website Defacement:

This is usually carried out by the substitution of the home page of a site by a system cracker
that breaks into a web server and alters the hosted website creating one of its own. The hacker
usually replaces the site matters with his own message or completely destroys the site's content.

4. Distributed Denial of Service (DDOS) Attacks:

A Denial of service is an attempt to prevent users from accessing a specific computer resource
such as a website. A DDos involves overwhelming the targeted computer with requests so that
it is no longer able to communicate with its intended users.
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5. Phishing:

This is criminally fraudulent process of misleading a trust worthy entity in an electronic

communication in order to trick people into disclosing sensitive information such as user name,
passwords and credit card details.

Phishing is a type of fraud that involves stealing personal information such as Customer ID,
IPIN, Credit/Debit Card number, Card expiry date, CVV number, etc. through emails that
appear to be from a legitimate source.

6. Vishing:

This is the criminal practice of using voice over phone systems to gain access to details about
account numbers, PIN, date of birth and expiry date of credit card holders and using it for
fraudulent activities.
Vishing is an attempt where fraudsters try to seek personal information like Customer ID, Net
Banking password, ATM PIN, OTP, Card expiry date, CVV etc. through a phone call.

7. Pharming:

This occurs where a cyber-criminal redirects a user from a legitimate site to a fraudulent and
malicious site where their machines are injected with malware.

8. Identity theft:

This involves pretending to be someone else in order to steal money or get other benefits. The
identity of another individual is impersonated in order to commit credit card fraud, create false
profiles at networking sites and operate false e-mail identities.
9. Phreaking:

This refers to people who tamper with systems of telecommunications such as the public
telephone networks and various phone system audio frequencies. This term has been recently
broadened to include people involved in computer hacking and is referred to H/P culture
hacking and phreaking culture).

10. Rootkits:

These are programmes designed to capture the 'root access or take control of the system while
avoiding detection from anti-virus scams. In other words a rootkit is a virus which seeks to
hide the fact that the computer is compromised from the operating system and therefore from
the user. A rootkit does so by using software that hides processes, files, registry data and
network connections and prevents them from being displayed. The Brain virus was the first
rootkit to be identified in 1986.
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11. Mobile Malwares:

This spreads through mobile phones even without use of blue tooth, emails, or infected Multi-
Media Messages (MMs) to control it spying tools are also being installed on mobile handsets.
They are installed on the hand-set in order to keep a long of all the activities of the user.

12. Cyber Squatting

Cyber-Squatting is an act of registering, trafficking in or using a domain name with an intent

to profit from the goodwill of a trademark belonging to someone else.

13. Online Drug Trafficking

Online Drug Trafficking is a crime of selling, transporting, or illegally importing unlawful

controlled substances, such as heroin, cocaine, marijuana, or other illegal drugs using electronic
means.

14. Espionage

Espionage is the act or practice of obtaining data and information without the permission and
knowledge of the owner.

Conclusion

With the advancement in technology, disturbing elements are appearing on the dark web that
is disturbing. The Internet has become a tool of evil deeds that are exploited by intelligent
people for evil motives and sometimes for financial gain. Thus, at this point in time, cyber laws
come into the picture and are important for every citizen. Due to the fact that cyberspace is an
extremely difficult territory to deal with, some activities are classified as grey activities that
cannot be governed by law.
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4. What are cyber crimes ? Classify computer related crimes enumerated

in Information Technology Act, 2000.

Introduction

In India, cyber crimes are covered by the Information Technology Act, 2000 and the Indian
Penal Code, 1860. It is the Information Technology Act, 2000, which deals with issues related
to cyber crimes and electronic commerce. However, in the year 2008, the Act was amended
and outlined the definition and punishment of cyber crime. Several amendments to the Indian
Penal Code 1860 and the Reserve Bank of India Act were also made.

Meaning

Cybercrime may be defined as “Any unlawful act where computer or communication device
or computer network is used to commit or facilitate the commission of a crime”.

Cyber Crime means illegal use of computers and the Internet. It is a crime committed using a
computer and internet to steal a person's identity or sell contraband or stalk victims or disrupt
operations with malevolent programs.

Cyber Crime encompasses any criminal act dealing with computers and networks (called
hacking). Additionally, Cyber Crime also includes traditional crimes conducted through the
internet. For example, hate crimes, telemarketing and internet fraud, identity theft, and credit
card account thefts are considered to be cyber-crimes when the illegal activities are committed
through the use of a computer and the internet.

Cyber-crimes are defined as "offences that are committed against individuals or groups of
individuals with a criminal motive to intentionally harm the reputation of the victim or cause
physical or mental harm to the victim directly or indirectly, using modern telecommunication
networks such as Internet (chat rooms), e-mail, noticeboards and groups, and mobile phones
(SMS/MMS).

Cyber Crimes

Sec 65: Tampering with computer source documents

Whoever knowingly or intentionally conceals, destroys or alters or intentionally or knowingly

causes another to conceal, destroy, or alter any computer source code used for a computer,
computer programme, computer system or computer network, when the computer source code
is required to be kept or maintained by law for the time being in force, shall be punishable with
imprisonment up to three years, or with fine which may extend up to two lakh rupees, or with
both.
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Sec 66: Computer related offences

If any person, dishonestly or fraudulently, does any act referred to in section 43, he shall be
punishable with imprisonment for a term which may extend to three years or with fine which
may extend to five lakh rupees or with both.

Sec 66A: Punishment for sending offensive messages through communication service, etc

Any person who sends, by means of a computer resource or a communication device,–

(a) any information that is grossly offensive or has menacing character; or

(b) any information which he knows to be false, but for the purpose of causing annoyance,
inconvenience, danger, obstruction, insult, injury, criminal intimidation, enmity, hatred or ill
will, persistently by making use of such computer resource or a communication device;
(c) any electronic mail or electronic mail message for the purpose of causing annoyance or
inconvenience or to deceive or to mislead the addressee or recipient about the origin of such
messages,

shall be punishable with imprisonment for a term which may extend to three years and with
fine

Sec 66B: Punishment for dishonestly receiving stolen computer resource or

communication device.

Whoever dishonestly receive or retains any stolen computer resource or communication device
knowing or having reason to believe the same to be stolen computer resource or communication
device, shall be punished with imprisonment of either description for a term which may extend
to three years or with fine which may extend to rupees one lakh or with both.

Sec 66C: Punishment for identity theft

Whoever, fraudulently or dishonestly make use of the electronic signature, password or any
other unique identification feature of any other person, shall be punished with imprisonment
of either description for a term which may extend to three years and shall also be liable to fine
which may extend to rupees one lakh.

Sec 66D: Punishment for cheating by personation by using computer resource

Whoever, by means of any communication device or computer resource cheats by personation,

shall be punished with imprisonment of either description for a term which may extend to three
years and shall also be liable to fine which may extend to one lakh rupees.
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Sec 66E: Punishment for violation of privacy

Whoever, intentionally or knowingly captures, publishes or transmits the image of a private

area of any person without his or her consent, under circumstances violating the privacy of that
person, shall be punished with imprisonment which may extend to three years or with fine not
exceeding two lakh rupees, or with both.

Sec 66F: Punishment for cyber terrorism.

(1) Whoever,

(A) with intent to threaten the unity, integrity, security or sovereignty of India or to strike terror
in the people or any section of the people by–
(i) denying or cause the denial of access to any person authorised to access computer resource;
or
(ii) attempting to penetrate or access a computer resource without authorisation or exceeding
authorised access; or
(iii) introducing or causing to introduce any computer contaminant, and by means of such
conduct causes or is likely to cause death or injuries to persons or damage to or destruction of
property or disrupts or knowing that it is likely to cause damage or disruption of supplies or
services essential to the life of the community or adversely affect the critical information
infrastructure specified under section 70; or

(B) knowingly or intentionally penetrates or accesses a computer resource without

authorisation or exceeding authorised access, and by means of such conduct obtains access to
information, data or computer data base that is restricted for reasons of the security of the State
or foreign relations; or any restricted information, data or computer data base, with reasons to
believe that such information, data or computer data base so obtained may be used to cause or
likely to cause injury to the interests of the sovereignty and integrity of India, the security of
the State, friendly relations with foreign States, public order, decency or morality, or in relation
to contempt of court, defamation or incitement to an offence, or to the advantage of any foreign
nation, group of individuals or otherwise, commits the offence of cyber terrorism.

(2) Whoever commits or conspires to commit cyber terrorism shall be punishable with
imprisonment which may extend to imprisonment for life.

Sec 67: Punishment for publishing or transmitting obscene material in electronic form

Whoever publishes or transmits or causes to be published or transmitted in the electronic form,

any material which is lascivious or appeals to the prurient interest or if its effect is such as to
tend to deprave and corrupt persons who are likely, having regard to all relevant circumstances,
to read, see or hear the matter contained or embodied in it, shall be punished on first conviction
with imprisonment of either description for a term which may extend to three years and with
fine which may extend to five lakh rupees and in the event of second or subsequent conviction
 133

with imprisonment of either description for a term which may extend to five years and also
with fine which may extend to ten lakh rupees.

Sec 67A: Punishment for publishing or transmitting of material containing sexually

explicit act, etc., in electronic form.

Whoever publishes or transmits or causes to be published or transmitted in the electronic form

any material which contains sexually explicit act or conduct shall be punished on first
conviction with imprisonment of either description for a term which may extend to five years
and with fine which may extend to ten lakh rupees and in the event of second or subsequent
conviction with imprisonment of either description for a term which may extend to seven years
and also with fine which may extend to ten lakh rupees.

Sec 67B: Punishment for publishing or transmitting of material depicting children in

sexually explicit act, etc., in electronic form.

Whoever,

(a) publishes or transmits or causes to be published or transmitted material in any electronic

form which depicts children engaged in sexually explicit act or conduct; or

(b) creates text or digital images, collects, seeks, browses, downloads, advertises, promotes,
exchanges or distributes material in any electronic form depicting children in obscene or
indecent or sexually explicit manner; or

(c) cultivates, entices or induces children to online relationship with one or more children for
and on sexually explicit act or in a manner that may offend a reasonable adult on the computer
resource; or

(d) facilitates abusing children online, or

(e) records in any electronic form own abuse or that of others pertaining to sexually explicit act
with children,

shall be punished on first conviction with imprisonment of either description for a term which
may extend to five years and with fine which may extend to ten lakh rupees and in the event of
second or subsequent conviction with imprisonment of either description for a term which may
extend to seven years and also with fine which may extend to ten lakh rupees

Conclusion
With the advancement in technology, disturbing elements are appearing on the dark web that
is disturbing. The Internet has become a tool of evil deeds that are exploited by intelligent
people for evil motives and sometimes for financial gain. Thus, at this point in time, cyber laws
come into the picture and are important for every citizen.
 134

5. Explain E-governance and electronic signature certificate.

Introduction

Electronic governance or e-governance implies government functioning with the application

of ICT (Information and Communications Technology). Hence e-Governance is basically a
move towards SMART governance implying: simple, moral, accountable, responsive and
transparent governance. Electronic Signature provides an electronic representation of the
individual’s identity that provides the proof of consent and assents to the facts of the given
signature.

Definition

Sec 2(ta) ―electronic signature‖ means authentication of any electronic record by a subscriber
by means of the electronic technique specified in the Second Schedule and includes digital
signature;

Sec 2(tb) ―Electronic Signature Certificate‖ means an Electronic Signature Certificate issued
under section 35 and includes Digital Signature Certificate;]

Electronic governance or e-governance

Governance is the act of governing. It is the systems and processes that ensures the overall
effectiveness of an entity whether a business, government or multilateral organisation.
According to the United Nations Development Programme (UNDP), governance is the
exercise of economic, political and administrative authority to manage a country's affairs at all
levels. It comprises the mechanisms, processes and institutions through which citizens and
groups articulate their interests, exercise their legal rights, meet their obligations and mediate
their differences. World Bank defined governance as the method through which power
is exercised in the management of a country's political, economic and social resources
for development.

Features of E-Governance:

1. De bureaucratization: Due to e-governance, the gap between the people and the
government in all the services of the government is narrowing and the dependence of the people
on the bureaucracy is also greatly reduced.

2. E-Services: Its main feature is the provision of services through the Internet.

3. International Services: through e-governance, all the essential services can be delivered
to the citizens who live outside one’s own country for jobs or any other reasons.
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4. It enhances the right of the citizens to express their views to the government (Using the
means of e-governance anyone can share their views with the government on any bill or act or
decision taken by the government).

5. Economic Development: With the introduction of e-governance, various information like

import-export, registration of companies, investment situations, etc. are available through the
internet. As a result, time is saved, delays reduced, and economic dynamism increases.

6. Reduce inequality: using e-governance tools everyone can gather information and
empower themselves. In this globalized world, knowledge is power, and means of e-
governance empower citizens by providing relevant information at minimal cost, effort,
and time.

Types of E-Governance:

E-Governance can be considered as the social inclusive policy for development of

transparency and accountability of both people in society and administration. This policy
involves providing quality services in several ways. Those ways are also known as types of e-
governance. These are mentioned below:

1. G2C (Government to Citizen)

2. G2G (Government to Government)
3. G2B (Government to Business)
4. G2E (Government to Employee)

G2C (Government to Citizen)

The Government-to-citizen refers to the government services that are accessed by the familiar
people. And Most of the government services fall under G2C. Likewise, the primary goal of
Government-to-citizen is to provide facilities to the citizen. It helps the ordinary people to
reduce the time and cost to conduct a transaction. A citizen can have access to the services
anytime from anywhere.

As people are the key concept of politics and government as well as governance, the
government is compelled to connect with citizens through a transparent and accountable
order. In this connection, the government is responsible for promoting social opportunities and
public services in the field of-
• Transportation (Registration of motor vehicles, Issue of driving licenses, Issue of plying
permissions, Tax and fee collection through cash and bank challans and control of
pollution, etc.),
• hospitals (linking various hospitals in different parts of the country to ensure better
medical services to citizens),
• education ( availability of the e-learning modules to the citizens, right to education),
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• online job portal and various customer services.

It also ensures services such as the issuing of certificates, job cards, passports, ration cards,
payments of bills, and filing taxes from the doorstep through the e-governance platform. The
main objectives of the G2C services are to ensure equitable distribution of information for all,
acceptance of citizens’ feedback, and improve welfare services.

G2G (Government to Government)

• Enables seamless interaction between various government entities.

• This kind of interaction can be between various departments and agencies within
government or between two governments like the union and state governments or
between state governments.
• The primary aim is to increase efficiency, performance and output.
• It enables government institutions to be more efficient and more effective by the use of
IT tools such as:
▪ Live fingerprints scanning and verification,
▪ Electronic entry of reports and paperwork etc.

The key areas in this type of e-governance are:

• E-Secretariat (all the valuable information on the function of the government are
interlinked throughout the departments),
• E-Police (police personnel records, criminal records etc), and
• E-Court (creating a database of all the previous cases, pending and ongoing cases)

G2B (Government to Business)

It enables the business community to interact with the government by using e-governance
tools.

The objective is to cut red-tapism which will save time and reduce operational costs.
This will also create a more transparent business environment when dealing with the
government.

The G2B initiatives help in services such as licensing, permits and revenue collection.

G2E (Government to Employee)

The G2E model refers to providing information and services from government to employee
and employee to government as well.
ICT tools help in making these interactions fast and efficient and thus increases the
satisfaction levels of employees.
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It also involves training through:

• e-learning methods;
• Consolidating the employee and
• Share of knowledge among the employees.

It has also facilitated the employee to access information regarding pay and benefit policies
and manage their profiles through online.

Advantages of e-Governance:

Following are the important advantages of e Governance:

Speed: Technology makes communication speedier. Internet, Phones and Cell Phones have
reduced the time taken in normal communication.

Cost Reduction: Paper-based communication needs lots of stationary, printers, Computers,

etc. which calls for continuous heavy expenditure. Internet and Phones make communication
cheaper, saving valuable money for the Government.

Transparency: Use of ICT makes governing process transparent. This is possible when
every piece of information of the Government is uploaded on the internet and is available for
the public to peruse. The current governing process leaves many ways to conceal the
information from the people. ICT helps the information available online, eliminating all
possibilities of concealing information.

Accountability: Once the governing process is made transparent, the Government is

automatically made accountable. Accountability is the answerability of the Government
to the people. It is the answerability for the deeds of the government and accountability makes
a responsible government.

E-government: the government is using ICT to effectively and efficiently provide services to
its citizen. Governments organize and disseminate statistical data, which is used for
decision-making. E-government allows direct participation by citizens in matters of public
interest.

Accessibility: Most government institutions and bodies have automated its services which
makes it more accessible.

Electronic signature certificate

Sec 35: Certifying authority to issue [electronic signature] Certificate.—

(1) Any person may make an application to the Certifying Authority for the issue of a 1
[electronic signature] Certificate in such form as may be prescribed by the Central Government.
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(2) Every such application shall be accompanied by such fee not exceeding twenty-five
thousand rupees as may be prescribed by the Central Government, to be paid to the Certifying
Authority: Provided that while prescribing fees under sub-section (2) different fees may be
prescribed for different classes of applicants.

(3) Every such application shall be accompanied by a certification practice statement or where
there is no such statement, a statement containing such particulars, as may be specified by
regulations.

(4) On receipt of an application under sub-section (1), the Certifying Authority may, after
consideration of the certification practice statement or the other statement under sub-section
(3) and after making such enquiries as it may deem fit, grant the 1 [electronic signature]
Certificate or for reasons to be recorded in writing, reject the application

Grant of Certificate:

On receipt of an application for the issue of an Electronic Signature Certificate, the Certifying
Authority may, after consideration of the certification practice statement and making such
enquiries as it may deem fit, grant the Electronic Signature Certificate. He may also, for reasons
to be recorded in writing, reject the application. However, no Electronic Signature Certificate
shall be granted unless the Certifying Authority is satisfied that

(a) the applicant holds the private key corresponding to the public key to be listed in the
Electronic Signature Certificate;

(b) the applicant holds a private key, which is capable of creating an electronic signature;

c) the public key to be listed in the certificate can be used to verify an electronic signature
affixed by the private key held by the applicant.

Further no application shall be rejected unless the applicant has been given a reasonable
opportunity of showing cause against the proposed rejection.

Sec 36: Representations upon issuance of Digital Signature Certificate.

A Certifying Authority while issuing a Digital Signature Certificate shall certify that—

(a) it has complied with the provisions of this Act and the rules and regulations made
thereunder;

(b) it has published the Digital Signature Certificate or otherwise made it available to such
person relying on it and the subscriber has accepted it;
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(c) the subscriber holds the private key corresponding to the public key, listed in the Digital
Signature Certificate;

[(ca) the subscriber holds a private key which is capable of creating a digital signature; (cb) the
public key to be listed in the certificate can be used to verify a digital signature affixed by the
private key held by the subscriber;]

(d) the subscriber's public key and private key constitute a functioning key pair;

(e) the information contained in the Digital Signature Certificate is accurate; and

(f) it has no knowledge of any material fact, which if it had been included in the Digital
Signature Certificate would adversely affect the reliability of the representations in clauses (a)
to (d).

Sec 37: Suspension of Digital Signature Certificate.

(1) Subject to the provisions of sub-section (2), the Certifying Authority which has issued a
Digital Signature Certificate may suspend such Digital Signature Certificate,–

(a) on receipt of a request to that effect from–

(i) the subscriber listed in the Digital Signature Certificate; or

(ii) any person duly authorised to act on behalf of that subscriber;

(b) if it is of opinion that the Digital Signature Certificate should be suspended in public
interest.

(2) A Digital Signature Certificate shall not be suspended for a period exceeding fifteen days
unless the subscriber has been given an opportunity of being heard in the matter.

(3) On suspension of a Digital Signature Certificate under this section, the Certifying Authority
shall communicate the same to the subscriber.

Sec 38: Revocation of Digital Signature Certificate.

(1) A Certifying Authority may revoke a Digital Signature Certificate issued by it–
(a) where the subscriber or any other person authorised by him makes a request to that effect;
or
(b) upon the death of the subscriber; or
(c) upon the dissolution of the firm or winding up of the company where the subscriber is a
firm or a company.
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(2) Subject to the provisions of sub-section (3) and without prejudice to the provisions of sub-
section (1), a Certifying Authority may revoke a Digital Signature Certificate which has been
issued by it at any time, if it is of opinion that–
(a) a material fact represented in the Digital Signature Certificate is false or has been concealed;
(b) a requirement for issuance of the Digital Signature Certificate was not satisfied;
(c) the Certifying Authority's private key or security system was compromised in a manner
materially affecting the Digital Signature Certificate's reliability;
(d) the subscriber has been declared insolvent or dead or where a subscriber is a firm or a
company, which has been dissolved, wound-up or otherwise ceased to exist.

(3) A Digital Signature Certificate shall not be revoked unless the subscriber has been given an
opportunity of being heard in the matter.

(4) On revocation of a Digital Signature Certificate under this section, the Certifying Authority
shall communicate the same to the subscriber.

Sec 39: Notice of suspension or revocation.

(1) Where a Digital Signature Certificate is suspended or revoked under section 37 or section
38, the Certifying Authority shall publish a notice of such suspension or revocation, as the case
may be, in the repository specified in the Digital Signature Certificate for publication of such
notice
(2) Where one or more repositories are specified, the Certifying Authority shall publish notices
of such suspension or revocation, as the case may be, in all such repositories.

Conclusion

With the advancement in technology, the usage of the digital signature in place of the
conventional signature has widely increased. The Information Technology Act, 2000 talks
widely about the concept of Digital Signature, the authorities who have been given the power
of issuing the digital signature certificate and the circumstances which require affixation of the
digital signature.
In this era of globalization, the role of e-governance is significant. E-governance is about the
use of ICT for steering the citizens and promoting the public service. It made correlations
between state and citizen, people to people, government and society. The main focus of the E-
Governance is to provide transparent, equitable, and accountable service delivery to the
citizens. The aim of e-governance facilitates and improves the quality of governance
and ensures people’s participation in the governing process
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6. Examine the development and importance of E-commerce.

Introduction

UNCITRAL (United Nations Commission International Trade Law) in the year 1996
adopted the model law on e-commerce to bring uniformity amongst the countries of the globe
regarding Cyber regulation. E-Commerce, also known as electronic commerce or internet
commerce, is an activity of buying and selling goods or services over the internet or open
networks. So, any kind of transaction (whether money, funds, or data) is considered as E-
commerce.

Meaning

E-Commerce is defined as the buying and selling of goods and services including digital
products over digital and electronic networks. Electronic commerce (E-commerce) draws on
technologies such as mobile commerce, electronic funds transfer, supply chain management,
Internet marketing, online transaction processing, electronic data interchange (EDI), inventory
management systems, and automated data collection systems.

Ecommerce, also known as electronic commerce or internet commerce, refers to the buying
and selling of goods or services using the internet, and the transfer of money and data to execute
these transactions.

Ecommerce is often used to refer to the sale of physical products online, but it can also describe
any kind of commercial transaction that is facilitated through the internet.

History of e-Commerce

E-Commerce during early period

E-Commerce began soon after Samuel Morse sent his first telegraph message in 1844, and it
expanded across the sea when another message, containing share price information from the
New York Stock Market, linked Europe and North America in 1858. By 1877, Western Union,
the Dominant Telegraph Company, moved $2.5 million worth of transactions annually among
businesses and consumers, and news companies led by Reuters sold financial and other
information to customers around the world. The telephone permitted electronic voice
transactions and greatly extended the reach of retail companies like sears, whose mail-and
telephone-order catalog helped to create genuine national firms (Gale Encyclopedia of the US
History).

In 1886, a telegraph operator managed to obtain a shipment of watches that had been refused
by the local jeweller. Using the telegraph, he sold all the watches to fellow operators and rail
road employees and then ordered more. Within a short time, he made enough money to quit his
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job and start his own catalog mail order business. The Young Man's name was Richard Sears
who founded Sears, Roebuck and Co in 1893 (Computer Desktop Encyclopedia),

E-Commerce originated in a Standard for the exchange of documents during in 1948-49.

Berline blockade and airlift various industries elaborated upon the system until the first general
Standard was published in 1975 (Britanica Concise Encyclopedia).

E-Commerce during 1970s

In 1970s, E-Commerce was used for the facilitation of commercial transactions electronically,
using technology such as Electronic Data Interchange (EDI) and Electronic Funds Transfer
(EFT). The business firms used to send their commercial documents like invoices or purchase
orders electronically. In 1979, Michael Aldrich invented 'online shopping

E-Commerce during 1980s

The following developments took place in 1980s:

In 1981, Thomson Holidays, UK is the first B2B online shopping.

In 1982, Minitel was introduced nationwide in France by France Telecom and used for online
ordering.

In 1984, Gateshed SIS/Tesco is first B2B online shopping and Mrs Snowball, 72 is the first
online home shopping.

In April 1984, Compuserve launched the Electronic Mall in the USA and Canada. It is the first
comprehensive electronic Commerce service.

In 1985, Nissan UK sells cars and finance with Credit Checking to cusotmers online from
dealers' lots.

In 1987, Swreg begins to provide software and shareware authors means to sell their products
online through an electronic Merchant account.

In the 1980s the Credit Cards, the Automated Teller Machines (ATM) and the telephone
banking started in America and other Developed Countries and became very popular. The
Credit cards, the Automated Teller Machines (ATM) and the telephone banking are also forms
of E-commerce.

E-Commerce during 1990s

In 1990, Tim Berners-Lee writes the first web browser world wide web, using a next computer.
Web browser and transformed an academic telecommunication network into a worldwide every
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man everyday communication system. The new technology has become popular under the
name of Internet or www.

In 1992, St Martin's Press published JH Snider and Terra Ziporyn's "Future Shop: How New
Technologies will change the way we shop and what we Buy".

In 1992, Terry Brownell launches first fully graphical iconic navigated Bulletin board system
online shopping using RoboBOARD/FX.

In 1994, Netscape releases the Navigator browser in October under the code name Mozilla
Pizza Hut' offers online ordering on its webpage. The first online bank opens. Attempts to offer
flower delivery and magazine subscriptions online. Adult materials also become commercially
available as do cars and bikes. 'Netscape i.o is introduced in late 1994 SSL encryption that
made transactions secure.

On Thursday 27 April 1995, the purchase of a book by Paul Stanfield, Product Manager for
CompuServe UK from W.H. Smith's shop within CompuServe's UK Shopping Centre is the
UK's first national online shopping service secure transaction. The shopping service at launch
featured W.H. Smith, Tesco Virgin/Our Price. Great Universal Stores/GUS Interflora. Disons
Retail Past Times. PC World retailers and Innovations.

In 1995, Jeff Bezos launches Amazon.com and the first commercial- free 24 hour-internet only
radio stations. Radio HK and Net Radio start broadcasting. Dell and Cisco begin to
aggressively use Internet for commercial transactions, eBay is founded by computer
programmer pierre Omidyar as Auction web.

In 1996, India MART B2B marketplace established in India.

In 1998, Electronic Postal stamps can be purchased and downloaded for printing from the web.

In 1999, Alibaba Group is established in China. Business.com sold for US $7.5 million to e-
companies, which was purchased in 1997 for US $149,000. The peer-to-peer filesharing
software napster launches. ATG stores launches to sell decorative for the home online.

Even though the Internet became popular worldwide around 1994, it took about five years to
introduce security protocols and DSL allowing continual connection to the internet. From the
1990s onwards, E-commerce has included Enterprise Resolution Planning Systems (ERPS),
data, mining and data warehousing.

E-Commerce during 2000s

In 2000, the dot-com bust.

In 2001, Alibaba.com achieved profitability in December 2001.

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In 2002, eBay acquires Paypal for $1.5 billion. Niche retail companies Wayfair and Netshops
are founded with the concept of selling products through several targeted domains, rather than
a Central portal.

In 2003, Amazon.Com posts first yearly profit.

In 2004, D Hgate.com, China's first online b2b transaction platform, is established, forcing
other b2b sites to move away from the 'yellow pages' model.

In 2005, yuval Tal found payoneer, a secure online payment distribution solution.

In 2007, Business.com acquired by R.H. Donnelley for $345 million.

In 2009, Zappos.com acquired by Amazon.com for $928 million. Retail Convergence, operator
of private sale website Ruelal.or.com acquired by GSI Commerce for $180 million, plus up to
$170 million in earn-out payments based on Performance through 2012.

E-Commerce during 2010s

In 2010, Groupon reportedly rejects a $6 billion offer from Google. Instead the group buying
websites went ahead with an IPO on Novmeber 4, 2011. It was the largest IPO since Google.

In 2011, Quidsi.com, parent company of Diapers.com, acquired by Amazon.com for $500

million in cash plus $45 million in debt and other obligations. GSI Commerce, a company
specializing in creating, developing and running online shopping sites for brick and mortar
business, acquired by eBay for $2.4 billion.

In 2012, US e-commerce and online retail sales projected to reach $226 billion, an increase of
12 percent over 2011. And, US e-commerce and online retail holiday sales reach to $33.8
billion, with increase of 13 percent.

By the end of 2000, many European and American business companies offered their services
through the World Wide Web (www). Soon thereafter it spread entire world. Since, then people
began to associate a world 'E-commerce with the ability of purchasing various goods, various
services such as the Air line reservation system, Railway Reservation System, Bus Reservation
System, e-banking, e-taxation, etc., through the internet using secure protocol and electronic
payment services.

Advantages of E-commerce

1. Electronic Commerce has revolutionized the methods of undertaking between in almost all
sectors of activity including education sector where most courses are now offered online
through distance education.
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2. Because of the global nature of cyberspace and ease of communication both traders and
individuals benefit from cross border business opportunities available online.

3. A consumer has wide range of options to choose from and large amount of updated
information at his disposal to arrive at a decision while purchasing goods and services online.

4. E-commerce provides multiple benefits to the consumers in form of availability of goods at

lower cost, wider choice and save time. People can buy goods with a click of mouse button
without money out of their house or office.

5. Online services such as banking, ticketing bill payments, hotel booking etc have been of
tremendous benefit for the consumer.

6. It is easier to obtain an item for the latest collection of your favourite clothes brand, or be
among the first to take advantage of a starting clearance campaign.

7. The domestic industry is able to procure raw materials from across borders.

8. There is significant cost reduction in the BPO, KPO, LPO sectors as vast amount of
information can be easily processed and transmitted across borders at one tenth of the cost
through outsourcing.

9. The advertising cost has also decreased as e-mail marketing and search engine optimization
techniques are useful and cost effective means as compared to television or print media.

10. For activities such as booking of air tickets, purchasing books, ordering food, participating
in auctions, formalizing business deals, the cost of operating are far lower online than in the
conventional setting.

11. The access to information at all times through online web libraries has minimal cost
implications.

12. By connecting on 'Skype' or the world phone or viber on an android enabled cellphone
people can speak with each other across different countries or even shop for goods online.

13. Certain non-private organizations also receive online donations, distance learning facilities
in care homes and other institutions and the elderly may receive pensions online through net
banking.

14. Due to Internet, E-commerce has removed the territorial barriers of the States one can
purchase any commodity from any corner of the world.
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15. The valuable information regarding markets and availability of goods and services to the
customers.

16. E-commerce functions twenty four hours in a day, seven days in a weak and hence it is
never closed.

Benefits of E-commerce or shopping online

1. Benefits to end user of shopping online: No travelling, no parking struggles, saves fuel and
parking money, no need to stand in queues for paying bills, healthier way to shop, can place
orders while travelling using m-commerce, better options and choices. There are portals which
facilitate users to compare prices and discounts available at different vendors.

2. Benefits to shop owners of shopping online: No need to invest in real estate, reduces pawn
maintaining huge inventories, casier accountancy, can collect order 24 hrs/7days in a week /
365 days, prevents stationary and staff expenses, can provide better customer service, can serve
bigger customer base and it allows them to receive payments further.

3. Social Benefits of shopping onling: prevents pollution and crowd on roads, saves energy
(fuel, electricity and manpower).

Conclusion

E-commerce is an ever developing area. With the advancement in technology and

communication, e-commerce has also gained popularity among the people of India and
worldwide. It has made e-business easy and accessible to people sitting at home. E-commerce
has a huge impact on costs, access to goods and services and increased productivity of
businesses.
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7. Discuss emergence of cyber crimes.

Introduction

In India, cyber crimes are covered by the Information Technology Act, 2000 and the Indian
Penal Code, 1860. It is the Information Technology Act, 2000, which deals with issues related
to cyber crimes and electronic commerce. However, in the year 2008, the Act was amended
and outlined the definition and punishment of cyber crime

Meaning

Cybercrime may be defined as “Any unlawful act where computer or communication device
or computer network is used to commit or facilitate the commission of a crime”.

Cyber Crime means illegal use of computers and the Internet. It is a crime committed using a
computer and internet to steal a person's identity or sell contraband or stalk victims or disrupt
operations with malevolent programs.

Cyber Crime encompasses any criminal act dealing with computers and networks (called
hacking). Additionally, Cyber Crime also includes traditional crimes conducted through the
internet. For example, hate crimes, telemarketing and internet fraud, identity theft, and credit
card account thefts are considered to be cyber-crimes when the illegal activities are committed
through the use of a computer and the internet.

Cyber-crimes are defined as "offences that are committed against individuals or groups of
individuals with a criminal motive to intentionally harm the reputation of the victim or cause
physical or mental harm to the victim directly or indirectly, using modern telecommunication
networks such as Internet (chat rooms), e-mail, noticeboards and groups, and mobile phones
(SMS/MMS).

History of Cyber Crime

The first recorded Cyber Crime took place in the year 1820. That is surprising considering the
fact that the Abacus, which is thought to be the earlist form of a computer, has been around
since 3500 B C in India, Japan and China. The era of Modern computers, however began with
the analytical engine of Charles Babbage.

In 1820, Joseph Marie Jacquard, a textile manufacturer in France produced the new loom and
his employees feared of losing their jobs. They committed acts of sabotage to discourage
Jacquard from further use of the new technology. This is first recorded cyber crime.

Today computers have come a long way with neural networks and nano- computing. In the use
of computers, Cyber Crime became a common activity. Cyber Crime can involve Criminal
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activities that are traditional in nature, such as theft, fraud, forgery, defamation and mischief.
The absence of computers has also given birth to a gamut of new age crimes such as hacking,
web defacement, cyber stalking, web jacking etc. Cyber crime is nothing but unlawful acts
wherein the computer is either a tool or a target or both.'

Global International efforts by the United Nation regarding Cyber Crimes

The U.N. which is a forum of 191 member States played an active role in the field of Cyber
security protection and cyber crime prevention.

In 1985, General Assembly of the U.N. in its Resolution 40/71 of 11 December called upon
governments and international organization to take action in conformity with the
recommendation of the commission on the legal value of computer records of 1985, in order
to ensure legal security in the background of the broadest possible use of information
processing in international transactions.

In 1990, the General Assembly of the UN adopted the Guidelines Concerning Computerized
Personal Data Files. It proposed to take appropriate measures to protect the files against both
natural and artificial dangers. The guidelines extended the protection of governmental
international organizations (Part B).

"The International Review of Criminal Policy, United Nations Mannual on the prevention and
control of Computer - related Crime" called for further international work and presented a
proper statement of the problem. It stated that at the international level, further activities could
be undertaken, including harmonizing substantive law, and establishing a jurisdictional base.

The Background Paper for the workshop on Crimes relating to the Computer Network at the
Tenth UN Congress on Prevention of Crime and Treatment of offenders proposed two levels
of definition of cybercrime. In the narrow sense, that is, the Strict Computer Crime, had to refer
to "any illegal behaviour directed by means of electronic operations that targets the security of
computer sytems and the data processed by them.' In the broad sense, that is, Computer-related
crime denoted "any illegal behaviour committed by means of, or in relation to, a computer
system or network, including such crimes as illegal possession offering or distribution
information by means of a Computer system or network".

The UN General Assembly has endorsed several resolutions dealing with its desire to witness
progress regarding Cyber Crimes

The UN General Assembly invited States to consider the measures in their endeavor to fight
the criminal misuse of information systems, and decided to maintain the question of the
Criminal misuse of information technologies on the agenda of its future session.

In Resolution 56/121 (2001), the UN General Assembly invited States to consider the work
and achievements of the commission on Crime prevention and Criminal Justice and of their
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International and regional organisations when developing national law policy and practice to
prevent Cyber Crime. The resolution emphasized the value of the measures set forth in
Resolution 55/63 (2000) and again invited States to take them into account in their efforts to
combat the Criminal misuse of information technologies. However, the General Assembly
decided to postpone consideration of this subject, pending work considered in the plan of action
against high technology crime of the commission on crime prevention and criminal Justice.

The Consensus on Cyber Crime in the forum of UN remains preliminary. In 2010 the UN
rejected the request of Russia to hold a UN Convention on Cyber Crimes, stating that there is
no need for a convention on Cyber crimes as there is one namely 'Budapest Convention on
Cyber Crime 2001' by the Council of EU.

Though the UN has not taken much interest in Cyber Crimes, the International Criminal Law
Network (ICLN) organised a Cyber Crime Conference in the Hague on December 13 of 2012.
Judge Stein Schjoldberg introduced a proposal for an International Criminal Court or Tribunal
for Cyber Space.

Budapest Convention on Cyber Crime, 2001 adopted by the Committee of Ministries of

the Council of Europe on 8 November 2001

The Budapest Convention on Cyber Crime was opened for signature at Budapest (Hungary) on
23 November 2001 and it entered into force on 1st July 2004. It was the first ever international
treaty on Criminal offences committed against or with the help of computer networks such as
the internet. As on 28 October 2010, 30 States had signed, ratified and acceded to the
convention, whisk a further 16 States had signed the convention but not ratified. The
convention was signed by Canada, Japan, the USA and the Republic of South Africa on 23
November 2001. The US Senate ratified the convention unanimously in August 2006 and
became the 16th Nation to ratify the convention. The Convention entered into force in the USA
on January 1, 2007. Further accessions by other non-European States are planned. India is still
not a signatory to the Cyber Crime Convention and the bilateral extradition treaties, which it
has signed with around 50 countries so far, do not mention 'cyber crime' as extraditable
offences. But it may not deter the Indian Government from granting extradition.

On March 2006, the Additional Protocol to the Convention on Cyber Crime came into force.
Those States that have ratified the additional protocol are required to criminalize, the
dissemination of racist and xenophobic material through computer systems, as well as of racist
and xenophobic motivated threats and insults.

The Convention contains 48 Articles in total and the Convention deals in particular with
offences related to infringement of coyright, computer related fraud, child pornography and
offences connected with network security. The Convention includes a list of crimes that each
signatory State must transport into their own law. The following offences are defined by the
convention: illegal interception, data interference, system interference, misuse of devices,
computer related forgery, computer related fraud, offences related to child pornography and
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offences related to copyright and neighbouring rights. In addition, the convention contains a
provision on a specific type of transborder access to stored computer data which does not
require mutual assistance (with consent or where publicly available) and provides for the
setting up of a 24/7 network for ensuring speedy assistance among the Signatory parties.

Its main objective is to pursue a common criminal policy aimed at the protection of society
against cybercrime, especially by adopting appropriate legislation and fostering international
cooperation.

The convention aims principally at: harmonising the domestic criminal substantive law
elements of offences and connected provisions in the area of Cyber-crime; providing for
domestic criminal procedural law powers necessary for the investigation and prosecution of
such offences as well as other offences committed by means of a computer sytem or evidence
in relation to which is in electronic form; setting up a tax and effective regime of international
co- operation.

It is significant to note that almost every kind of Cyber Crimes have been made extraditable
under the Convention. Moreover the Convention has the force of International law behind it.
In other words, to investigate, search, seize, arrest, prosecute and extradite Cyber Criminals for
Cyber Crimes, a proper legal frame work is already in place. The main objective of the
Convention has been set out in the preamble

Conclusion

With the advancement in technology, disturbing elements are appearing on the dark web that
is disturbing. The Internet has become a tool of evil deeds that are exploited by intelligent
people for evil motives and sometimes for financial gain. Thus, at this point in time, cyber laws
come into the picture and are important for every citizen. Due to the fact that cyberspace is an
extremely difficult territory to deal with, some activities are classified as grey activities that
cannot be governed by law.
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6 MARKS

1. Write a note on cyber crimes. (2)

Refer 10 marks questions 3 & 6

2. Write a note on protection of computer software.

Refer 6 marks 8,9

3. Write a note on Internet domain names (2)

Or
Write a note on Domain name

A domain name is the address of a website that is intended to be easily identifiable and easily
to remember, such as 'yahoo.com' or 'wipo.int. These user-friendly addresses for websites help
connect computers and people on the internet.

A domain name is an identification string that defines a realm of administrative autonomy,

authority or control on the internet. Domain names are formed by the rules and procedures of
the Domain Name System (DNS) Technically, any name registered in the DNS is a domain
name.

Domain names are used to identify one or more internet protocol addresses (IP addresses) such
as a personal computer used to access the internet, a server computer hosting a website, or
website itself or any other service communicated via the internet.

The term domain name describes any alphanumeric designation which is registered with or
assigned by any domain name registrar, domain name registry, or other domain name
registration authority as part of an electronic address on the internet.

Domain names are organised in subordinate levels (subdomains) of the Domain Name System
(DNS) root domain, which is nameless. The first level set of domain names are the Top-Level
Domains (TLDs), including the generic (or global) Top Level Domains (gTLDs) such as the
prominent domains and the Country Code Top-Level Domains (CCTLDs). Below these top-
level domains in the DNS hierarchy and the second level and third level domain names that are
typically open for reservation by end users who wish to connect local area networks to the
internet, create other public accessible internet resources or run websites.

The registration of these domain names is usually administered by domain name registrars who
sell their services to the public.
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A Fully Qualified Domain Name (FQDN) is a domain name with no omitted parts, completely
specifying its hierarchy in the DNS. Although labels in the Domain name system are cose-
insensitive, domain names are usually written in lowercase,

Domain names are often confused with electronic mail (e-mail) addresses and Uniform
Resource Locators (URLs). A domain name is actually a part of each of these. For example, in
the e-mail address 'Sam@mq.edu.au' the domain name is 'mq.edu.au".

Types of Domain Name

1.Top-level Domain

At the top, there are generic top-level domains (g TLDs). Top-level domains form the DNS
root zone of the hierarchical Domain Name System. Every domain name ends in a top-level or
first level domain label from the beginning the following:

generic top-level domains are in use:

<.com> for commercial purposes;

<.edu> for educational institutions;

<.org> for non-profit organisations;

<.net> for network organisations;

<.gov > for Government agencies;

<.mil> for military users;

<int> for international organisations

2.Country-Code Top Level Domains (CCTLDs)

As of october 2009, there are 250 two-letter country-code top level domains which indicate the
country where domain name has been registered. Some of them are:

<in> for India

<de> for Germany

fr for France
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<ca> for Canada

<UK> for Great Britian (The United Kingdom)

The CCTLDs are administered by the respective governments or private organisations. The
Country Code Top Level Domains are listed in the International Standards Organisation
document ISO 3166.

3.Second-Level and Lower Level Domains

Below the top-level domains in the domain name hierarchy are the Second-

Level Domain (SLD) names. These are names directly to the left of other top- level domains
such as .com,. net etc.

Second -level domain names are often created based on the name of a company (e.g., hotmail,
gmail, rediffmail etc.)

Below these levels, the next domain name component has been used to designate a particular
host server in "www.wikipedia.org', 'www' is a world wide web server.

The Domain Name System (DNS)

The Domain Name System (DNS) is the System of global navigation within the Internet. Each
page of information is given an 'address' called a Uniform Resource Location (URL) which,
like the address of every home, office or shop, must be unique if the user is to locate it. This
address is made up of several sections. To illustrate how the DNS works, let us look at a typical
URL.

http://www.oup.co.uk/intetec/This is the homepage of the International Journal of Law and

Information Technology at Oxford University Press

Purpose of domain name

Domain names serve as humanly memorable names for Internet participants, like computers,
networks, and services. A domain name represents an Internet Protocol (IP) resource.

Domain names are also used as simple identification labels to indicate ownership or control of
a resource. Such examples are the realm identifiers used in the Session Initiation Protocol (SIP),
the Domain keys used to variety. DNS domains in e-mail systems, and in many other Uniform
Resource Identifiers (URIS)

An important function of domain names is to provide easily recognizable and memorizable

names to numerically addressed Internet resource.
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Domain names are used to establish a unique identity. Organizations can choose a domain
name that corresponds to their name, helping Internet users to reach them easily. For instance
IBM's website is at ibm.com and microsoft is at microsoft.com.

Genetic domain names increase popularity. A genetic domain name may sometimes define an
entire category of business that a company is involved in, rather than being the name of the
company. Some examples of generic names include 'books.com', 'music.com', 'travel.com' and
'art.com'.

Domain names are often referred to simply as 'domains' and domain name registrants are
frequently to as 'domain owners', although domain name registration with registrar does not
confer any legal ownership of the domain name, only an exclusive right of use.

The use of domain names in commerce may subject them to trademark law. In 2010 the number
of active domains reached 196 million.

Domain Name Registration in India

The registration of names in India is carried out through the following organisations:

The National Internet Exchange of India (NIXI) created the I.N. Registry, an autonomous body
with the primary responsibility for managing the .IN Country Code Top-Level Domains
(INCCTLD) and ensuring its operational stability, reliability, and security. The IN Registry
formulated new polices for the registration and administration of IN domain names. Owners of
registered Indian trademarks or service marks were to be given the opportunity to apply for .IN
domain names befoe the general public. This was the Sunrise policy which give preference to
Indian citizens and companies over entities from abroad.

Red Cap Domains.com offers domain name registration or renewal of domain name extensions
like.com/.net/.org/.co.in/.in/.net.in/.org.in. It offers domain name registration/renewal at a cost
of Rs.495 per year and for in domains the per year cost is Rs.750. A domain can be booked for
minimum period of one year and a maximum of 10 years. Once successfully registered nobody
can register the same domain name, but it still takes 1-2 days for it to show up in the WHO 15
database.

Domain registration India and web Housing: It provides an uptime guarantee of 99.9% and you
can be assured that signing up for web hosting plans, web hosting Reseller Hosting Plans is
backed by 100% risk free 14 Days money back guarantee. All the web hosting plans, Reseller
hosting plans of Domain registration india and web housing are hosted in the worldclass Intel
(R), Xeon (R) servers and they are co-located at Premium Data Centers.
 155

4. Write a note on E-contracts.

Refer 10 marks question 2

5. Write a note on 'Certifying Authority'.

Introduction:

The IT Act accommodates the Controller of Certifying Authorities(CCA) to permit and direct
the working of Certifying Authorities. The Certifying Authorities (CAs) issue computerized
signature testaments for electronic confirmation of clients.

Definition

Sec 2(1)(g) Certifying Authority‖ means a person who has been granted a licence to issue a
[electronic signature] Certificate under section 24;

A certifying Authority is a trusted body either public or private that ascertains the identity of
the application of Digital signature certificate and certifies that the public key of a public-
private key pair used to create digital signature belongs to that person.

Who can be a Certifying Authority?

Section 21 of the IT Act, 2000 provides that:

(1) Any person may make an application, to the Controller, for a licence to issue Electronic
Signature Certificates.

(2) No licence shall be issued unless the applicant fulfills such requirements with respect to
qualification, expertise, manpower, financial resources and other infrastructure facilities,
which are necessary to issue Electronic Signature Certificates as may be prescribed by the
Central Government.

(3) A licence granted under this section shall:

(a) be valid for such period as may be prescribed by the Central Government;

(b) not be transferable or heritable;

(c) be subject to such terms and conditions as may be specified by the regulations
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Licensing of Certifying Authorities (Rule 8)

Rule 8 of the Information Technology (Certifying Authorities) Rules, 2000 provides that:

(1) The following persons may apply for grant of a licence to issue Digital Signature
Certificates, namely:

(a) an individual, being a citizen of India and having a capital of five crores of rupees or more
in his business or profession;

(b) a company having:

(i) paid-up capital of not less than five crores of rupees; and

(ii) net worth of not less than fifty crores of rupees:

(c) a firm having:

(i) capital subscribed by all partners of not less than five crores of rupees; and

(ii) net worth of not less than fifty crores of rupees:

(d) Central Government or a State Government or any of the Ministries or Departments,

Agencies or Authorities of such Governments.

Submission of Application for Licensing of Certifying Authority (Rule 10)

Rule 10 of the IT (Certifying Authorities) Rules, 2000 provides that:

Every application for a licensed Certifying Authority shall be made to the Controller:

(i) in the form given at Schedule-1; and

(ii) in such manner as the Controller may, from time to time, determine, supported by such
documents and information as the Controller may require.

Role or obligations or Duties of Certifying Authorities

1.Certifying Authority to follow certain procedure (Sec. 30)

Every Certifying Authority shall:

(a) make use of hardware, software, and procedures that are secure from intrusion and misuse:
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(b) provide a reasonable level of reliability in its services which are reasonably suited to the
performance of intended functions;

(c) adhere to security procedures to ensure that the secrecy and privacy of the electronic
signatures are assured;

(ca) be the repository of all Electronic Signature Certificates issued under this Act;

(cb) publish information regarding its practices, Electronic Signature Certificates and current
status of such certificates; and.

(d) observe such other standards as may be specified by regulations.

2.Certifying Authority to ensure compliance of the Act etc. (Sec. 31)

Every Certifying Authority shall ensure that every person employed or otherwise engaged by
it complies, in the course of his employment or engagement, with the provisions of this Act,
rules, regulations and orders made thereunder.

3.Display of licence (Sec. 32)

Every Certifying Authority shall display its licence at a conspicuous place of the premises in
which it carries on its business.

4.Surrender of licence (Sec. 33)

Every Certifying Authority whose licence is suspended or revoked shall immediately after such
suspension or revocation, surrender the licence to the Controller.

5.Disclosure (Sec. 34)

(1) Every Certifying Authority shall disclose:

(a) its Electronic Signature Certificate

(b) any relevant certification practice statement

(c) notice of the revocation or suspension of its Certifying Authority certificate

(d) any other fact that materially and adversely affects either the reliability of a Electronic
Signature Certificate, which that Authority has issued, or the Authority's ability to perform its
services.
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6.Certifying Authority has to issue electronic signature (Sec. 35)

Any person may make an application to the Certifying Authority for the issue of a Electronic
Signature Certificate in such form as may be prescribed by the Central Government.

On receipt of an application the Certifying Authority may, after consideration of the

certification practice statement and after making such enquiries as it may deem fit, grant the
Electronic Signature Certificate or reject the application

7.Representations to be made by the certifying Authorities upon issuance of Digital

Signature Certificate (Sec. 36)

A Certifying Authority while issuing a Digital Signature Certificate shall certify that:

(a) it has complied with the provisions of this Act and the rules and regulations made
thereunder;

(b) it has published the Digital Signature Certificate or otherwise made it available to such
person relying on it and the subscriber has accepted it;

(c) the subscriber holds the private key corresponding to the public key, listed in the Digital
Signature Certificate;

(ca) the subscriber holds a private key which is capable of creating a digital signature:

(cb) the public key to be listed in the certificate can be used to verify a digital signature affixed
by the private key held by the subscriber;

(d) the subscriber's public key and private key constitute a functioning key pair,

(e) the information contained in the Digital Signature Certificate is accurate; and

(f) it has no knowledge of any material fact, which if it had been included in the Digital
Signature Certificate would adversely affect the reliability of the representations made in
clauses (a) to (d).

8.Suspension of Digital Signature Certificate (Sec. 37)

The Certifying Authority which has issued a Digital Signature Certificate may suspend such
Digital Signature Certificate:

(a) on receipt of a request to that effect from:

(i) the subscriber listed in the Digital Signature Certificate; or

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(ii) any person duly authorised to act on behalf of that subscriber;

(b) if it is of opinion that the Digital Signature Certificate should be suspended in public
interest.

9.Revocation of Digital Signature Certificate (Sec. 38)

(1) A Certifying Authority may revoke a Digital Signature Certificate issued

(a) where the subscriber or any other person authorised by him makes a request to that
effect; or

(b) upon the death of the subscriber; or

(c) upon the dissolution of the firm or winding up of the company where the subscriber is a
firm or a company.

(2) a Certifying Authority may revoke a Digital Signature Certificate which has been issued by
it at any time, if it is of opinion that:

(a) a material fact represented in the Digital Signature Certificate is false or has been
concealed:

(b) a requirement for issuance of the Digital Signature Certificate was not satisfied;

(c) the Certifying Authority's private key or security system was compromised in a
manner materially affecting the Digital Signature Certificate's reliability;

(d) the subscriber has been declared insolvent or dead or where a subscriber is a firm
or a company, which has been dissolved, wound-up or otherwiss ceased to exist.

10.Notice of suspension or revocation (Sec. 39)

Where a Digital Signature Certificate is suspended or revoked under Section 37 or Section 38,
the Certifying Authority shall publish a notice of such suspension or revocation in the
repository specified in the Digital Signature Certificate for publication of such notice.

11.Archival of Digital Signature Certificate (Rule 27)

Rule 27 of the IT (Certifying Authorities) Rules, 2000 provides that

A Certifying Authority shall archive:

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(a) applications for issue of Digital Signature Certificates;

(b) registration and verification documents of generated Digital Signature Certificates;

(c) Digital Signature Certificates;

(d) notices of suspension;

(e) information of suspended Digital Signature Certificates:

(f) information of revoked Digital Signature Certificates;

(g) expired Digital Signature Certificates,

for a minimum period of seven years or for a period in accordance with legal requirement.

Conclusion:

An entity or individual who needs a digitalized testament can demand one from an
authentication authority; when the endorsement authority confirms the candidate’s character,
it creates an advanced declaration for the candidate and carefully signs that authentication with
the endorsement authority’s private key.
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6. Write a note on Data protection in cyberspace (2)

Introduction

With the beginning of the 21st century, there has been a sharp increase in the development of
technology, which subsequently has become an integral part of human life. Today, these
technologies have connected to the day to day life of a human being in such a way that, these
technologies holds important data related to a user. That’s why data protection has become so
relevant in safeguarding the interest of an individual.

Meaning

Data means all information and materials developed and obtained in the performance of the
services, including survey plans, charts, recordings (video and/or sound), pictures, curricula,
graphic representations, computer programs, and printouts, notes, finished or unfinished
documents which can be used to determine the future of the entity or the individual.

Cyber Space is "The electronic medium of computer networks, in which online communication
takes place.

Cyberspace refers to the global network of independent information technology infrastructures,

telecommunications networks and computer processing systems in which on line
communication takes place.

Sec 43A: Compensation for failure to protect data

Where a body corporate, possessing, dealing or handling any sensitive personal data or
information in a computer resource which it owns, controls or operates, is negligent in
implementing and maintaining reasonable security practices and procedures and thereby causes
wrongful loss or wrongful gain to any person, such body corporate shall be liable to pay
damages by way of compensation to the person so affected.

Information Technology (Reasonable Security Practices and Procedures and Sensitive

Personal Data or Information) Rules, 2011

deals with the protection of “Sensitive personal data or information of a person”, which
includes the personal information relating to:
• Passwords;
• Financial information such as bank account or credit or debit card or other payment
instrument details;
• Sexual orientation;
• Medical records and history; and
• Biometric information.
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Under section 72A of the Information Technology Act, 2000 [4], disclosure of information,
knowingly and intentionally, without the consent of the person concerned and in breach of the
lawful contract has been also made punishable with imprisonment for a term extending to three
years and fine extending to Rs 5,00,000.

Under Section 69 of the Act[5], which is an exception to the general rule of maintenance of
privacy and secrecy of the information, provides that where the Government is satisfied that it
is necessary for the interest of:
• the sovereignty or integrity of India,
• defence of India,
• security of the State,
• friendly relations with foreign States,
• public order,
• for preventing incitement to the commission of any cognizable offence relating to
above, or
• for the investigation of any offence.

Penalty for the Breach of Confidentiality and Privacy under the act

Section 72 of the Information Technology act, 2000 doesn’t specify the provision relating to
the breach of privacy by the data processor but talks about a circumstance under which any
person who, in pursuance of any of the powers conferred under the IT Act Rules or Regulations
made thereunder, has secured access to any electronic record, book, register, correspondence,
information, document or other material without the consent of the person concerned, discloses
such material to any other person, such person shall be punishable with imprisonment for a
term which may extend to two years, or with fine which may extend to Rs 1,00,000 or with
both.

Key principles of data protection

Data minimization

The purpose of the principle is to focus on the collection of the required data alone and disallow
any such gathering if it has no purpose to serve. The reason behind this is that any unnecessary
data increases potential societal risks and might breach an individual’s privacy. This principle
tries to strengthen the trust and faith posed by people in organisations that collect their personal
data.

Valid consent

For the collection of private data by any person to be legit, it must be accompanied by a valid
and express consent. The user can only give valid consent when they are not kept in the dark
 163

about the data collection, their usage, their rights, etc. Once the relevant information is given
to them, only then can the data principles offer their explicit consent for any purpose
It means that every individual has the power to select if they wish to share their information;
their inaction doesn’t substitute for explicit consent. This promotes proper transparency
between the concerned parties and allows users to make well-informed decisions about their
information.

Lawful data collection

This principle states that the purpose of data collection should be lawful and fair. Whatever the
reason for data collection, it should be legit and not contrary to the law. The collection should
not result in discrimination or any harm or injury to individuals. This principle also finds place
in the Indian privacy law under Sections 4 and 7 of the DPDP Act. The Section explains that
a lawful purpose means any purpose that’s not expressly forbidden by law.

Accuracy

The collected data should also be accurate and up to date. The data controller should make an
effort to ascertain that the data collected, if inaccurate, must be corrected with regard to the
purpose for which the data was collected. The data controller should take active measures to
ensure that the information isn’t only correct but also complete and reliable. Section 8 of the
DPDP Act also states a similar principle. It states that the Data Fiduciary should make
reasonable efforts to ensure its completeness, accuracy and constancy.

Limitations on the storage of the data

This principle makes sure that the data is collected only for a limited duration and isn’t kept
for infinity. The data should be gathered, stored for minimum time and later disposed of safely.
The data should not be kept for a time that’s longer than necessary so once the purpose for
which the data was collected is fulfilled, the data should be accordingly disposed of. The
principle of data retention can be seen in Section 8 of the DPDP Act as well. It was mentioned
that the Data Fiduciary shall delete the retained data when the consent for the same is
withdrawn or when it serves the purpose for which it was collected.

Confidentiality

Confidentiality is considered one of the most vital principles governing data protection. It states
that the personal data should be collected, stored and transferred in a manner that is confidential
and prevents any unauthorised access. the Data Collector must maintain the security of the
storage system. Using proper encryption, access and storage systems are major players in
maintaining confidentiality. it also ensures that the transfer of the data is secure and protected.
A similar provision can be seen in Section 8 of the DPDP Act as well, which states a bunch of
general obligations of the Data Fiduciary which are detailed below.
 164

Accountability
It refers to the obligation on the data collectors to establish a robust framework for data
collection that not only outlines their receptibilities but also a system for grievance redressal.
It mandates the appointing of data protection officers, conducting data protection assessments,
and doing proper monitoring and auditing of the processing activities. All of these additional
obligations of a data fiduciary can be noticed in Section 10 of the DPDP Act. Where the
fiduciaries are expected to appoint data protection officers and independent data auditors,
undertake data protection impact assessments, periodic audits and other measures.

International Law relating to data protection and Privacy

The United Nations Commission on International Trade and Development (UNCITAD)

adopted the Model Law on Electronic commerce in 1996. The resolution was carried in the
General Assembly of the UN on 30-1-1997 and it was expected from all Nations to enact laws
relating to electronic commerce for equal legal treatment of users of electronic
communications. Accordingly all nations.

National Law relating to violation of Privacy

Privacy and Constitution of India

Art 21 provides for the Right to life and personal liberty which includes Right to privacy.

The judicial pronouncements of the Supreme Court provide the basic resources for the purposes
and the content of the right of privacy.

Rajgopal v. State of Tamil Nadu

the court has observed that "A citizen has a right to safeguard the privacy of his own, his family,
marriage or procreation, motherhood and child bearing and education among other matters.
None can publish anything concerning the above matters without his consent whether truthful
or otherwise and whether laudatory or otherwise. It he does so, he would be violating the right
to privacy of the person concerned and would be liable in action for damages"

People's Union for Civil Liberties v. Union of India

it has been held telephone tapping as violation of privacy right of a citizen which is protected
under article 21 and also covered by article 19(1) (a) of the Constitution of India.

Kharak Singh v. State of UP

the court has held that the domiciliary visit at night of Regulation 236 of UP Police Regulations
as violence of article 21 and strike down the provisions as unconstitutional in view of the fact
 165

that Article 21 of the Constitution of India guarantees the right to privacy as a fundamental
right.
Privacy Protection under Information Technology Act 2000

Punishment for violation of Privacy (Sec 66E)

Whoever, intentionally or knowingly captures, publishes or transmits the image of a private

area of any person without his or her consent, under circumstances violating the privacy of that
person, shall be punished with imprisonment which may extend to three years or with fine not
exceeding two lakh rupees, or with both.

Penalty for Breach of Confidentiality and Privacy (Sec 72)

Save as otherwise provided in this Act or any other law for the time being in force, if any person
who, in pursuance of any of the powers conferred under this Act, rules or regulations made
thereunder, has secured access to any electronic record, book, register, correspondence,
information, document or other material without the consent of the person concerned discloses
such electronic record, book, register, correspondence, information, document or other material
to any other person shall be punished with imprisonment for a term which may extend to two
years, or with fine which may extend to one lakh rupees, or with both.

Punishment for publishing or transmitting obscene material in electronic form (Sec. 67)

Whoever publishes or transmits or causes to be published or transmitted in the electronic form,

any material which is lascivious or appeals to the prurient interest or if its effect is such as to
tend to deprave and corrupt persons who are likely, having regard to all relevant circumstances,
to read, see or hear the matter contained or embodied in it, shall be punished on first conviction
with imprisonment of either description for a term which may extend to three years and with
fine which may extend to five lakh rupees and in the event of second or subsequent conviction
with imprisonment of either description of a term which may extend to five years and also with
fine which may extend to ten lakh rupees.

Punishment for publishing or transmitting of material containing sexually explicit act

etc., in electronic form (Sec. 67A)

Whoever publishes or transmits or causes to be published or transmitted in the electronic form

any material which contains sexually explicit act or conduct shall be punished on first
conviction with imprisonment of either description for a term which may extend to five years
and with fine which may extend to ten lakh rupees and in the event of second or subsequent
conviction with imprisonment of either description for a term which may extend to seven years
and also with fine which may extend to ten lakh rupees.
 166

Punishment for publishing or transmitting of material depicting children in sexually

explicit act etc., in electronic form (Sec.67B)

(a) publishes or transmits or causes to be published or transmitted material in any electronic

form which depicts children engaged in sexually explicit act or conduct; or

(b) creates text digital images, collects, seeks, browses, downloads, advertises, promotes,
exchanges or distributes material in any electronic form depicting children in obscene or
indecent or sexually explicit manner; or

(c) cultivates, entices or induces children to online relationship with one or more children for
and on sexually explicit act or in a manner that may offend a reasonable adult on the computer
resource; or

(d) facilitates abusing children online, or

(e) records in any electronic form own abuse or that of others pertaining to sexually explicit act
with children

shall be punished on first conviction with imprisonment of either description for a term which
may extend to five years and with fine which may extend to ten lakh rupees and in the event of
second or subsequent conviction with imprisonment of either description for a term which may
extend to seven years and also with fine which may extend to ten lakh rupees:

Conclusion

India is an economy that’s growing spontaneously and with that growth, the importance of our
sensitive data has also been recognised. The introduction of strong data privacy laws in India
has recently assumed more significance after the Puttaswamy decision, which held that the
right to privacy is indeed a fundamental right.
 167

7. Internet service provider.

Introduction

With the advent of the internet, there has become a parallel world in cyberspace where people
connect, relate and communicate. The world of cyberspace is driven by data, data that is
available to publish, use and disposal of the internet. As the internet and digital consumption
advanced through time, it became more and more crucial to bring in mechanisms to check and
control the authenticity, security and privacy of data.

Definition

Sec 2(1)(w) of the IT Act,2000 ―intermediary, with respect to any particular electronic
records, means any person who on behalf of another person receives, stores or transmits that
record or provides any service with respect to that record and includes telecom service
providers, network service providers, internet service providers, web-hosting service providers,
search engines, online payment sites, online-auction sites, online-market places and cyber
cafes.

Sec 67C: Preservation and retention of information by intermediaries.

(1) Intermediary shall preserve and retain such information as may be specified for such
duration and in such manner and format as the Central Government may prescribe.

(2) any intermediary who intentionally or knowingly contravenes the provisions of sub-section
(1) shall be punished with an imprisonment for a term which may extend to three years and
also be liable to fine.]

Sec 69(3): The subscriber or intermediary or any person in-charge of the computer resource
shall, when called upon by any agency referred to in sub-section (1), extend all facilities and
technical assistance to–
(a) provide access to or secure access to the computer resource generating, transmitting,
receiving or storing such information; or
(b) intercept, monitor, or decrypt the information, as the case may be; or
(c) provide information stored in computer resource.

Sec 69(4): The subscriber or intermediary or any person who fails to assist the agency referred
to in sub-section (3) shall be punished with imprisonment for a term which may extend to seven
years and shall also be liable to fine.
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Internet Service Provider's Liability for Copyright infringement in India Law

As per Section 79(1)(c) of the Information Technology Act, 2000 and Rule 3 clause d of the
Intermediary Guidelines Rules, 2011 the Intermediary shall observe due diligence while
discharging his duties that there is no infringement of patent, trademark, copyright or other
proprietary rights.

Section 52(1)(c) of the Copyright Act, 1957 highlights that transient or incidental storage of a
work or a performance for the purpose of providing electronic links, access or integration,
where such links, access or integration has not been expressly prohibited by the right holder
under the purview of fair use of copyright.

However, the proviso to the section expounds that if the person responsible for the storage of
the copy has received a written complaint from the owner of copyright in the work, complaining
that such transient or incidental storage is an infringement, such person responsible for the
storage shall refrain from facilitating such access for a period of twenty-one days or till he
receives an order from the competent court refraining from facilitating access and in case no
such order is received before the expiry of such period of twenty-one days, he may continue to
provide the facility of such access.

Therefore, the safe harbour provided to intermediaries is pierced on receipt of information that
certain infringing / pirated material is available on its website.

Conclusion

India needs a more robust and comprehensive law extending the liability of ISPs. The ambitious
and rather loose ended statutes governing the scenario of copyright infringement pose a
challenging question for the genuine owners who, with the increase of the digital age, are
contributing heavily in terms of cyber content.
 169

8. Software patent.

Software Patents in India

Innovation is the nudge behind any modern economy’s rise. Inventions, the bedrock of
innovation, are focused on productivity. An incentive to invent creates higher productivity,
leading to increased goods and services in the market, and ultimately contributing to economic
growth.

Thus, it becomes important to protect this creation of the mind. The system of patents enables
inventors to protect and control their rights over the use of their inventions.

Today, the world has become increasingly digital. A vast number of things used by us run on
coded software and computer technology. Information Technology (IT) has become a large,
in-demand industrial sector worldwide. It would, thus, make perfect sense to protect the
interests of inventors who contribute to this field through the development of computer
technology, computer programmes, and software.

While Indian law grants protection to inventive technology and software through the use of
copyright and patent law, here we shall focus on the protection of computer software under the
Indian patent law.

The Indian Patents Act 1970 defines an ‘invention’ under Section 2(i)(j) as a new product or
process capable of industrial application and involving an inventive step. Thus, any product or
process that seeks to be patented must showcase these three requirements for patent
registration, including computer software.

What are Software Patents?

It is important to understand what software patents are before we try to understand why
software patents are not easily granted under Indian law.
As the word is not defined in any Indian statute, the dictionary meaning of the word is referred
to by jurists. In simple terms, it is the program used by a computer for a particular work. A
software patent is, thus, a patent on such a computer programme.

However, the problem of patenting software arises from Section 3 of the Patents Act. Section
3 deals with categorizing what cannot be patentable in India. Specifically, Section 3 (k) of the
Act of 1970 discusses excluding from the meaning of ‘inventions’ a mathematical or business
method or a computer program per se or algorithms.

While Section 3(k) makes it clear that computer programmes (and, by extension, software)
cannot be patented, the words ‘per se’, added through the Patents (Amendment) Act, 2002,
allow to accommodate certain computer programmes and software as registrable patents.
 170

The intention behind adding the words ‘per se’ can be found in the Joint Parliamentary
Committee’s views when they introduced the Patents (Amendment) Act of 2002. According to
the Committee, the intention was to provide for patents to those computer programmes which
can include certain other things which are ancillary to or developed upon such a computer
programme, thus making them eligible to be called patentable inventions.

Guidelines for computer-related inventions

However, ambiguity concerning this section has always existed, even after the various attempts
by the Indian Patent Office to explain what is excluded through the application of the section.
In 2015, the Patent Office passed a test to determine which computer programmes can be
patented. This was the ‘subject matter’ test, requiring the computer programme to be either
involved with novel hardware or create a technical effect changing the functionality or
performance of the hardware.

The 2017 guidelines by the Patent Office, however, did away with this test. While the test only
served to limit the number of possible applications that would be granted software patents, the
revocation of the test brought the Patent Office back to interpret the words ‘per se’ to determine
which software patent applications can be granted registration. Thus, no clear and unambiguous
legislative basis exists on which software can be granted patents, and every such patent
application has to be heard on a case-to-case basis.

How can Software be Patented in India?

Section 3(k) definitely sets in place a hurdle to obtaining patents for software. The ambiguous
wordings and the failed attempts at explaining the Section through the Patent Office’s various
guidelines create a murky road to software patents. Yet, the various judgments of the Indian
courts have highlighted a few points to be kept in mind when filing for a successful software
patent.

(a) Software is not patentable in itself

If there is clarity regarding any point relating to Section 3(k), it is that computer programmes
or software are not patentable by themselves. This means that the software to be patented must
show its connection with things ancillary to the invention, such as with a hardware
component, or perhaps illustrate a technical effect created due to its application.

Telefonktiebolaget LM Ericsson (Publ) v. Lava International Ltd.,

which enunciated the non-application of Section 3(k).

The court held that Section 3(k) would come into force when an abstract formula such as an
algorithm, which is purely theoretical in nature, is applied to be patented. However, when an
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algorithm is utilized by hardware components or creates a technological or practical effect to

result in a physical realization, such an algorithm can be patented, and the bar under Section
3(k) would not apply. Moreover, the court also stated that the mere mention of an algorithm in
a patent document should not be inferred to mean that the invention is nothing more than just
that algorithm.

Telefonktiebolaget LM Ericsson (Publ) v. Intex Technologies (India) Ltd.,

it was held that an invention showcasing a technical effect or giving a technical contribution is
not merely a computer programme per se and hence is patentable.

(b) The software need not be a special adoption of any hardware –

For being granted a patent registration, software or a computer programme need not
demonstrate that it is inherently novel, non-obvious in itself, or be a special adaptation of
existing hardware or any modification of such hardware.

Accenture Global Service Gmbh v. The Asst. Controller of Patents & Designs & Ors.

In this case, Accenture Global Service Gmbh filed a patent for a system for developing internet-
hosted business applications. The Indian Patent Office (IPO) objected to the grant of the patent,
citing Section 3(k) of the Patents Act. According to the Patent Office, if the novel features of
an invention reside in a programme without any special adoption or modification of the
hardware, then the matter is not patentable.

The decision was challenged in the Intellectual Property Appellate Board (IPAB) and the court
observed that neither the Patents Act nor the Manual of Patent Office Practice and Procedure
(MPPP) prescribed any such guidelines and accordingly remanded the application back to the
Controller for reconsideration. Thus, software need not demonstrate a special adoption of
hardware to be patented.

(c) Software that is, in essence, a business method cannot be patented –

Software tools that are purely business methods would again not be granted patents.

Yahoo v Controller of Patents & Rediffcom India Limited.

Yahoo’s claim was for a software tool targeting search terms relevant to Yahoo’s business.
However, the IPAB did not accept the patent application and held the same as being a business
method embodied in technology. Where technical advances are only a manifestation of a core
business method held by the IPAB, such advances shall not give any advantage to the patentee
in the allowance of the patent.
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(d) The substance of the software patent is to be looked at, not the form –

Looking over at the 2017 guidelines, it is stated in the guidelines that software being applied
for a patent as a ‘method’ is to be judged on substance, i.e., the focus should be on the
underlying substance of the invention, not the particular form in which it is claimed. Thus,
greater importance needs to be placed on the novelty, industrial use, and inventive step used in
creating such software rather than on it being a computer programme or algorithm.
The above decision in Lava International Ltd. also reinforces the fact that a software patent
cannot merely be dismissed on the fact that such software is, in essence, a computer programme
or an algorithm. There also arises a duty on the applicant’s part to state in clear and succinct
language the practical effect and/or the definite contribution the invention creates to enable the
courts to judge the patent on its substance rather than its form.

(e) An invention displaying a technical effect is patentable despite it being a computer

programme –

Ferid Allani v. Union of India & Ors.,

As the Delhi High Court has noted in the case of most inventions of today are based on
computer programmes, such as automobiles, washing machines, and refrigerators. All of these
use some sort of computer programmes in-built into them. Thus, if a computer programme is
rejected on the mere basis that Section 3(k) presents such a prohibition on patentability,
modern-day inventions would lose the right to be patented.
In this case, the court elaborated on the patentability of computer programs even when Section
3(k) poses an obstacle to such patents. The brief facts of the case were that Ferid Allani, the
applicant, filed for the patent of “a method and device for accessing information sources and
services on the web.” The IPO rejected the patent application under Section 3(k). The matter
went to the IPAB, which confirmed the rejection, and thereby to the Delhi High Court through
a writ petition.

Firstly, the Court cleared that the bar on patenting is in respect of “computer programs per se”
and not all inventions based on computer programs. Noting the prevalence of computer
programs in modern products such as ovens, automobiles, and refrigerators, the Court stated
that it would be retrograde to state that such inventions are not patentable. If this were the case,
inventions such as those based on artificial intelligence, blockchain, and other digital products
would not be patentable.

The court further noted that if an invention demonstrates a technical effect or technical
contribution, it is patentable even though it may be based on a computer programme. Thus, this
case serves as one of the more important judgments when it comes to patenting software in
India, as it explicitly clears the air that Section 3(k) is not to be applied to all inventions using
computer programmes or software.
 173

Enercon India Ltd. v. Aloys Wobben,

where an objection under Section 3(k) was taken to a computer programme invented for better
power output through wind turbines. The court, noting that wind turbines cannot be controlled
manually and require advanced computer technology for the same, stated that such a computer
program carrying out a technical process such as controlling the wind turbine to achieve a
maximum power output cannot be called a ‘computer program per se.’ According to the court,
such an invention would not fall under the objection arising from Section 3(k) of the Patents
Act when the patent claim only comprises some process steps to carry out a technical process
or achieve a technical effect.

Conclusion

Today, software definitely plays an important role in the sustenance and development of
society. The world runs on various computer software codes, from smartphones and
smartwatches to heavy machinery and industrial capital. As such, it becomes increasingly
important to protect and promote inventors’ rights concerning software creation through a
stronger patent enforcement system.

9. copyright in micro software

In India, the Intellectual Property Rights (IPR) of computer software is covered under the
Copyright Law. Accordingly, the copyright of computer software is protected under the
provisions of Indian Copyright Act 1957.

Computer program are literary works under the definition in the Copyright Act. A “computer
program” is a set of statements or instructions to be used directly or indirectly in a computer in
order to bring about a certain result. Copyright for computer programs prohibits copying of
program structure and design. The graphics, sounds, and appearance of a computer program
also may be protected as an audiovisual work; as a result, a program can infringe even if no
code was copied.

Just as a copyright came into being when the original lines of source code were written by the
programmer, so another copyright comes into being for each addition or modification to the
source code that shows sufficient originality. Because of this, a computer program generally is
protected not by a single copyright but by a series of copyrights starting when it is first written
and continuing through the last modification

EULA
A software license agreement is a contract between the licensor and purchaser of the right to
use software. Many form contracts are only contained in digital form, and only presented to a
 174

user as a click-through where the user must "accept". As the user may not see the agreement
until after he or she has already purchased the software, these documents may be contracts of
adhesion. These documents often call themselves end-user licensing agreements (EULA).

Source Code and Object Code

Although copyright comes into being with the writing of the source code, it is the object code
which gives the actual instructions that control the computer when the program is being
executed which is generally protected by copyright. In most instances, the source code is never
revealed to the public, and thus remains protected as a trade secret even though millions and
millions of copies of the program are distributed as object code

The source code contained information that made it easier for a programmer to write or
understand the program

Even though source code and object code are distinct, it is still useful to maintain the concept
that the source code and the object code are just different forms of the same copyrighted work.
The Copyright Office regards the source code and object code as equivalent for purposes of
registration

Infringement of Copyrighted Software

Infringement of copyrighted software is called Software piracy. Software piracy is the

reproduction, distribution or use of a software product without the expressed permission of its
author. Software piracy is theft - stealing someone else's original idea and product. It comes in
the following common forms:

End user piracy: End users (both home and corporate users) who are utilizing unlicensed
software on their systems, or who have installed more copies than they are entitled to under
their license agreements, e.g. a company with only one license installing the software on five
PCs. This form of end user piracy is called under-licensing and is of grave concern to the
Business Software Alliance (BSA).

Hard disk loading: Computer dealers pre-installing illegal copies of software onto PCs prior
to sale. Some dealers use one legally acquired copy but install it on many machines. These PCs
are usually sold without any form of licensing documentation or disks.

Software counterfeiting: The illegal duplication and sale of software in a form that is almost
identical to the genuine product.

Internet piracy: The latest and fastest growing form of software piracy. Software programs
are placed by third parties on the Internet for downloads free of charge or for a fee. Pirates tend
also to use the Internet as a means of advertising to solicit sales.
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Protection of Copyright Software

Generally, copyright laws protect the form of expression of an idea, but not the idea itself. With
respect to software, this typically means that the computer program, in both human-readable
i.e. Source Code and machine-executable form i.e. Object Code, and the related manuals are
eligible for copyright protection, but the methods and algorithms within a program are not
protected expression. Source code and object code are protected against literal copying.

Copyright subsists in all original published or unpublished literary works; 'literary work'
includes computer programs, tables and compilations including computer databases in any
tangible form. Therefore, work has to be recorded into program on some tangible medium to
get copyright protection. Copyright protection, is automatic from the moment the work is
embodied in some medium like ROM, Magnetic Tape, diskette

Remedies for Infringement Of Copyright Software

1. Temporary and permanent injunctions

2. Impounding and destruction of all infringing copies, including masters

3. Actual monetary damages plus the infringers' profits

4. Statutory damages

5. Court costs and reasonable attorneys' fees

International Copyright

Copyright restrictions also apply to works created or published in a foreign country. This
protection is a result of international treaty obligations, under which signatory nations have
agreed to give citizens of other member countries the same level of copyright protection that
they give to their own citizens.

Some of these conventions which protect the Copyright work are as follow:

Berne Convention

Each nation that signs the Berne Convention, 1886 agreement must guarantee to authors of
other member countries the same rights of copyright protection that it grants to its own
nationals. It also requires that signatory nations must enact copyright laws that adhere to certain
uniform standards, particularly in matters concerning copyright durations, the kinds of works
that are protected, the moral rights of authors, along with the abandonment of requirements for
registrations, deposits, and the attachment of copyright notices.
 176

Universal Copyright Convention

It was developed by the United Nations at Geneva in 1952 as an alternative to the Berne
Convention. The UCC (Universal Copyright Convention) was much less stringent in the
requirements that it dictated about the copyright laws its member nations must pass. The USA
ratified the Universal Copyright Convention in 1972.

International Copyright Order

The government of India passed the International Copyright Order, 1958 whereby any work
first published in any country which is a member of the Berne Convention or the UCC
(Universal Copyright Convention) will be accorded the same treatment as if it was first
published in India. The registration of copyright is not compulsory in India but registration
offers better protection to the author in cases of infringement of copyright.

Advantages of Registration Of Copyright

1. Registration establishes a public record of the copyright claim.

2.Before an infringement suit may be filed in court, registration is necessary for works of U. S.
origin where as in India it is not required.

3. If made before or within five years of publication, registration will establish prima facie
evidence in court of the validity of the copyright and of the facts stated in the certificate.

4. If registration is made within three months after publication of the work or prior to an
infringement of the work, statutory damages and attorney’s fees will be available to the
copyright owner in court actions. Otherwise, only an award of actual damages and profits is
available to the copyright owner.

5. Registration allows the owner of the copyright to record the registration with the U. S.
Customs Service for protection against the importation of infringing copies.

Registration Procedures for Filing Copyright

An application for copyright registration contains three essential elements: a completed

application form, a nonrefundable filing fee, and a nonrefundable deposit—that is, a copy or
copies of the work being registered and “deposited” with the Copyright Office.

A copyright registration is effective on the date the Copyright Office receives all required
elements in acceptable form, regardless of how long it takes to process the application and mail
the certificate of registration. The time needed to process applications varies depending on the
amount of material the office is receiving and the method of application.
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Option for registering copyright software

1. Online Registration

2. Registration with Fill-In Form CO (copyright office)

3. Registration with Paper Forms

Requirements for Registration Of Copyright Software

Computer Programs without Trade Secrets

1. For published or unpublished computer programs, send one copy of identifying portions of
the program (first 25 and last 25 pages of source code) reproduced in a form visually perceptible
without the aid of a machine or device, either on paper or in microform, together with the page
or equivalent unit containing the copyright notice.

2. For a program less than 50 pages in length, send a visually perceptible copy of the entire
source code.

3.Where an applicant is unable or unwilling to deposit source code, he/she must state in writing
that the work as deposited in object code contains copyrightable authorship. The Office will
then register the work under its rule of doubt since it has not determined the existence of
copyrightable authorship.

4.When a computer program is embodied in a CD-ROM, ordinarily the entire CD-ROM

package must be mailed to the Copyright Office, including a complete copy of any
accompanying operating software and instructional manual. If registration is sought for the
computer program, the deposit should also include a printout of the first 25 and last 25 pages
of source code for the program.

Computer Programs Containing Trade Secrets

1. First 25 and last 25 pages of source code with portions containing trade secrets blocked out;
or

2. First 10 and last 10 pages of source code alone, with no blocked out portions; or

3. First 25 and last 25 pages of object code plus any 10 or more consecutive pages of source
code, with no blocked-out portions; or

4. For programs 50 pages or less in length, entire source code with trade secret portions blocked
out.
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Revised Computer Programs

1. If the revisions are present in the first 25 and last 25 pages, any one of the four options above,
as appropriate; or

2. If the revisions are not present in the first 25 and the last 25 pages:

Whenever Portions Of Code Are Blocked Out, The Following Requirements Must Be
Met:

the blocked out portions must be proportionately less than the material remaining; and
the visible portion must represent an appreciable amount of original computer code.

Effective Date of Registration

A copyright registration is effective on the date the Copyright Office receives all the required
elements in acceptable form. The time the Copyright Office requires to process an application
varies, depending on the amount of material the Office is receiving.

Copyright Software Litigation

Only competent court of jurisdiction shall entertain Software litigation. In case of US, the
Federal courts have exclusive jurisdiction over copyright claims.

Place of filing the complaint relating to infringement of software copyright would be the place
where the defendant is found or where infringing acts occur

No complaint shall be entertained after the expiry of the three years from the day when action
has accrued according to the Statute of limitations on civil copyright claims.

Complainant or plaintiff must own the copyrights or be an exclusive licensee to have the right
to use the Copyright. Such exclusive license must be given by the owner of the copyright or
the individual who created the work or assignee of the true owner.

And the litigation will only be initiated if above all conditions i.e. Registration and Submissions
etc. will be carried down as per the requirement.
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UNIT 4
10 MARKS

1. Examine the salient features of the Geographical Indications of Goods (Registration

and Protection) Act, 1999 (2)
2. Explain the role and functions of Registrar of Geographical Indications.
3. Explain the objects of Geographical Indications (Registration and Protection) Act,
1999.
4. Discuss the position of Geographical Indications under Trade related to Intellectual
Property Rights (TRIPs) Agreement.
5. Define Geographical indications. Explain the conditions for registration of
geographical indications.
6. Discuss the offences and penalties under Geographical indication of Goods Act, 1999
7. Examine the procedure for the registration of geographical indications. (2)
8. Distinguish between geographical indications and trademarks.
9. What is geographical indication? Explain its essential attributes
10. What are the prohibitions imposed on the registration of geographical indication under
Geographical Indications of Goods (Registration and Protection) Act, 1999?

6 MARKS

1. Write a note on Rights of a registered Geographical Indication holders

2. State difference between Geographical Indication and Trade Mark.
3. Write a note on infringement of Registered Geographical Indications. (2)
4. 'X' a person wants to obtain Geographical Indication registration for a variety of chilly
grown in the region to the exclusion of other. Advise him
5. Rama and Laxman are authorised users who have registered for identical or nearly
resembling Geographical indication. Rama claims an exclusive right over it. Will he
claim it?
6. Write a note on 'Basmati Rice Case'. (2)
7. Write a note on the geographical indications registered in India
8. X' an authorised user holding a right in a registered geographical indication dies. On
whom does his right devolve?
9. The plantiff challenges use of impugned name 'DARJEELING' for the purpose of
Lounge as it threatens the commercial activities of these persons who are actually in
the business of the Darjeeling tea against the defendant before the High court. Decide
10. The petitioner challenges the grant of Geographical Indication to 'Tirupati Laddus' to
Tirumala Tirupati Devasthanam, a single entity neglecting community interest of other
people living in Tirupati and further causing prejudice to Article 25 of the Constitution
of India. Decide
 180

10 MARKS

1. Examine the salient features of the Geographical Indications of Goods

(Registration and Protection) Act, 1999 (2)

Introduction

In the Indian context, Geographical Indications (GIs) has evolved in the past few years as a
prominent form of the concern of intellectual property. For the protection of GI the parliament
enforced The Geographical Indications of Goods (Registration and Protection) Act, 1999,
together with The Geographical Indications of Goods (Registration and Protection) Rules,
2002.
India, as a member the World Trade Organization, passed the Geographical Indications of
Goods (Registration and Protection) Act, 1999 which was enforced from 15 Sep 2003. GI Act
was established to register as well as protect goods relating to GIs.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Salient features of Geographical Indications of Goods (Registration and Protection) Act,

1999

Prior to enactment of G.I. Act, there was no law for the protection of geographical indication
in India. The need and justification for this law has been aptly stated in the Statement of Object
and Reasons as under:

"At present there is no specific law governing geographical indications of goods in the country
which could adequately protect the interests of producers of such goods. Exclusion of
unauthorized persons from misusing geographical indications would serve to protect
consumers from deception, add to the economic prosperity of the producers of such goods and
also promote goods bearing India geographical indications in the exports market. Unless a
geographical indication is protected in the country of its origin, there is no obligation under the
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) for other
countries to extend reciprocal protection. India would, on the other hand, be required to extend
 181

protection to goods imported from other countries which provide for such protection. In view
of the above circumstances, it is considered necessary to have a comprehensive legislation for
registration and for providing adequate protection for geographical indications.

Salient features of the Act can be stated as under:

(a) Definitions of several important terms like "geographical indication", "goods", "producers",
"package", "registered proprietor", "authorized user", etc.

(b) Provision for the establishment of a Geographical Indications Registry.

(c) Provisions for the maintenance of a Register of Geographical Indications in two Parts-Part
A and Part Band use of computers, etc., for maintenance of such registers. While Part A
contains all registered geographical indications, Part B will contain particulars of registered
authorized users.

(d) Registration of geographical indications of goods in specified classes.

(e) Prohibition of registration of certain geographical indications.

(f) Provisions for framing of rules by Central Government for filing of application, its contents
and matters relating to substantive examination of geographical indication applications.

(g) Compulsory advertisement of all accepted geographical indication applications and for
inviting objections.

(h) Registration of authorized users of registered geographical indications and providing

infringement action either by a registered proprietor or an authorized user.

(i) Provisions for the renewal, rectification and restoration of geographical indications and
authorized user.

(j) Prohibition of assignment, etc., of a geographical indication as it is a public property.

(k) Prohibition of registration of geographical indication as a trademark.

(l) Appeal against registrar's decisions would lie to the Intellectual Property Appellate Board
established under the Trademarks legislation.

(m) Provision relating to offences and penalties.

(n) Provision detailing the effects of registration and the rights conferred by registration.
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(0) provisions for reciprocity, powers of the Registrar, maintenance of index, protection of
homonymous geographical indications, etc.

Case Laws

There have been several landmark judgments relating to geographical indications (GI) in India.
Here are a few examples:

1. Darjeeling Tea Association v. The Union of India (2002):

This case was about the protection of the geographical indication "Darjeeling Tea." The court
held that Darjeeling tea was a distinctive product of a specific region and that it was entitled to
protection under the GI Act, 1999. The court also directed the Tea Board of India to take steps
to ensure that only genuine Darjeeling tea was sold under that name.

2. Bikaner Bhujia Case (2010):

This case was about the protection of the geographical indication "Bikaneri Bhujia." The court
held that the use of the term "Bikaner" or "Bikaneri" in relation to bhujia (a popular snack)
could only be used by those who were authorized by the registered proprietor of the GI.

3. Basmati Rice Case (2018):

This case was about the protection of the geographical indication "Basmati Rice." The court
held that basmati rice was a unique variety of rice grown in a specific region and that it was
entitled to protection under the GI Act, 1999. The court also directed the government to take
steps to prevent the misappropriation of the name "basmati" by rice varieties that were not true
basmati rice.

4. Feni Case (2019):

This case was about the protection of the geographical indication "Feni," a type of liquor made
in Goa. The court held that the use of the term "Feni" could only be used by those who were
authorized by the registered proprietor of the GI. The court also directed the government to
take steps to prevent the misuse of the name "Feni" by liquor manufacturers who were not
authorized to use that name.

Conclusion

The Act has enlisted a number of provisions to execute the statement of object. But still after
17 years of enforcement there is very less number of registration which clearly shows the lack
of awareness about the provisions of the Act. For the implementation of the Act public
awareness is required. The consumer and the producers both are required to know their right
to protect themselves from all kind of unfair practice.
 183

2. Explain the role and functions of Registrar of Geographical

Indications.

Introduction

In the Indian context, Geographical Indications (GIs) has evolved in the past few years as a
prominent form of the concern of intellectual property. For the protection of GI the parliament
enforced The Geographical Indications of Goods (Registration and Protection) Act, 1999,
together with The Geographical Indications of Goods (Registration and Protection) Rules,
2002.
India, as a member the World Trade Organization, passed the Geographical Indications of
Goods (Registration and Protection) Act, 1999 which was enforced from 15 Sep 2003. GI Act
was established to register as well as protect goods relating to GIs.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Sec 2(1)(o): “Registrar” means the Registrar of Geographical Indications referred to in section
3;

Role and functions of Registrar of Geographical Indications

Sec 3: Registrar of Geographical Indications.

(1) The Controller-General of Patents, Designs and Trade Marks appointed under sub-section
(1) of section 3 of the Trade Marks Act, 1999, shall be the Registrar of Geographical
Indications.
(2) The Central Government may appoint such officers with such designations as it thinks fit
for the purpose of discharging, under the superintendence and direction of the Registrar, such
functions of the Registrar under this Act, as he may from time to time authorise them to
discharge.
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Sec 4: Power of Registrar to withdraw or transfer cases, etc.

Without prejudice to the generality of the provisions of sub-section (2) of section 3, the
Registrar may, by order in writing and for reasons to be recorded therein, withdraw any matter
pending before an officer appointed under the said sub-section (2) and deal with such matter
himself either de novo or from the stage it was so withdrawn or transfer the same to another
officer so appointed who may, subject to special directions in the order of transfer, proceed
with the matter either de novo or from the stage it was so transferred

Sec 6: Register of Geographical Indications

The Registrar shall keep the register of geographical indication in any electronic form.

Sec 8: Registration to be in respect of particular goods and area.

(1) A geographical indication may be registered in respect of any or all of the goods, comprised
in such class of goods as may be classified by the Registrar and in respect of a definite territory
of a country, or a region or locality in that territory.

(2) The Registrar shall classify the goods in accordance with the International classification of
goods for the purposes of registration of geographical indications.

(3) The Registrar may publish an alphabetical index of classification of goods.

Sec 11: Application for registration

Any association of persons or producers or any organisation or authority shall apply in writing
to the Registrar for the registration of the geographical indication. Every application shall be
examined by the Registrar and may refuse the application or may accept it

Section 12: Withdrawal of acceptance

The Registrar may withdraw acceptance of an application before registration if he is satisfied

that the requirements are not being met partially or in entirety.

Section 13: Advertisement of application

The registrar shall advertise an application after its acceptance.

Section 14: Opposition to registration

If there is opposition to an application for registration, the Registrar shall hear both parties and
take an appropriate decision.
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Section 15: Correction and amendment

The Registrar may permit the correction of any error before or after acceptance of an
application.

Sec 16: Registration

the Registrar shall, unless the Central Government otherwise directs, register the said
geographical indication and the authorised users

On the registration of a geographical indication, the Registrar shall issue each to the applicant
and the authorised users a certificate of the registration sealed with the seal of the Geographical
Indications Registry.

Where registration of a geographical indication is not completed within twelve months from
the date of the application the Registrar may, after giving notice to the applicant treat the
application as abandoned

Section 17: Application for registration as authorised user

The Registrar shall receive applications from producers of goods who can use the GI and
register them as authorised users.

Section 18: Duration, renewal, removal and restoration of registration Duration

The duration of renewal for a GI or a Registered user is for a period of ten years on application
with the prescribed fees within the prescribed time.

Notice

The Registrar shall send a notice with all details before expiry.

Grace Period

The application can be made within six months after expiry with an additional surcharge.

Removal

If those conditions have not been duly complied with, the Registrar may remove the
geographical indication or the authorised user, from the register.
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Restoration

Once Registration is removed, the Registrar may restore registration if he thinks fit, if he
receives an application after six months and within a year of the expiration date.

Sec 27: Power to cancel or vary registration and to rectify the register.

On application made to the High Court or to the Registrar by any person aggrieved, the
Registrar or the High Court may make order for cancelling or varying the registration of a
geographical indication or authorised user on the ground of any contravention, or failure to
observe the condition entered on the register.

Section 28: Correction of register

The Registrar may, on application made to him make corrections in register as required. They
may be corrections of Names, addresses etc.

Section 29: Alteration of registered geographical indications

Applications may be made to the registrar to alter the geographical indication in any manner
not substantially affecting it.

Sec 60: Powers of Registrar.

In all proceedings under this Act before the Registrar,

(a) the Registrar shall have all the powers of a civil court for the purposes of receiving evidence,
administering oaths, enforcing the attendance of witnesses, compelling the discovery and
production of documents and issuing commissions for the examination of witnesses;

(b) the Registrar may, subject to any rules made in this behalf under section 87, make such
orders as to costs as he considers reasonable, and any such order shall be executable as a decree
of a civil court;

(c) the Registrar may, on an application made in the prescribed manner, review his own
decision.

Sec 61: Exercise of discretionary power by Registrar.

Subject to the provisions of section 64, the Registrar shall not exercise any discretionary or
other power vested in him by this Act or the rules made thereunder adversely to a person
applying for the exercise of that power without (if so required by that person within the
prescribed time) giving to the person an opportunity of being heard.
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Sec 62: Evidence before Registrar.

In any proceeding under this Act before the Registrar, evidence shall be given by affidavit:
Provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to,
such evidence by affidavit.

Section 64: Extension of time

An application has to be made to the Registrar for extension of time for doing any act. If the
Registrar is satisfied, he may, extend the time and inform the parties accordingly.

Section 70: Registrar and other officers not compellable to produce register, etc

In any legal proceedings to which he is not a party, the Registrar need not produce the register
or any other document in his custody. He may produce certified copies He need not appear as
a witness unless by order of the court made for a special cause.

Conclusion

A registered G.I. tag prohibits the holder from using the registered mark of G.I. or its name in
any product which is similar to or misleading the registered product. The G.I. tag is an essential
component for creating and maintaining abstracts and originality of the product of certain
essentials and characteristics.
 188

3. Explain the objects of Geographical Indications (Registration and

Protection) Act, 1999.

Introduction

In the Indian context, Geographical Indications (GIs) has evolved in the past few years as a
prominent form of the concern of intellectual property. For the protection of GI the parliament
enforced The Geographical Indications of Goods (Registration and Protection) Act, 1999,
together with The Geographical Indications of Goods (Registration and Protection) Rules,
2002.
India, as a member the World Trade Organization, passed the Geographical Indications of
Goods (Registration and Protection) Act, 1999 which was enforced from 15 Sep 2003. GI Act
was established to register as well as protect goods relating to GIs.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Nature of GIs

The geographical indications are indications identifying a good as originating in a country,

region, or locality in that country. This would include not only geographical names proper but
also any traditional non- geographical names, which have acquired geographical significance.
While the former category would comprise well-known geographical indications such as
champagne wines, Darjeeling tea, Mysore Silk, Nagpur Oranges, Kashmir Pashmina etc, the
latter category would comprise names such as basmati rice identifying a unique aromatic rice
originating from a region in the Indian sub-continent falling in India and Pakistan ,feta cheese
from Greece, alphonso mangoes from India. Thus the geographical indication forms the vital
part of the culture and traditions of a country

Objectives of Geographical Indications of Goods (Registration and Protection) Act, 1999.

1. To protect the interest of the producers of goods.

2. To exclude unauthorized persons from misusing GIs and to protect consumers from
deception.
 189

3. To promote goods bearing GI in the export market.

4. The Geographical Indications Of Goods (Registration and Protection) Act, 1999 defines
geographical indications. According to section 2(e) “geographical indications”, in relation to
goods, means an indication which identifies such goods as agricultural goods, natural goods or
manufactured goods as originating, or manufactured in the territory of a country, or a region or
locality in that territory, where a given quality, reputation or other characteristics of such goods
is essentially attributable to its geographical origin and in case where such goods are
manufactured one of the activities of either the production or of processing or preparation of
the goods concerned takes place in such territory, region or locality, as the case may be.

5. Explanation: For the purposes of this clause, any name which is not the name of country,
region or locality of that country shall also be considered as the geographical indication if it
relates to a specific geographical area and is used upon or in relation to particular goods
originating from that country, region or locality, as the case may be.

6. Section 2(f) defines “goods” as any agricultural, natural or manufactured goods or any goods
of handicrafts or of industry and includes food stuff.

7. The Act explicitly extends the protection to geographical indications used not only for
agricultural products, but also for manufactured goods, though generally the use of
geographical indication may be more predominant in respect of agricultural products where
such products typically have qualities attributable to the specific geographical area.

Need for Protection of GIs

1. They identify a product source along with quality;

2. They inform customers that the product have a certain quality , reputation or other exquisite
quality due to their geographical origin;

3. Trade interests are protected as GI tag suggest that the product comes from a particular area;

4. It protects livelihood of artisan and craftsmen;

5. It assures consumers of a certain standard and unique quality;

6. GI tag qualifies for protection under TRIPs and domestic IP laws;

7. Secures customers loyalty for the product; and 8. Provides cultural protection for the
craftsmen/artisans/producers.
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4. Discuss the position of Geographical Indications under Trade related

to Intellectual Property Rights (TRIPs) Agreement.

Introduction

The TRIPS Agreement builds on the existing multilateral systems for the protection of the
various intellectual property rights covered by it. Article 22 to Article 24, of the Trade Related
Aspects of Intellectual Property Rights (TRIPS) Agreement are provisions for Geographical
Indications. Part II, Section 3 (Article 22 to Article 24) of the TRIPS Agreement contains the
provisions for minimum standards in respect of geographical indications

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Provisions of TRIPS Agreement related to GI

Article 22: Protection of Geographical Indications

1. Geographical indications are, for the purposes of this Agreement, indications which identify
a good as originating in the territory of a Member, or a region or locality in that territory, where
a given quality, reputation or other characteristic of the good is essentially attributable to its
geographical origin.

2. In respect of geographical indications, Members shall provide the legal means for interested
parties to prevent:
(a) the use of any means in the designation or presentation of a good that indicates or
suggests that the good in question originates in a geographical area other than the true
place of origin in a manner which misleads the public as to the geographical origin of
the good;
(b) any use which constitutes an act of unfair competition within the meaning of Article
10bis of the Paris Convention (1967).

3. A Member shall, ex officio if its legislation so permits or at the request of an interested party,
refuse or invalidate the registration of a trademark which contains or consists of a geographical
indication with respect to goods not originating in the territory indicated, if use of the indication
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in the trademark for such goods in that Member is of such a nature as to mislead the public as
to the true place of origin.

4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical

indication which, although literally true as to the territory, region or locality in which the goods
originate, falsely represents to the public that the goods originate in another territory.

Article 23: Additional Protection for Geographical Indications for Wines and Spirits

1. Each Member shall provide the legal means for interested parties to prevent use of a
geographical indication identifying wines for wines not originating in the place indicated by
the geographical indication in question or identifying spirits for spirits not originating in the
place indicated by the geographical indication in question, even where the true origin of the
goods is indicated or the geographical indication is used in translation or accompanied by
expressions such as "kind", "type", "style", "imitation" or the like.

2. The registration of a trademark for wines which contains or consists of a geographical

indication identifying wines or for spirits which contains or consists of a geographical
indication identifying spirits shall be refused or invalidated, ex officio if a Member's legislation
so permits or at the request of an interested party, with respect to such wines or spirits not
having this origin.

3. In the case of homonymous geographical indications for wines, protection shall be accorded
to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall
determine the practical conditions under which the homonymous indications in question will
be differentiated from each other, taking into account the need to ensure equitable treatment of
the producers concerned and that consumers are not misled.

4. In order to facilitate the protection of geographical indications for wines, negotiations shall
be undertaken in the Council for TRIPS concerning the establishment of a multilateral system
of notification and registration of geographical indications for wines eligible for protection in
those Members participating in the system.

Article 24: International Negotiations; Exceptions

1. Members agree to enter into negotiations aimed at increasing the protection of individual
geographical indications under Article 23. The provisions of paragraphs 4 through 8 below
shall not be used by a Member to refuse to conduct negotiations or to conclude bilateral or
multilateral agreements. In the context of such negotiations, Members shall be willing to
consider the continued applicability of these provisions to individual geographical indications
whose use was the subject of such negotiations.

2. The Council for TRIPS shall keep under review the application of the provisions of this
Section; the first such review shall take place within two years of the entry into force of the
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WTO Agreement. Any matter affecting the compliance with the obligations under these
provisions may be drawn to the attention of the Council, which, at the request of a Member,
shall consult with any Member or Members in respect of such matter in respect of which it has
not been possible to find a satisfactory solution through bilateral or plurilateral consultations
between the Members concerned. The Council shall take such action as may be agreed to
facilitate the operation and further the objectives of this Section.

3. In implementing this Section, a Member shall not diminish the protection of geographical
indications that existed in that Member immediately prior to the date of entry into force of the
WTO Agreement.

4. Nothing in this Section shall require a Member to prevent continued and similar use of a
particular geographical indication of another Member identifying wines or spirits in connection
with goods or services by any of its nationals or domiciliaries who have used that geographical
indication in a continuous manner with regard to the same or related goods or services in the
territory of that Member either
(a) for at least 10 years preceding 15 April 1994 or
(b) in good faith preceding that date.

5. Where a trademark has been applied for or registered in good faith, or where rights to a
trademark have been acquired through use in good faith either:
(a) before the date of application of these provisions in that Member as defined in Part
VI; or
(b) before the geographical indication is protected in its country of origin;

measures adopted to implement this Section shall not prejudice eligibility for or the validity of
the registration of a trademark, or the right to use a trademark, on the basis that such a trademark
is identical with, or similar to, a geographical indication.

6. Nothing in this Section shall require a Member to apply its provisions in respect of a
geographical indication of any other Member with respect to goods or services for which the
relevant indication is identical with the term customary in common language as the common
name for such goods or services in the territory of that Member. Nothing in this Section shall
require a Member to apply its provisions in respect of a geographical indication of any other
Member with respect to products of the vine for which the relevant indication is identical with
the customary name of a grape variety existing in the territory of that Member as of the date of
entry into force of the WTO Agreement.

7. A Member may provide that any request made under this Section in connection with the use
or registration of a trademark must be presented within five years after the adverse use of the
protected indication has become generally known in that Member or after the date of
registration of the trademark in that Member provided that the trademark has been published
by that date, if such date is earlier than the date on which the adverse use became generally
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known in that Member, provided that the geographical indication is not used or registered in
bad faith.

8. The provisions of this Section shall in no way prejudice the right of any person to use, in the
course of trade, that person’s name or the name of that person’s predecessor in business, except
where such name is used in such a manner as to mislead the public.

9. There shall be no obligation under this Agreement to protect geographical indications which
are not or cease to be protected in their country of origin, or which have fallen into disuse in
that country.

Conclusion

Products or goods which are exported to other countries from India with the Geographical
Indication mark on them protect the origin of the goods and make it clearly identify where the
goods were produced, so this protection is possible only because of Geographical Indication
and thus boosts economy of the origin country.
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5. Define Geographical indications. Explain the conditions for

registration of geographical indications.

Introduction

The registration of Geographical Indications (GIs) in India is governed by the Geographical

Indications of Goods (Registration and Protection) Act, 1999. The process of GI registration
begins with the identification of a specific geographical area and the goods associated with it.
The applicant must establish a direct and clear link between the unique qualities, reputation, or
other characteristics of the goods and their geographical origin. This link is crucial to determine
the eligibility for GI protection.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Conditions for registration of geographical indications

Sec 8: Registration to be in respect of particular goods and area.

(1) A geographical indication may be registered in respect of any or all of the goods, comprised
in such class of goods as may be classified by the Registrar and in respect of a definite territory
of a country, or a region or locality in that territory.

(2) The Registrar shall classify the goods in accordance with the International classification of
goods for the purposes of registration of geographical indications.

(3) The Registrar may publish an alphabetical index of classification of goods

(4) Any question arising as to the class within which any goods fall or the definite area in
respect of which the geographical indication is to be registered or where any goods are not
specified in the alphabetical index of goods published shall be determined by the Registrar
whose decision in the matter shall be final.
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Sec 9: Prohibition of registration of certain geographical indications.

A geographical indication:

(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in force; or

(c) which comprises or contains scandalous or obscene matter; or

(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India; or

(e) which would otherwise be disentitled to protection in a court; or

(f) which are determined to be generic names or indications of goods and are, therefore, not or
ceased to be protected in their country of origin, or which have fallen into disuse in that country;
or

(g) which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons that the goods originate in another territory,
region or locality, as the case may be, shall not be registered as a geographical indication.

Sec 10: Registration of homonymous geographical indications.

a homonymous geographical indication may be registered under this Act, if the Registrar is
satisfied, after considering the practical conditions under which the homonymous indication in
question shall be differentiated from other homonymous indications and the need to ensure
equitable treatment of the producers of the goods concerned, that the consumers of such goods
shall not be confused or misled in consequence of such registration.

Conclusion

A registered G.I. tag prohibits the holder from using the registered mark of G.I. or its name in
any product which is similar to or misleading the registered product. The G.I. tag is an essential
component for creating and maintaining abstracts and originality of the product of certain
essentials and characteristics.
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6. Discuss the offences and penalties under Geographical indication of

Goods Act, 1999

Introduction

In the Indian context, Geographical Indications (GIs) has evolved in the past few years as a
prominent form of the concern of intellectual property. For the protection of GI the parliament
enforced The Geographical Indications of Goods (Registration and Protection) Act, 1999,
together with The Geographical Indications of Goods (Registration and Protection) Rules,
2002.
India, as a member the World Trade Organization, passed the Geographical Indications of
Goods (Registration and Protection) Act, 1999 which was enforced from 15 Sep 2003. GI Act
was established to register as well as protect goods relating to GIs.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Offences and penalties under Geographical indication of Goods Act, 1999

Sec 38: Falsifying and falsely applying geographical indications.

(1) A person shall be deemed to falsify a geographical indication who, either,

(a) without the assent of the authorised user of the geographical indication makes that
geographical indication or deceptively similar geographical indication; or

(b) falsifies any genuine geographical indication, whether by alteration, addition, effacement
or otherwise.

(2) A person shall be deemed to falsely apply to goods a geographical indication who, without
the assent of the authorised user of the geographical indication,
(a) applies such geographical indication or a deceptively similar geographical indication to
goods or any package containing goods;
(b) uses any package bearing a geographical indication which is identical with or deceptively
similar to the geographical indication of such authorised user, for the purpose of packing, filling
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or wrapping therein any goods other than the genuine goods of the authorised user of the
geographical indication.

Sec 39: Penalty for applying false geographical indications.

Any person who,

(a) falsifies any geographical indication; or
(b) falsely applies to goods any geographical indication; or
(c) makes, disposes of, or has in his possession, any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a geographical
indication; or
(d) applies to any goods to which an indication of the country or place in which they were made
or produced or the name and the address of the manufacturer or person for whom the goods are
manufactured
(e) tampers with, alters or effaces an indication of origin which has been applied to any goods
(f) causes any of the things above-mentioned in this section to be done,

Shall be punishable with imprisonment for a term which shall not be less than 6 months but
which may extend to 3 years and with fine which shall not be less than fifty thousand rupees
but which may extend to two lakh rupees.

Sec 40: Penalty for selling goods to which false geographical indication is applied.

Any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale,
goods or things to which any false geographical indication is applied or place in which they
were made or produced or the name and address of the manufacturer, or person for whom the
goods are manufactured or without the indications so required, shall, unless he proves,

(a) that, having taken all reasonable precautions against committing an offence against this
section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the geographical indication or that any offence had been committed in respect
of the goods; or

(b) that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom he obtained such goods or things; or

(c) that otherwise he had acted innocently,

be punishable with imprisonment for a term which shall not be less than six months but which
may extend to three years and with fine which shall not be less than fifty thousand rupees
but which may extend to two lakh rupees:
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Sec 41: Enhanced penalty on second or subsequent conviction

Whoever having already been convicted of an offence under section 39 or section 40 is again
convicted of any such offence shall be punishable for the second and for every subsequent
offence, with imprisonment for a term which shall not be less than one year but which may
extend to three years and with fine which shall not be less than one lakh rupees but which
may extend to two lakh rupees

Sec 42: Penalty for falsely representing a geographical indication as registered.

If any person falsely represents a geographical indication as registered, he shall be punishable

with imprisonment for a term which may extend to three years, or with fine, or with both

Sec 43: Penalty for improperly describing a place of business as connected with the
Geographical Indications Registry.

If any person uses on his place of business, or on any document issued by him, or otherwise,
words which would reasonably lead to the belief that his place of business is, or is officially
connected with, the Geographical Indications Registry, he shall be punishable with
imprisonment for a term which may extend to two years, or with fine, or with both

Sec 44: Penalty for falsification of entries in the register.

If any person makes, or causes to be made, a false entry in the register, or a writing falsely
purporting to be a copy of an entry in the register, or produces or tenders or causes to be
produced or tendered, in evidence any such writing, knowing the entry or writing to be false,
he shall be punishable with imprisonment for a term which may extend to two years, or with
fine, or with both.

Sec 45: No offence in certain cases.

The provisions of sections 39, 40 and 41 shall in relation to a registered geographical indication
or authorised user of such geographical indication, be subject to the rights created or recognised
by this Act and no act or omission shall be deemed to be an offence under the aforesaid sections
if,—
(a) the alleged offence relates to a registered geographical indication and the act or omission is
permitted under this Act; and
(b) the alleged offence relates to a registered geographical indication and the act or omission is
permitted under any other law for the time being in force.

Sec 46: Forfeiture of goods.

(1) Where a person is convicted of an offence under section 39 or section 40 or section 41 or

is acquitted of an offence under section 39 or section 40 on proof that he acted without intend
 199

or defraud, or under section 40 on proof of the matters specified in clause (a) or clause (b) or
clause (c) of that section, the court convicting or acquitting him may direct the forfeiture to
Government of all goods and things by means of, or in relation to, which the offence has been
committed, or but for such proof as aforesaid would have been committed.

Sec 49: Offences by companies.

(1) If the person committing an offence under this Act is a company, the company as well as
every person in charge of, and responsible to, the company for the conduct of its business at
the time of the commission of the offence shall be deemed to be guilty of the offence and shall
be liable to be proceeded against and punished accordingly

(2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has
been committed by a company and it is proved that the offence has been committed with the
consent or connivance of, or that the commission of the offence is attributable to any neglect
on the part of, any director, manager, secretary or other officer of the company, such director,
manager, secretary or other officer shall also be deemed to be guilty of that offence and shall
be liable to be proceeded against and punished accordingly.

Conclusion

The necessity for intellectual property rights protection is expanding along with its scope. India
has demonstrated a strong grasp of the importance of these rights by successfully ratifying and
signing the TRIPS Agreement. Since the Darjeeling Tea was the first GI registered under the
Act, the execution of GIs in India has increased.
 200

7. Examine the procedure for the registration of geographical

indications. (2)

Introduction

The registration of Geographical Indications (GIs) in India is governed by the Geographical

Indications of Goods (Registration and Protection) Act, 1999. The process of GI registration
begins with the identification of a specific geographical area and the goods associated with it.
The applicant must establish a direct and clear link between the unique qualities, reputation, or
other characteristics of the goods and their geographical origin. This link is crucial to determine
the eligibility for GI protection.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

PROCEDURE FOR REGISTRATION

Sec 11: Application for registration

An application for registration of a geographical indication may be made to Registrar of

Geographical Indications by any association of persons or producers or any organization or
authority representing the interests of the producers of the concerned goods. Every application
for the registration of a geographical indication shall be made in the prescribed form and shall
be signed by the applicant or his agent and must be made in triplicate along with three copies
of a Statement of Case.

The application must contain the followings:

i) a statement as to how the geographical indication serves to designate the goods as originating
from the concerned territory in respect of specific quality, reputation or other characteristics of
which are due exclusively or essentially to the geographical environment, with its inherent
natural and human factors, and the production, processing or preparation of which takes place
in such territory, region or locality:

ii) the class of goods to which the geographical indication shall apply;
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iii) the geographical map of the territory of the country or region or locality in which the goods
originate or are being manufactured

iv) the particulars regarding the appearance of the geographical indication as to whether it is
comprised of the words or figurative elements or both;

v) a statement containing such particulars of the producers of the concerned goods, if any,
proposed to be initially registered with the registration of the geographical indication as may
be prescribed; and

vi) such other particulars as may be prescribed

Single application:

Section 11 provides for the filing of a single application for different classes of goods. This
will reduce paper work and expedite processing of applications. An application for the
registration of a geographical indication shall be filed at the appropriate office of the
Geographical Indications Registry. Every application shall be examined by the Registrar who
may refuse it or accept it absolutely or subject to such amendments, modifications, conditions
or limitations as he may think fit. Where an application is refused or accepted with conditions,
the Registrar shall record in writing the reasons thereof and the material used by him to arrive
at his decision.

Sec 12: Withdrawal of acceptance

Section 12 provides for withdrawal of acceptance of an application for registration of a

geographical indication, if the Registrar is satisfied that

(a) the application has been accepted in error, or

(b) the geographical indication should not be registered or should be registered subject to
additional conditions or limitations.

The applicant shall be given an opportunity of being heard.

Sec 13: Advertisement of application

Section 13 provides that where an application has been accepted, the Registrar shall cause the
same to be advertised in the prescribed manner together with conditions or limitations, if any.
The Registrar has been vested with the power to re-advertise an application where an error has
been corrected or where the application has been permitted to be amended under section 15.
Section 15 empowers the Registrar to carry out correction of any error or permit an amendment
of the application whether before or after acceptance.
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Sec 14: Opposition to registration

Any person may, within three months from the date of advertisement or re advertisement of
an application or within such further period not exceeding one month, as the Registrar allows,
file a notice of opposition in writing to the Registrar. The Registrar shall serve a copy of the
notice so received on the applicant who shall send to the Registrar a counter-statement of the
grounds on which he relies within two months, failing which his application shall be deemed
to have been abandoned. If the applicant sends a counter statement, the Registrar shall serve a
copy of it on the person giving notice of opposition. The Registrar shall, after providing an
opportunity of hearing to the parties and considering the materials on record and the evidences,
decide whether and subject to what conditions or limitations, if any, the registration is to be
permitted.

Sec 15: Correction and amendment.

The Registrar may, at any time, whether before or after acceptance of an application for
registration, permit the correction of any error or in connection with the application or permit
an amendment of the application

Sec16: Registration

When an application has been accepted unopposed, after advertisement of has been opposed
but decided in favour of the applicant, the Registrar shall, unless the Central Government
directs otherwise, register the geographical indication and the authorized user, if any,
mentioned in the application. The date of filing of the application shall be the date of
registration. The Registrar shall issue to each of the applicants and the authorized user a
certificate with the seal of the Geographical Indications Registry. Where the registration of a
geographical indication is not completed within 12 months from the date of application by
reasons of the applicant's defaults, the Registrar may after giving notice, treat the application
as abandoned unless it is completed within the time specified in the notice.

Sec 17: Application for registration as authorised user

Section 17 provides that any person claiming to be the producer of the goods in respect of
which a geographical indication has been registered, may apply to the Registrar for registering
him as an authorized user of such geographical indication. The procedure relating to registering
an authorized user of a registered geographical indication would be similar to the procedure for
the registration of a geographical indication. The application is to be accompanied by
prescribed fee, statement, and documents of facts, required by the Registrar to determine as to
whether such person is the producer of the goods.

Conclusion
The necessity for intellectual property rights protection is expanding along with its scope. India
has demonstrated a strong grasp of the importance of these rights by successfully ratifying and
signing the TRIPS Agreement.
 203

8. Distinguish between geographical indications and trademarks.

Introduction

In the Indian context, Geographical Indications (GIs) has evolved in the past few years as a
prominent form of the concern of intellectual property. For the protection of GI the parliament
enforced The Geographical Indications of Goods (Registration and Protection) Act, 1999,
together with The Geographical Indications of Goods (Registration and Protection) Rules,
2002.

Trademark is a product of competitive trade practices. Every trader seeks to sell his product by
its name and distinctiveness. The changing business practices have also changed the concept
and philosophy of trademark It is therefore, necessary to understand the essential characteristics
and the purposes for which a trademark is used. This chapter deals with general aspects of
trademarks.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Section 2(zb) of Trademarks Act, 1999 defines "trademark" as, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others and may include shape of goods, their packaging and combination
of colours.

Difference between Geographical Indication and Trade Mark

Geographical Indication Trade Mark

The definition for a GI is found in The According to Section 2(zb) of the

Geographical Indications of Goods Indian Trademarks Act 1999, "trademark"
(Registration and Protection) Act, 1999, as, a mark capable of being represented
under Section 2(1)(e): graphically and which is capable of
“geographical indication”, in relation to distinguishing the goods or services of one
goods, means an indication which identifies person from those of others and may include
such goods as agricultural goods, natural
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goods or manufactured goods as originating, shape of goods, their packaging and

or manufactured in the territory of a country, combination of colours.
or a region or locality in that territory, where
a given quality, reputation or other
characteristic of such goods is essentially
attributable to its geographical origin and in
case where such goods are manufactured
goods one of the activities of either the
production or of processing or preparation of
the goods concerned takes place in such
territory, region or locality, as the case may
be.

The name denotes the product’s place of trademark is a symbol, name, or identity of
origin, and any producer in that geographic a firm that is used to distinguish one entity’s
region can use the GI for that product. goods or services from those of another. E.g.:
BMW and Audi,
A geographical indication (GI) is essentially trademark, on the other hand, can be
a collective protection provided to a group of registered by a single person or a company,
producers from a specified place where the both.
commodity was initially created.
every manufacturer or producer in the same Registered Trademark in a person’s name
territory is permitted to use the same GI. and address may only be used by that person
or manufacturer
A GI, on the other hand, can only be a name A trademark can be a letter, a word, digits, or
or a symbol associated with a location. a combination of characters and numbers, as
well as an abbreviation, name, gadget,
hologram, sound, or odor
GI is meant only for goods unique to a A Trademark is available for both goods and
geographical region. services
A GI is a code that identifies a product based The individuality or uniqueness of a
on its origin. The nature of the GI is trademark is determined by human ingenuity
determined by factors like geography, human or intellect. It is possible for a trademark to
labor, and the environment of a certain be suggestive, descriptive, or arbitrary.
geographical place.
GI is a right enjoyed by a community / Trademark is a right enjoyed by only one
association of producers (community right). person/company (individual right).
For instance, Assam Muga Silk has GI
conferring rights to all such traders from that
community.
the Geographical Indications of Goods The Indian Trademarks Act 1999 governs
(Registration and Protection) Act 1999 trademarks,
governs GIs.
 205

Mohan Meakin v. Scotch Whisky,

the Delhi High Court upheld the order of Registrar of Trademark by which he refused to register
the applicant's mark proposed to be used on Whisky produced in India consisting of word
"Highland Chief and the device of the head and shoulder of gentleman dressed in Scotch
Highland costume-a well-known symbol of Scotish origin.

Scotch Whisky Association v. Bavara Sahakar Karkhana,

the Scotch Whisky Association succeeded in restraining defendant from selling their Whisky
under the description 'Blended with Scotch' alongwith the device of Scottish drummer wearing
a kilt and the word 'Drum Beater"

Conclusion

The only thing that a GI and a trademark have in common is that they both serve as source
indications. The main distinction is that, whereas a trademark identifies a thing or service as
coming from a certain manufacturer, a geographical indicator indicates the geographical
location from which the product comes, not the creator of the good in question. Both types
of intellectual property are used to identify a product or service.
 206

9. What is geographical indication? Explain its essential attributes

Introduction

In the Indian context, Geographical Indications (GIs) has evolved in the past few years as a
prominent form of the concern of intellectual property. For the protection of GI the parliament
enforced The Geographical Indications of Goods (Registration and Protection) Act, 1999,
together with The Geographical Indications of Goods (Registration and Protection) Rules,
2002.
India, as a member the World Trade Organization, passed the Geographical Indications of
Goods (Registration and Protection) Act, 1999 which was enforced from 15 Sep 2003. GI Act
was established to register as well as protect goods relating to GIs.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Essential attributes

Salient features of GI

Write everything known about GI

 207

10.What are the prohibitions imposed on the registration of geographical

indication under Geographical Indications of Goods (Registration and
Protection) Act, 1999?

Introduction

The registration of Geographical Indications (GIs) in India is governed by the Geographical

Indications of Goods (Registration and Protection) Act, 1999. The process of GI registration
begins with the identification of a specific geographical area and the goods associated with it.
The applicant must establish a direct and clear link between the unique qualities, reputation, or
other characteristics of the goods and their geographical origin. This link is crucial to determine
the eligibility for GI protection.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Sec 9: Prohibition of registration of certain geographical indications.

A geographical indication

(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in force; or

(c) which comprises or contains scandalous or obscene matter; or

(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India; or

(e) which would otherwise be disentitled to protection in a court; or

(f) which are determined to be generic names or indications of goods and are, therefore, not or
ceased to be protected in their country of origin, or which have fallen into disuse in that country;
or
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(g) which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons that the goods originate in another territory,
region or locality, as the case may be, shall not be registered as a geographical indication.

Sec 24: Prohibition of assignment or transmission, etc.

Notwithstanding anything contained in any law for the time being in force, any right to a
registered geographical indication shall not be the subject matter of assignment, transmission,
licensing, pledge, mortgage or any such other agreement:

Provided that on the death of an authorised user his right in a registered geographical indication
shall devolve on his successor in title under the law for the time being in force.

Sec 25: Prohibition of registration of geographical indication as trade mark

Notwithstanding anything contained in the Trade Marks Act, 1999 (47 of 1999), the Registrar
of Trade Marks referred to in section 3 of that Act, shall, suo motu or at the request of an
interested party, refuse or invalidate the registration of a trade mark which

(a) contains or consists of a geographical indication with respect to the goods or class or classes
of goods not originating in the territory of a country, or a region or locality in that territory
which such geographical indication indicates, if use of such geographical indications in the
trade mark for such goods, is of such a nature as to confuse or mislead the persons as to the
true place of origin of such goods or class or classes of goods;

(b) contains or consists of a geographical indication identifying goods or class or classes of

goods notified under sub-section (2) of section 22.

Conclusion

The necessity for intellectual property rights protection is expanding along with its scope. India
has demonstrated a strong grasp of the importance of these rights by successfully ratifying and
signing the TRIPS Agreement. Since the Darjeeling Tea was the first GI registered under the
Act, the execution of GIs in India has increased. To safeguard the people's rights and culture,
the Indian government has worked to make the registration procedure easier.
 209

6 MARKS

1. Write a note on Rights of a registered Geographical Indication holders

Introduction

In the Indian context, Geographical Indications (GIs) has evolved in the past few years as a
prominent form of the concern of intellectual property. For the protection of GI the parliament
enforced The Geographical Indications of Goods (Registration and Protection) Act, 1999,
together with The Geographical Indications of Goods (Registration and Protection) Rules,
2002.
India, as a member the World Trade Organization, passed the Geographical Indications of
Goods (Registration and Protection) Act, 1999 which was enforced from 15 Sep 2003. GI Act
was established to register as well as protect goods relating to GIs.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.

Sec 21: Rights conferred by registration.

(1) Subject to the other provisions of this Act, the registration of a geographical indication
shall, if valid, give,—

(a) to the registered proprietor of the geographical indication and the authorised user or users
thereof the right to obtain relief in respect of infringement of the geographical indication in the
manner provided by this Act;

(b) to the authorised user thereof the exclusive right to the use of the geographical indication
in relation to the goods in respect of which the geographical indication is registered.

(2) The exclusive right to the use of a geographical indication given under clause (b) of sub-
section (1) shall be subject to any condition and limitation to which the registration is subject.

(3) Where two or more persons are authorised users of geographical indications, which are
identical with or nearly resemble each other, the exclusive right to the use of any of those
 210

geographical indications shall not (except so far as their respective rights are subject to any
conditions or limitations entered on the register) be deemed to have been acquired by anyone
of those persons as against any other of those persons merely by registration of the geographical
indications, but each of those persons has otherwise the same rights as against other persons as
he would have if he were the sole authorised user.

Conclusion

The necessity for intellectual property rights protection is expanding along with its scope. India
has demonstrated a strong grasp of the importance of these rights by successfully ratifying and
signing the TRIPS Agreement. Since the Darjeeling Tea was the first GI registered under the
Act, the execution of GIs in India has increased. To safeguard the people's rights and culture,
the Indian government has worked to make the registration procedure easier.

2. State difference between Geographical Indication and Trade Mark.

Refer 10 marks qstn 8

3. Write a note on infringement of Registered Geographical Indications.

(2)

Introduction

As in the case of other forms of intellectual properties viz. patent, trademark and copyright,
any unauthorized use of registered geographical indication or use of geographical indication
by person other than authorized user would amount to infringement. However, the Act
specifically lays down as to when the infringement will occur and what are the remedies. The
Act has also laid down penalty and punishment for falsification of geographical indications.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.
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When Geographical Indication is infringed (Section 22)

A registered geographical indication is infringed by a person who, not being an authorized user
thereof:-

(a) uses such geographical indication by any means in the designation or presentation of goods
that indicates or suggests that such goods originate in a geographical area other than the true
place of origin of such goods in a manner which misleads the persons as to the topoli
geographical origin of such goods; or

(b) uses any geographical indication in such manner which constitutes an act of unfair
competition including passing off in respect of registered geographical indication.

Any person who is not an authorized user of a geographical indication registered under this Act
in respect of the goods or any class or classes of goods notified under sub-section (2), uses any
other geographical indication to such goods or class or classes of goods not originating in the
place indicated by such other geographical indication or uses such other geographical
indication to such goods or class or classes of goods even indicating the true origin of such
goods or uses such other geographical indication to such goods or class or classes of goods in
translation of the true place of origin or accompanied by expression such as "kind", "style"
imitation or the like expression, shall infringe such registered geographical indication.

However, where the goods in respect of which a geographical indication has been registered
are lawfully acquired by a person other than the authorized user of such geographical indication
further dealings in those goods by such person including processing or packaging, shall not
constitute an infringement of such geographical indication, except where the condition of goods
is impaired after they have been put in the market.

Tea Board, India v. ITC Ltd.,

the issue was relating to dispute over use of word "Darjeeling Lounge" by defendant for its
lounge. Plaintiff, Tea Board claimed that the word "Darjeeling" is a registered G.I. and use of
word "Darjeeling Lounge" by defendant amounts to an infringement of plaintiff's G.1.

The Court while rejecting the contention of plaintiff held that "Darjeeling Lounge" was an
exclusive area within confine of its hotel, and there was scarcely any likelihood of deception
or confusion in the lounge being name "Darjeeling for the plaintiff to be granted to any order
that it seeks.

The Scotch Whisky Association and Others v. Golden Bottling Ltd.

the Court upheld the contention of plaintiff that defendant cannot use the word "Scot" or "Red
Scot" or any other name containing the word "Scot" or any word similar thereto so as to pass
off its whisky as "Scotch Whisky". The Court speaking through Justice Madan B. Lokur (as he
 212

then was) not only granted permanent injunction but also awarded damages and cost of
litigation.

Remedies Against Infringement (Section 67)

The Court may grant following relief in any suit for infringement or for passing off goods:

(i) Injunction

(ii) Damages or account of profit, and/or

(iii) Delivery up of the infringing labels and indication for destruction or erasure.

Conclusion

The necessity for intellectual property rights protection is expanding along with its scope. India
has demonstrated a strong grasp of the importance of these rights by successfully ratifying and
signing the TRIPS Agreement. Since the Darjeeling Tea was the first GI registered under the
Act, the execution of GIs in India has increased. To safeguard the people's rights and culture,
the Indian government has worked to make the registration procedure easier.

4. 'X' a person wants to obtain Geographical Indication registration for

a variety of chilly grown in the region to the exclusion of other. Advise
him

5. Rama and Laxman are authorised users who have registered for
identical or nearly resembling Geographical indication. Rama claims
an exclusive right over it. Will he claim it?
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6. Write a note on 'Basmati Rice Case'. (2)

It was in 1997 that India was serious to protect its geographical indications. The reason was
that on September 2, 1997 United States Patent and Trademark Office granted patent no.
5663484 to Ricetec Inc., a U.S. multinational company based in Alvin, Texas for new "lines
and grains" in the name of "Basmati rice. Ricetec claimed that the new varieties have the better
characteristics than the original Basmati rice and can be successfully grown in specified
geographical areas in North America. Further, it had been using the trademarks 'Texmati'
"Kasmati', and 'Jasmati' for several years to sell its version of Basmati rice. The controversy
therefore was twofold: firstly, according to India, the grant of paten was invalid; and secondly,
marketing of rice by Ricetec Inc. in the name of Basmati' which according to India was a
geographical indication in India should not be allowed.

As is known the world over, the long-grained aromatic rice variety known as Basmati is a
traditional produce vastly grown in sub-Himalayan areas. It is being grown in India and
Pakistan for hundreds of years and farmers have developed various varieties by employing
traditional methods and practices. One of the arguments of India was that Basmati is a
geographical indication and since it is being grown in India and Pakistan for centuries, no other
country can allow its persons to use this indication. It is noteworthy that after the establishment
of World Trade Organization (WTO), there is a substantial duty cut on the Indian Basmati rice
in Europe, which has the world's highest demand for premium rice Consequently, the
competitiveness of Indian Basmati has increased greatly.

As far as the grant of patent was concerned, the contention of Ricetec Inc. was that its patent
covered new Basmati "lines and grains" which were in improvement over the previous
varieties. With reference to the use of geographical indication Basmati," the contention of
Ricetec Inc. was that it was a generic name for types of aromatic rice and not a specific variety
of rice that was native to India. This term, it was claimed, had been used for decades in a generic
way describing this variety from other sources such as American Basmati, Uruguayan Basmati
and Thai Basmati.
The question now arises is whether Basmati fits into the definition of a geographical indication
given in the TRIPS Agreement? 'Basmati' is not the name of a geographical area but the
product's reputation is inextricably linked to its region of origin, viz. the Indian sub-continent.
'Basmati' therefore, qualifies for the protection under TRIPS Agreement. The Ricetec however
contended that even if the term did fit in the TRIPS definition at one point of time, it has fallen
into the public domain and has become generic through lack of efforts to protect the name
internationally. It was further contended that Ricetec clearly labels its products as 'American
type basmati rice'. This is a practice which is prohibited under TRIPS Agreement for
geographical indications relating to wines and spirits only.

After a hard work of two and a half years, India put together the data and challenged the patents
of Ricetec Inc. in April 2000. The U.S. Patent and Trademark Office (USPTO) issued patents
to only three strains of hybrid Basmati grain out of 20 claims, developed by the Ricetec while
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rejecting a more sweeping claim by the company. The three strains of Basmati to which
protection was afforded, were patently and noticeably different.

As far as the use of geographical indication 'Basmati' by Ricetec Inc. was concerned, the Patent
Office mandarins, stated that Ricetec could use the Basmati appellation because it was not a
trademarked name or a geographic indicator, unlike Champagne or Port, which were specific
to a region. It was further stated that Basmati was not a geographic indicator even in India. It
was grown all over India, Pakistan and even in Thailand. was also stated that the Basmati a
turbulent history ever since the perceived transgression in the mid-1990s was saga had first
reported when Texmati and Jasmati hit the shelves of grocery chain stores.

India enacted the Geographical Indications of (Registration and Protection) Act, 1999 which is
the first specific law which provides for the registration and protection of the geographical
indications.

7. Write a note on the geographical indications registered in India

Introduction

In the Indian context, Geographical Indications (GIs) has evolved in the past few years as a
prominent form of the concern of intellectual property. For the protection of GI the parliament
enforced The Geographical Indications of Goods (Registration and Protection) Act, 1999,
together with The Geographical Indications of Goods (Registration and Protection) Rules,
2002.
India, as a member the World Trade Organization, passed the Geographical Indications of
Goods (Registration and Protection) Act, 1999 which was enforced from 15 Sep 2003. GI Act
was established to register as well as protect goods relating to GIs.

Definition

Sec 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999
“geographical indication”, in relation to goods, means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.
 215

IMPORTANT G.I’S OF INDIA & THEIR FEATURES:

1. Darjeeling Tea:

processed and grown in Darjeeling and Kalimpong Districts of West Bengal. Got its G.I
registered in the year 2004. Tea leaves are processed as black tea, green, white and oolong teas.
It contains floral and fruit aroma with muscatel flavour. They are harvested from March to
November in a temperature of 90C- 95C.

2. Aranmula Kannadi:

it is a handmade metal alloy mirror made in Aranmula a small town in Pathanamthitta, Kerala,
India. It eliminates secondary rlections. Alloy utilized is a mixture of copper and tin. It is one
of the 8 auspicious items given to a bride at her wedding as a matter of good luck.

3. Mysore Agarbathi:

It got its G.I in the year 2005. It is famous with the brand name Cycle Pure Agarbathi. It was a
paste of natural ingredients mixed with charcoal, Gijit, herbs, roots flowers which is rolled into
bamboo sticks. It is into market since 1900s. the proportion of mixing was of importance.

4. Kanchipuram Silks:

got its registration during the year 2005-2006. It is the silk saree made in the Kanchipuram
region in Tamil Nadu, India. These sarees are worn as bridal and special occasion saris by most
women of Southern India. The saris are woven in pure mulberry silk thread. The border and
body of the sari are woven separately and later it is joined. Because of this even if body tears
apart, border will never be effected. Temple borders, checks, stripes and floral are the designs
found quite often on Kanchipuram sarees.

5. Channapatna Toys:

It is a form of wooden toys and dolls manufactured in the town of Channapatna, Ramanagara
district of Karnataka State. It is also called as gombegala ooru. Origin of these toys can be
traced back from the times of Tippu Sultan, the historic ruler of Mysore. He provided royal
patronage for wooden artists.. the wood used for manufacturing is ivory wood, and other woods
including rubber, sycamore, cedar, pine and teak. Vegetable dyes are used for colouring which
are safe for children.

6. Coorg orange:

originated from Kodagu, Karnataka, got its G.I status in the year 2006. It is greenish yellow in
colour, with tight skin and sweet and sour taste. It is grown in hilly terrain with well-drained
soil and heavy rainfall.
 216

7. Mysore Betel Leaf:

It is also known as “Mysore Chigurele”. It is heart shaped betel leaves grown in Mysore region.
It is consumed as betel quid or paan with or without tobacco. It got registered in the year 2005.
They differ from other betel leaves with their smooth texture and hot taste. It was first grown
in the gardens of the Mysore maharaja and later in Poorniah Choultry near Vidyaranyapuram
junction, Mysore. It requires warm and humid weather to grow properly with the temperature
between 10 to 40 degrees. The presence of black clay in the soil results in its uniqueness.

8. Alleppey Green Cardamom:

it is grown in Cardamom hills of Idukki District, Kerala. It acquired its G.I in the year 2005. It
is the most high quality cardamom with high smell, appears brown in colour and is known for
its essence while preparing sweets.

9. Tirupathi Laddu:

the laddu sweet offered as naivedhyam to venkateshwara at Tirumala in Tirupati, Chittoor

District, Andhra Pradesh, India. It is prepared within temple kitchen as ‘potu’ by temple board.
It acquired its G.I in the year 2009, ingredients used to prepare is Gram flour, cashew nuts,
cardamom, ghee, sugar, sugar candy and raisins. It was registered under classification ‘food
stuff’ in order to prevent black marketing.

10. Kullu Shawl:

Originated by indigenous Kullvi people in 1940s. they are with geometric designs at both ends.
They are crafted in yak’s wool, sheep wool, merino wool, angora wool, local sheep wool. They
are worn by both men and women. Often bright colours are used while producing.

11. Udupi Matti Gulla:

It is grown in a village called “Matti” of Udupi district. It is said to have grown since 400 years
in Matti under a legend Sri Vadiraja Tirtha of Sode Vadiraja Matha, Udupi. It got registered in
the year 2011. It is cultivated between Udyavar and Swarna River. Apart from Matti, it is grown
in other villages like Pangala, Kopla and Kaipunjal. It is green in colour and is grown after
monsoon season i.e., between September and October. It is grown in low moisture content and
known for its unique taste. It is used for Udupi cuisine especially the Sambar.

12. Appemidi Mangoes:

These trees are generally grown in river valleys of Aghanashini, Kumudvathi, Kali, Varada,
Bedthi and Sharavati in Uttara Kannada and Shimoga districts. It holds importance in pickle
industry. They are used to make local delicacies like gojju, chutney, appe huli and thambuli.
They act as natural preservative. Jeerige appe, Karpoora appe, Nimbe appe, Sada midi, Malanji,
 217

Ananta Bhattana and Sagar are some of the most popular varieties of Appemidi. It got
registered in the year 2009.

13. Bangalore Blue Grapes:

This variety is cultivated in Chikkaballapur and Kolar districts since 150 years. It is known for
its “foxy” flavour. It grows in red sandy loam soil at a day temperature of about 3537 degree
Celsius and night temperature of 12 to 15 degree Celsius. They have typical colour with slip
skin nature. They are used to prepare jam and jellis and wine.

14. Bangalore Rose Onion:

It is locally called as “Gulabi eerulli”. They are grown in districts of Bangalore Urban,
Bangalore Rural, Chikkaballapur & Kolar due to which it been identified as Bangalore Rose
Onion. It was granted with Geographical Indication status in 2015 with patent rights for the
cultivation of the variety to Bangalore Rose Onion Growers Association headquartered in
Chikkaballapur. These onions appear in bulb shape with flat base and are spherical. They have
deep scarlet red colour which contain high level of protein. They’re grown in soil with pH
between 6.5 and 7, atmospheric humidity of 70 to 75% and average temperature of 25 degree
C to 30 degree C. These weather conditions are exclusively found in and around Bangalore
region. They’re mainly used for the preparation of pickles. These onions are rarely used in
India but are exported in large quantities to countries like Malaysia, Singapore, Indonesia,
Bahrain, UAE, Bangladesh & Sri Lanka.

15. Byadagi Chilli:

Byadgi menasinakai is famous variety grown in Karnataka State. It was accorded with GI status
in February, 2011. It is named after the town Byadgi which is located in Haveri District of
Karnataka. It has second largest turnover amongst chillis all over India. They’re known for
their deep red colour and are less spicy. They are used for preparing many items under South
Indian Delicacies like Bisibelebath, Sambar, Chutneys, MTR Food products and Udupi Cuisine
etc. Oil extracted from these chillis is used in the preparation of nail polish and lipsticks. These
oils are preserved under cold storage with low temperature of 4 to 6 degree Celsius. One ton
chillis give 50litres of oil which will be further sent to Kerala for refining process and from
there it’s been exported to countries like US, Japan and Europe.

Byadgi Chillis are of 2 types i.e., Dabbi and Kaddi. Byadgi dabbi are of small plump type chilli
which has more seeds and are less spicy. They are best suited for masala preparation and oil
extraction which can be used to prepare cosmetic products like nail polishes and lipsticks.
Many companies used this for making their food products. The Kaddi type is thin, long and
has fewer seeds. These chilli plants begin flowering 40 days after transplantation whereas other
flowers bloom after 60 to 80 days after transplanting. They are harvested from January to May.
 218

8. X' an authorised user holding a right in a registered geographical

indication dies. On whom does his right devolve?

9. The plantiff challenges use of impugned name 'DARJEELING' for the purpose of
Lounge as it threatens the commercial activities of these persons who are actually
in the business of the Darjeeling tea against the defendant before the High court.
Decide

10. The petitioner challenges the grant of Geographical Indication to 'Tirupati

Laddus' to Tirumala Tirupati Devasthanam, a single entity neglecting community
interest of other people living in Tirupati and further causing prejudice to Article
25 of the Constitution of India. Decide
 219

UNIT 5

10 MARKS

1. Examine the provisions of Paris Convention, 1883. (2)

Or
Paris Convention guarantees the protection of Intellectual Property. Discuss.
2. Explain the salient features of 'WIPO' (World Intellectual Property Organization)
3. Explain the important organs of World Intellectual Property Organisation (WIPO).
4. Explain the functions of World Intellectual Property Organization (WIPO).
or
Explain functions of WIPO
5. Discuss the salient features of madrid convention.
Or
Explain features of Madrid convention
Or
Discuss the features of Madrid Convention for the International registration of marks.
6. Explain objects of Paris convention.
7. Explain salient features of Patent Co-operation Treaty

6 MARKS

1. Write a note on 'Patent Co-operation Treaty'. (PCT) (3)

2. Write a note on Madrid Convention. (2)
3. Write a note on provisions of Paris convention.
4. Write a short note on World Intellectual Property Organisation (WIPO).
5. Write a note on convention countries.
6. International Bureau of WIPO
7. WIPO Conference
8. International Registration of mark
9. Co-ordination Committee of WIPO
 220

10 MARKS

1. Examine the provisions of Paris Convention, 1883. (2)

Or
Paris Convention guarantees the protection of Intellectual Property.
Discuss.

Introduction

The Paris Convention for the Protection of Industrial Property (“Paris Convention” or just
“Convention”) is one of the first, and arguably most important, of the various multilateral
treaties protecting intellectual property. The Paris convention is for the protection of the
industrial property which was signed in Paris, France on 20 March 1883. It is one of the first
intellectual property treaties and it's been established for the union for the protection of
industrial property. The Paris convention, concluded in 1883, was revised at Brussels in 1990,
at Washington In 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at
stock in 1967, and was amendment in 1979. It is formed for the protection of industrial
property.

The Convention’s Substantive Provisions

1. The provisions of the Convention fall into four broad categories:

2. national treatment;
3. right of priority;
4. common rules for patents, marks and unfair competition; and
5. administrative framework and final clauses.

NATIONAL TREATMENT

The Convention guarantees national treatment through its Articles 2 and 3. In the terms of the
Convention, national treatment requires that each member state grant the same quality and
quantity of protection to eligible foreigners as it grants to its own nationals in respect to the
intellectual property enumerated in the Convention.

The national treatment undertaking assures foreigners, both individuals and juristic entities, not
only that their patents and marks will be protected in the foreign nation, but also that they will
not be disadvantaged vis-à-vis nationals in terms of the scope and quality of intellectual
property protection that will be accorded them in the foreign nation. The Convention applies
the principle of national treatment in lieu of and to the exclusion of the principle of reciprocity.
A nation can neither advantage nor disadvantage a foreigner in terms of the protection it
accords the foreigner based upon the protection the foreigner’s nation may extend to nationals
of the forum state. In other words, nation A cannot grant a national of nation B a shortened
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patent term simply because the patent term of nation B is short relative to the patent term of
nation A.

The concept of national treatment requires an even handed approach, as between nationals and
those foreigners eligible for benefits under the Convention, both in terms of the codified laws,
and also in terms of the practices of member states tribunals, their national courts as well as
their administrative tribunals (the patent and trademark agencies). An exception to the principle
of national treatment is found in Article 2(3), which expressly allows member states to impose
conditions relating to judicial or administrative procedure and to jurisdiction, as for example
requiring foreigners to designate or appoint an agent for service or to post a bond for litigation,
in conjunction with making application for patent or trademark protection.

The principle of national treatment does not assure any minimum level of substantive rights.
For example, even though Switzerland was an adherent of the Convention from its inception,
Switzerland had no obligation to accord foreign nationals patent rights within Switzerland
during that portion of its history (until fairly recently) when Switzerland was without laws
protecting patents. Similarly, although service marks are specifically recognized by the
Convention, the Convention also provides that member states have no specific obligation to
recognize or register service marks. 80 Members of the Paris Union need only extend foreigners
the quality and quantity of intellectual property protection the member nation extends to its
own citizens, and only with respect to those types of intellectual property in regard to which
protection is assured under the Convention.

THE RIGHT OF PRIORITY

The right of priority, sometimes referred to as the “Convention priority right, “Paris Convention
priority right,” or “Union priority right,” is found in Article 4. It provides that an applicant
eligible for Convention benefits who files a first regular patent or trademark application in any
of the countries of the Union, can then file subsequent applications in other countries of the
Union for a defined period of time which subsequent applications will have an effective filing
date as of the first filed application.

For (utility) patents and utility models (petty patents), the defined period is one year. For
industrial designs (design patents) and trademarks, the defined period is six months. The
duration of the priority periods are designed to take into account the conflicting interests of the
applicant on the one hand and of third parties on the other. The practical effect of the priority
right described in Article 4B is that second and subsequently filed applications filed in a Union
country within the priority period are treated as if filed on the date the first application was
filed.

The priority right is important, in the context of both patents and trademark applications, in
that all applications filed within the priority right period will have priority over any intervening
application for the same or closely similar invention or mark that may have been filed in that
country by some third party. So, if a national of a Paris Convention nation files a first trademark
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application in country A, and nine months later files a second application for the same mark in
country B, but meanwhile some five months after the first application a second applicant files
an application for the same or very similar mark for the same or similar goods in country B,
the first applicant will have priority over the second applicant in country B because the
application in country B by the first applicant, although second in time in that country, will be
treated as if filed at the time of that applicant’s first application in country A.

The priority right is additionally important in the context of patent applications because it
preserves the novelty of the invention within the countries of the Union notwithstanding any
publication, exhibition or other act capable of destroying novelty of the invention during the
priority period. So, for example, an applicant eligible for Convention benefits can file a first
patent application in country A, and thereafter request early publication from the patent office
of that country, describe the invention in an industry journal, exhibit the invention in a trade
show, and/or offer to sell or use publicly the invention, all during the one year priority period
following the filing of a first application, and still file before the end of that first year period
parallel patent applications in countries B, C and D of the Union, without losing eligibility for
patent protection in these countries notwithstanding that countries B, C and D are all countries
whose patent laws insist on absolute novelty of invention without the benefit of a grace period.

This Convention priority right allows the applicant desiring protection is several countries of
the Union the advantage and convenience of not having to file multiple applications
simultaneously in all Union countries in which protection is desired without risking that others,
particularly imitators in the case of marks, will file on the same or similar invention or mark
between the time a first application is filed and a subsequent application is made in a Union
country during the priority period, and also without risking loss of novelty due to publication
or some other act capable of defeating novelty that may occur in this interim.

The priority right is only applicable with respect to a “first” application for a given invention
or mark. The priority period does not begin to run again in the case of a subsequently filed
application for patent on an invention that incorporates in part the invention for which a patent
application was previously filed, or for a mark that resembles or incorporates in part a mark
previously applied for. An applicant is not permitted to elongate the priority period in this
manner, but rather is obliged to file all applications for the same or related inventions and marks
in the Union member countries within the applicable priority period in order to obtain the
benefits of the Convention priority right.

The right of priority may be invoked by a successor in title and the subsequent applications
must concern the same invention or mark, but the category of protection applied for need not
be identical in each case. As such a subsequent utility model application can claim priority
based upon a first patent application, and vise versa, so long as the subject matter of the two
applications are the same.
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Although rights of priority are limited to the same invention or mark, multiple priorities and
partial priorities may be claimed with reference to first filed patent applications, and priorities
may even be combined from first applications filed in different member countries.

A first application must be “duly filed”, meaning comprising elements sufficient to obtain a
filing date in accordance with the applicable national law. Provisional applications, and
applications filed under multinational treaties, including PCT and EU patent applications, can
qualify as a “first” application for purposes of the Union priority right.

The fate of the first filed application has no impact on the priority right. Withdrawal, rejection
or abandonment of the “first” correctly filed application cannot destroy or alter in any way the
right of priority of subsequently filed eligible patent and trademark applications.

COMMON RULES FOR PATENTS

Among the Convention provisions that provide substantive rules protecting patents and
patentees are the following:

The Principle of Independence of Patents:

Embodied in Article 4bis is the principle that a patent application in one country of the Union
is examined and granted or denied independent of applications for patents for the same or
related inventions filed in other countries within and without the Union. Also, according to
Article 4bis(5), patent terms are measured in accordance with the applicable national law
without regard to (not shortened by) a priority claim.

Right of the Inventor to be Mentioned:

Article 4 provides that the “inventor has the right to be named as such in the patent.”
Patentability not Effected by Restrictions on the Product: Article 4quarter provides that a patent
shall not be refused or invalidated because the product patented or obtained by means of a
patented process is subject to restrictions on its sale or importation under the domestic law.

Importation of Patented Products or Products Made from Patented Processes:

Article 5A(1) provides that importation into a member country of products for which a patent
has been granted in that country manufactured in another member country cannot result in
forfeiture of patent rights in the country of importation.

Article 5 quarter provides that with respect to products imported into a member country
manufactured by a process patented in the country of importation, the patentee will have all the
rights with respect to the imported product that would normally be accorded the patentee with
respect to products manufactured in that country. This latter provision protects the patentee of
a process from importation into the country of finished products manufactured by the patented
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process outside the country of importation, but only where the domestic patent laws of the
country of importation extend the patent right to products manufactured by patented processes.

Failure to Work and Compulsory Licenses:

Article 5A(2) through (4) allows countries to enact protectionist legislative measures granting
compulsory licenses in order to prevent abuses that might result from the exclusive rights
conferred by a patent for invention, namely the failure to work or to work sufficiently the
patented invention within the member country, but the failure to work an invention cannot
result in forfeiture of the patent except in cases where the grant of a compulsory license would
not have been sufficient to prevent the abuse, and then only pursuant to a proceeding instituted
no sooner than two years following the grant of the first compulsory license. Compulsory
licenses must be non-exclusive, and cannot be granted before the later of four years from the
date of filing of the patent application or three years from the grant of the patent. Compulsory
licenses may also be granted in special cases, without alleged abuse on the part of the patent
owner, where the patent affects a vital public interest, for example, in the fields of defense or
public health. Compare Article 27 of TRIPS prohibiting countries from adopting working
requirements for patents.

Grace Period for Maintenance Fees:

Article 5bis guarantees those holding patents in member states a grace period of at least six
months to pay prescribed maintenance fees, and allows member states to provide for the
restoration of patents that have lapsed by reason of non- payment of maintenance fees.

Patents in International Traffic:

According to Article 5ter, patented devices on board ships, aircraft or land vehicles of other
member countries that enter temporarily or accidentally within the territory of another member
country need not obtain the approval or license from the patent owner by virtue of the
temporary or accidental intrusion.

Inventions Shown and Marks Exhibited at International Exhibitions:

According to Article 11 of the Convention, member countries are obliged to grant temporary
protection, in the form of a right of priority or other assurance against the destruction of novelty,
to inventions, models, designs and marks in respect of goods exhibited at “official” or
“officially recognized” international exhibitions held in the territory of a member country.

COMMON RULES CONCERNING TRADEMARKS

Among the Convention provisions providing substantive rules protecting marks and their
proprietors are the following:
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Cancellation for Non-Use:

Article 5C(1) allows countries to enact protectionist legislation for the cancellation of marks
registered but not used within the member country, but only after a reasonable period has
elapsed, and then only if the owner fails to justify the non-use. What constitutes a reasonable
period is left to domestic law. Compare Article 19(1) of the TRIPS Agreement, which permits
cancellation of registrations only after an uninterrupted period of three years of non-use.

Use in a Form Different from the Form Registered:

Article 5C(2) protects the use of a mark in a form different from the form in which it has been
registered, as long as the distinctive character of the mark is not thereby altered.

Concurrent Use:

Article 5C(3) allows for the concurrent use of the same mark by two or more establishments
that are co-proprietors, as long as such use does not mislead the public and is not otherwise
contrary to public interest.

Grace Period for Renewal Fees:

Article 5bis obliges the nations of the Union to grant trademark registrants a grace period of at
least six months for the payment of renewal fees.

Independence of Trademarks:

As in the case of patents, and flowing from the principle of national treatment, Article 6 of the
Convention provides that marks registered in the various countries of the Union shall be
regarded as independent of one another, including of the country of origin; and that the
registration of marks may not be refused, nor invalidated, on the ground that the registration or
renewal of the same or related mark has not been effected in the country of origin.

Protection of Trademarks Registered in the Country of Origin:

Article 6quinqies sets forth an important exception to the principle of the independence of
marks embodied in Article 6. According to Article 6quiquies, marks duly registered (not simply
applied for) in the country of origin (being a member country in which the registrant has a real
and effective industrial or commercial establishment, is domiciled or is a national) must be
accepted for filing and protected telle quelle (as is) in the other countries of the Union, subject
to enumerated reservations that justify a refusal to register, to wit, that the mark would infringe
acquired rights of third parties, is devoid of distinctive character, is contrary to morality or
public order, or is of a nature to be liable to deceive the public, and also subject to provisions
in Article 10bis concerning unfair competition. Once registered pursuant to this provision, the
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renewal of such marks is not dependent upon renewal of the registration in the country of
origin.

Protection for Unregistered Well-Known Marks:

Another notable provision concerning marks, found in Article 6bis, protects unregistered marks
that qualify as “well-known” in a member nation. Union nations are obliged to refuse to
register, or to cancel if already registered, and prohibit the use within their territory, of marks
liable to create confusion with another trademark already well-known in that country for
identical or similar goods. Because the well-known mark has already acquired goodwill in the
subject country, allowing the registration or use of a confusingly similar mark constitutes an
act of unfair competition and misleads the public. Whether a mark is well-known is determined
by the applicable domestic law, although a trademark need not have been used in the country
to be well-known there. For example, the supreme court of South Africa ruled in a 1996
decision 4 that the mark McDonald’s® was entitled to protection as a “well-known trademark”
under Article 6bis of the Paris Convention despite having never been used as such at that time
within South Africa. Although the concept of “well-known” marks is similar to the provision
found in U.S. trademark law protecting “famous marks” from dilution, the protection for
unregistered well-known marks under the Paris Convention is limited to marks used on the
same or similar goods, whereas the U.S. anti-dilution law protects against the use of famous
mark on unrelated goods and services. Marks that have been registered for a period of five
years or more in Union member countries may not be cancelled under the provisions of Article
6bis notwithstanding that they may conflict with an unregistered well-known mark.

State Emblems, Official Hallmarks and Emblems of International Organizations:

Article 6ter oblige member states to refuse to register, and to cancel and prohibit the use within
their territory, of marks that comprise enumerated distinctive signs, such as flags, emblems,
hallmarks and the like, of the member countries and certain international organizations.

Assignment of Trademarks:

Article 6quarter provides that in the case of member countries whose laws require for a valid
assignment the concurrent transfer of the business or goodwill to which the mark belongs, it is
sufficient that the business or goodwill located within the member country be transferred, but
the member country is not obliged to recognize an assignment of a nature as to mislead the
public.

Service Marks:

Article 6sexies was introduced into the Convention in 1958 to deal with service marks,
allowing but not requiring member countries to undertake to protect service marks. Compare
Article 15 of the Trademark Law Treaty of 1994 (“TLT”) that requires contracting parties
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register service marks and apply to such marks the protective provisions of the Paris
Convention concerning trademarks.

Collective Marks:

Article 7bis obliges member nations to accept for filing and protect collective marks belonging
to “associations” as long as the existence of the association is not contrary to the laws of the
country of origin, and even if the association is not constituted or recognized in the member
country in which protection for the collective mark is sought.

Industrial Designs:

Article 5quinquies provides only that “industrial designs shall be protected in all countries of
the Union.” Because the Convention fails to set out what form such protection might take,
member countries may choose to satisfy this obligation through industrial design specific
legislation, copyright laws, or laws protecting against unfair competition.

Trade Names:

Article 8 obligates members of the Union to protect trade names without the obligation of filing
or registration, irrespective of whether the trade name forms a part of a trademark. No further
details are offered. While member countries cannot condition trade name protection on filing
or registration, they may satisfy their undertaking to protect trade names either through trade
name specific legislation, or more generally, through unfair competition laws.

Appellations of Origin and Indications of Source:

The protection of geographical indications, including appellations of origin and indications of

source, are among the objects enumerated in the Paris Convention, Article 1(2). Article 10
protects against any direct or indirect use of a false indication of source or identity of the
producer, manufacturer or merchant, and Article 10bis, discussed below, protects also against
any act of unfair competition through the use of an indication. Remedies, if available under
domestic law, include those referenced in Article 9 concerning the seizing of goods bearing
false indications and the prohibition on the importation of such goods. Article 10(2) empowers
interested natural persons and legal entities to prosecute actions within the affected nation,
while Article 10ter requires member countries to allow interested federations and trade
associations to take actions with a view to the repression of such acts.

COMMON RULES CONCERNING UNFAIR COMPETITION

Many of the common rules concerning trademarks and other indications of origin, discussed
above, are relevant also to the Convention’s stated objective of repressing unfair competition.
The Convention provisions specific to unfair competition generically are discussed below.
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Unfair Competition:

Article 10ter of the Convention obligates members of the Union “to undertake to assure to
nationals of the other countries of the Union appropriate legal remedies effectively to repress
all the acts [of unfair competition] referred to in Articles 9, 10, and 10bis.” The provision fails
to explain what might constitute “appropriate legal measures” and leaves the details and
standard for these measures to each country to decide. Article 9 refers to goods unlawfully
bearing a trademark or trade name. Article 10 refers to goods, discussed above, bearing a false
appellation of origin or indication of source. Article 10bis of the Convention offers a more
generic concept of unfair competition. It is the Article 10bis generic concept of unfair
competition that, modernly, has generated the most interest and debate of all the provisions of
the Paris Convention.

Unfair Competition Under Article 10bis: Article 10bis, like Article 10ter, obligates “countries
of the Union to assure nationals of such countries effective protection against unfair
competition.”

Article 10bis offers in the manner of a minimum standard the definition that unfair competition
constitutes “any act of competition contrary to the honest practices in industrial or commercial
matters.” The article goes on to give the following three examples of acts that constitute unfair
competition: (1) “all acts that create confusion by any means whatever with the establishment,
the goods, or the industrial or commercial activities, of a competitor,” reflecting traditional
concepts trademark infringement and passing off; (2) “false allegations in the course of trade
of such a nature as to discredit the establishment, the goods, or the industrial or commercial
activities, of a competitor,” as for example, trade liable and false advertising; and (3)
“indications or allegations the use of which in the course of trade is liable to mislead the public
as to the nature, the manufacturing process, the characteristics, the suitability for their purpose,
or the quality, of the goods,” a provision directed at protecting consumer interests rather than
competitor interests. These three examples are not limitative, but rather illustrative.

Commentators have argued that the “contrary to honest practices” standard found in Article
10bis embodies a concept of unfair competition that is broader than the concept of unfair
competition found in the laws of many countries, including in U.S. and U.K. Commentators
have also taken the position that provisions of the Paris Convention, including this one, are
self- executing, meaning that countries acceding to the Convention incorporate the broader
concept of unfair competition into their laws merely by virtue of having ratified the treaty,
irrespective of whether special legislation is adopted that mirror the treaty provisions. U.S.
courts appear split on the issue of whether the unfair competition standard of the Paris
Convention is incorporated into its domestic laws through Article 44 of the Lanham Act, or
that the Paris Convention and Article 44 simply grant reciprocal rights. 5 Courts thus far
generally appear reluctant to agree that Article 10bis injects into the domestic laws of the
members of the Union a prohibition on unfair competition that is more expansive than the
prohibition spelled out in their respective domestic legislation or common law. So, for example,
when a U.S. court was asked recently to find that acts of misappropriation of trade secrets
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constituted an “act contrary to the honest practices in industrial or commercial matters”

incorporated by virtue of the Paris Convention into U.S. unfair competition law, the court
agreed that the provisions of the Paris Convention were incorporated into U.S. law through its
Lanham Act, but disagreed that Article 10bis of the Paris Convention expanded the U.S. law
on unfair competition to include the act of misappropriating trade secrets. It seems likely that
this issue, of whether and to what extent Article 10bis expands domestic laws concerning unfair
competition, will continue to develop.

GENERAL AND ADMINISTRATIVE PROVISIONS

Article 12 of the Convention obligates member states to establish a central industrial property
service, either itself or through a regional organization, responsible for communicating with
the public on matters of patents, trademarks and the like, which service must also publish an
official periodical journal. Article 19 of the Convention specifically permits member countries
to conclude separate agreements among themselves for the protection of industrial property as
long as these separate agreements do not include provisions that contravene those of the Paris
Convention. Article 28 provides that disputes not otherwise settled may be brought before the
International Court of Justice, but parties adhering to the Convention may, at the time of
accession, opt out of this provision. Other administrative provisions provide for the
governmental organs of the Union, comprising an Assembly composed of representatives from
each member nation that meets every two years and formulates long term policy and direction;
an Executive Committee composed of one fourth of the membership of the Union, that meets
once yearly; and the International Bureau, headed by the Director General of WIPO, that
handles the day to day administrative tasks of the Union.

Conclusion

The Paris Convention covers all forms of industrial property, such as patents, trademarks,
industrial designs, utility models, geographical indications, service marks, trade names, and
the prevention of unfair competition.
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2. Explain the salient features of 'WIPO' (World Intellectual Property

Organization)

Introduction

The Convention Establishing the World Intellectual Property Organization, commonly known
as WIPO Convention was signed a Stockholm in 1967 and entered into force in 1970. WIPO
is an intergovernmental organization that became in 1974 one of the specialized agencies of
the United Nations system of organizations. The origins of WIPO go back to 1883 and 1886
when the Paris Convention for the Protection of Industrial Property and the Berne Convention
for the Protection of Literary and Artistic Works, respectively, were concluded. Both
Conventions provided for the establishment of an "International Bureau". The two bureaus
were united in 1893 and, in 1970, were replaced by the World Intellectual Property
Organization, by virtue of the WIPO Convention.

HISTORY

The Paris Convention for the Protection of Industrial Property and the Berne Convention for
the Protection of Literary and Artistic Works, respectively, were the founding documents of
the World Intellectual Property Organisation (WIPO). An “International Bureau” was to be
established under both Conventions. The two bureaus were combined in 1893, and thanks to
the WIPO Convention, the World Intellectual Property Organisation took their place in 1970.

Paris 1883 – Paris Convention for the Protection of Industrial Property

One of the earliest treaties governing intellectual property was the Paris Convention for the
Protection of Industrial Property, which was adopted in 1883. For the purpose of protecting
industrial property, it created a Union. Additionally, it covers a broad range of industrial
property rights, including “repression of unfair competition” and patents, trademarks, utility
models, industrial designs, trade names, service marks, and geographical indications. The first
international agreement to safeguard the creations of other nations’ artists was the Paris
Convention

Berne 1886 – Berne Convention for the Protection of Literary and Artistic Works

The Berne Convention, which deals with copyright, the protection of works as well as the rights
of authors and rights holders, was adopted in 1886. It gives artists, such as writers, poets,
painters, and musicians, ways to manage the conditions of use as well as how and by whom
their works are used. Additionally, it contains clauses on minimal safeguards and unique
clauses for developing nations. The three main tenets of the Convention are that works created
in one of the Contracting States must receive the same level of protection in all other
Contracting States (the “national treatment” principle), that protection is automatic and no
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formal procedure is necessary, and that protection provided by the Convention is distinct from
protection provided by the country of origin of the work (the “independence” of protection
principle)

1891 – Madrid Agreement Concerning the International Registration of Marks

The first “special arrangements for the protection of industrial property” were established in
1891 by nine of the 14 parties to the Paris Convention for the Protection of Industrial Property.
It established the Madrid System, the main global system for facilitating the registration of
trademarks in numerous jurisdictions worldwide, along with the Protocol Relating to the
Madrid Agreement (1989). The French abbreviation BIRPI was more commonly used to refer
to The United International Bureaux for the Protection of Intellectual Property, 1893. This
Swiss-based organisation served as WIPO’s forerunner

FUNCTIONS

1. Assisting in the development of campaigns to strengthen IP protection globally and to

harmonize national legislation in this area,

2. signing international agreements on the protection of intellectual property,

3. Utilising the managerial responsibilities of the Paris and Berne Unions,

4. providing technical and legal assistance in the area of IP, gathering and disseminating data,
conducting studies and publishing the results, ensuring the performance of services facilitating
international IP protection, and taking any other appropriate measures

The most significant task performed by WIPO is the administration of multilateral international
conventions, which involves depositing treaties, state instruments of conflict settlement,
ensuring treaties review, etc

Since 1998, the WIPO Worldwide Academy has been training professionals in the field of
intellectual property protection. This academy offers a distance learning facility where you can
learn using the internet. The WIPO Arbitration and Mediation Centre was established in 1994
and aids in resolving disputes.

Strategic Goals of WIPO

WIPO operates under a five-year planned format; the current plan, which is in effect, runs from
2017 to 2021. WIPO creates 5-year strategic goals, Implementing Activities, and Milestones,
and plans their growth in accordance with those.

WIPO’s Strategic Goals and Programs are aligned with the priorities set in the 2030 Agenda.
Since 2018, the WIPO Program and Budget establishes a link between the Organization’s
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Strategic Goals and the SDGs. Under each of the concerned Strategic Goals, a wide range of
programs and activities involving all the Organization’s Departments, contribute to the SDGs.
The total number of Programs linked to the SDGs amount to twenty out of a total of thirty-one
Programs. WIPO’s development cooperation, technical assistance and capacity building
activities are strategically placed to deliver support to its Member States as they integrate the
SDGs in their national development plans

GOAL -1 Utilising IP assets to foster collaboration and advance research and development
(R&D) for malaria, TB, and neglected tropical diseases (NTDs). The Special Programme for
Research and Training in Tropical Diseases, among other things, must be established and
maintained as part of the implementation activities for the same objective. A key component
of the implementation activities is the creation of new partnerships that can address urgent
needs and offer help and support. This will also call for an increase in the number of business
providers that can provide resources and assistance for WIPO operations.

GOAL -2 - is to quicken the development of promising substances or leads. Assisting

collaborators in securing funding from donor organisations is one of the implementation
activities for this, which will hasten the process. The projects with the greatest potential for the
compound or lead will be given the highest priority and will advance quickly to later stages of
evaluation. By doing this, we hope to connect two to three partnerships or collaborations per
year with appropriate funding.

GOAL -3- To increase the world’s ability to manage IP and conduct biomedical research. The
activities of implementation include helping member organisations build their capacity and
offering them research fellowships at prestigious research institutions to do the same. Two to
four training sabbaticals per year are a key milestone for achieving this objective.

GOAL -4- Convey the positive impact that IP has on innovation for NTDs, malaria, and TB.
Increased information dissemination about the role of IP for R&D in NTDs, malaria, and TB
is one of the implementation activities. This is the technology-driven objective to address the
current problems. The provision of a user-friendly website containing all the resources
available that would aid in the formation of partnerships is a milestone for this goal, and it
should be updated yearly based on user feedback. Additionally, this will make at least six
presentations at subject-matter meetings and publish at least four articles in journals and
magazines.

The World Intellectual Property Organization (WIPO) is a specialized agency of the United
Nations responsible for promoting the protection of intellectual property rights worldwide. It
was established in 1967 and has its headquarters in Geneva, Switzerland. WIPO performs
various functions and operates through several organs to achieve its objectives.
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Main organs and functions of WIPO:

1. General Assembly:

The General Assembly is the highest decisionmaking body of WIPO, composed of all member
states. It meets annually to determine WIPO's policies, programs, and budget. The General
Assembly also elects the Director-General of WIPO and considers reports on the organization's
activities.

2. Coordination Committee:

The Coordination Committee consists of representatives of member states and meets to

coordinate the work of the WIPO and its various bodies.

3. Executive Committee:

The Executive Committee is responsible for supervising the implementation of the decisions
of the General Assembly and providing guidance on administrative and financial matters.

4. Standing Committees:

WIPO has several standing committees that focus on specific areas of intellectual property,
such as patents, trademarks, copyright, and related rights. These committees discuss and
develop international norms and standards in their respective fields.

5. Intergovernmental Committees and Working Groups:

WIPO convenes intergovernmental committees and working groups to address specific issues
or negotiate treaties and agreements related to intellectual property rights. For example, the
WIPO Standing Committee on Copyright and Related Rights (SCCR) discusses matters
concerning copyright and related rights at the international level

Conclusion

WIPO demonstrates the evolution and necessary adjustments that were made to reach this point
from the time when it started in 1883 with the Paris Convention to the present, in which form
and structure it is known to people. It demonstrates the growth of an organisation and this
growth has a lot to do with the fact that it joined the United Nations in 1974. From an idea that
would deal with intellectual property related issues to being a flag bearer for gender equality
on a global scale.
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3. Explain the important organs of World Intellectual Property

Organisation (WIPO).

Introduction

The Convention Establishing the World Intellectual Property Organization, commonly known
as WIPO Convention was signed a Stockholm in 1967 and entered into force in 1970. WIPO
is an intergovernmental organization that became in 1974 one of the specialized agencies of
the United Nations system of organizations. The origins of WIPO go back to 1883 and 1886
when the Paris Convention for the Protection of Industrial Property and the Berne Convention
for the Protection of Literary and Artistic Works, respectively, were concluded. Both
Conventions provided for the establishment of an "International Bureau". The two bureaus
were united in 1893 and, in 1970, were replaced by the World Intellectual Property
Organization, by virtue of the WIPO Convention.

Structure of WIPO

The Convention establishing WIPO provides for four different organs:

1. The WIPO General Assembly,

2. the WIPO Conference Committee
3. the WIPO Coordination Committee
4. the International Bureau.

Organs of the WIPO

1. WIPO General Assembly

The WIPO General Assembly is composed of the Member states of WIPO which are also
members of any of the Unions. Its main functions are, inter alia,

• the appointment of the Director General upon nomination by the Coordination Committee,

• review and approval of the reports of the Director General and the reports and activities of
the Coordination Committee,

• adoption of the biennial budget common to the Unions, and

• adoption of the financial regulations of the Organization

Supreme Organ

The General Assembly is the supreme organ of WIPO.

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Director General.

The General Assembly appoints the Director General. Nominations are given by the
Coordination Committee;

Approvals

it approves the measures proposed by the Director General concerning the administration of
the international agreements; it reviews and approves the reports and activities of the Director
General and the Coordination Committee;

Finance

It adopts the financial regulations of WIPO. It adopts the biennial budget of expenses;
Language

It determines the working languages of the Secretariat; and

Observers

It determines which States not members of WIPO and which intergovernmental and
international non-governmental organizations shall be admitted to its meetings as observers.

2. WIPO Conference Committee

The WIPO Conference Committee is composed of parties to the WIPO Convention. It meets
once every two years in ordinary session. It is, inter alia, the competent body for adopting
amendments to the Convention, for all matters relating to legal-technical assistance and
establishes the biennial program of such assistance. It is also competent to discuss matters of
general interest in the fields of intellectual property and it may adopt recommendations relating
to such matters.

The Conference consists of all states party to the WIPO Convention. It meets biennially to
discuss matters of general interest in the field of intellectual property. It also establishes WIPO's
program of technical legal assistance and the budget for that program.

3. WIPO Coordination Committee

The WIPO Coordination Committee is composed of members elected from among the
members of the Executive Committee of the Paris Union and the Executive Committee of the
Berne Convention. It meets every year in ordinary session. Its main functions are-
 236

• To give advice to the organs of the Union, the General Assembly, the Conference, and the
Director General, on all administrative and financial matters of interest to these bodies.

• To prepare the draft agenda of the General Assembly and draft program and budget of the
Conference

4. International Bureau.

Staff It is headed by the Director General. He has his staff; The staff in the professional and
higher categories are recruited on a principle of equitable geographical distribution. The other
staff are from a wide range of countries in all regions of the world.

Conclusion
WIPO demonstrates the evolution and necessary adjustments that were made to reach this point
from the time when it started in 1883 with the Paris Convention to the present, in which form
and structure it is known to people. It demonstrates the growth of an organisation and this
growth has a lot to do with the fact that it joined the United Nations in 1974. From an idea that
would deal with intellectual property related issues to being a flag bearer for gender equality
on a global scale.
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4. Explain the functions of World Intellectual Property Organization

(WIPO).
or
Explain functions of WIPO

Introduction

The Convention Establishing the World Intellectual Property Organization, commonly known
as WIPO Convention was signed a Stockholm in 1967 and entered into force in 1970. WIPO
is an intergovernmental organization that became in 1974 one of the specialized agencies of
the United Nations system of organizations. The origins of WIPO go back to 1883 and 1886
when the Paris Convention for the Protection of Industrial Property and the Berne Convention
for the Protection of Literary and Artistic Works, respectively, were concluded. Both
Conventions provided for the establishment of an "International Bureau". The two bureaus
were united in 1893 and, in 1970, were replaced by the World Intellectual Property
Organization, by virtue of the WIPO Convention.

Functions of the WIPO

In addition to performing the administrative tasks of the Union, WIPO undertakes a number of
activities, including-

1. Normative activities, involving the setting of norms and standards for the protection and
enforcement of international treaties.

2. Program activities, involving legal technical assistance to states in the field of intellectual
property.

3. International classification and standardization activities, involving cooperation among

industrial property offices concerning patents, trademarks and industrial design documentation

4. Registration activities involving services related to international applications for patents for
inventions and the registration of international marks and industrial designs.

The World Intellectual Property Organisation (WIPO) was established with the intent to
perform the following functions:

• To assist the development of campaigns that improve IP Protection all over the globe
and keep the national legislations in harmony.
• Signing international agreements related to Intellectual Property Rights (IPR)
protection.
• To implement administrative functions discussed by the Berne and Paris Unions.
 238

• To render legal and technical assistance in the field of IP.

• To conduct research and publish its results as well as to collect and circulate
information.
• To ensure the work of services that facilitate the International Intellectual Property
Protection.
• To implement other appropriate and necessary actions.

Conclusion

The World Intellectual Property Organisation or WIPO is a UN specialized agency created in

1967 to promote intellectual property (IP) protection and encourage creative activity all over
the world. WIPO is basically a global forum for IP policy, services, information and
cooperation.
 239

5. Discuss the salient features of madrid convention.

Or
Explain features of Madrid convention
Or
Discuss the features of Madrid Convention for the International
registration of marks.

THE MADRID SYSTEM FOR INTERNATIONAL REGISTRATION OF MARKS

The Madrid System is a convenient and cost-effective solution for registering and managing
trademarks worldwide. File a single application and pay one set of fees to apply for protection
in up to 123 countries. The Madrid System for the International Registration of Marks is
governed by two treaties:

1. the Madrid Agreement, concluded in 1891 and amended in 1979, and

2. the Madrid Protocol relating to that Agreement, concluded in 1989, which aims to make the
Madrid system more flexible and more compatible with the domestic legislation of certain
countries or intergovernmental organizations that had not been able to accede to the
Agreement.

States and organizations party to the Madrid system are collectively referred to as Contracting
Parties. The system makes it possible to protect a mark in a large number of countries by
obtaining an international registration that has effect in each of the designated Contracting
Parties.

Despite its name, the Protocol is a separate treaty and not a “protocol” to the Agreement.
Together, the Agreement and the Protocol are known as the Madrid System for the International
Registration of Marks (the Madrid System). Together, they constitute the Madrid Union, which
is a Special Union under Article 19 of the Paris Convention. The Madrid System is a centrally
administered system (by the International Bureau of the World Intellectual Property
Organization, WIPO) for obtaining a bundle of trademark registrations in separate jurisdictions,
creating in effect a basis for an "international registration" of marks.

Who May Use the System?

An application for international registration (international application) may be filed only by a

natural person or legal entity having a connection – through establishment, domicile or
nationality – with a Contracting Party to the Agreement or the Protocol. A mark may be the
subject of an international application only if it has already been registered with the trademark
office of the Contracting Party with which the applicant has the necessary connections (office
of origin). However, where all the designations are effected under the Protocol, the
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international application may be based simply on an application for registration filed with the
The Madrid Agreement The Agreement was established in 1891 for the purpose of providing
a mechanism that would allow for a single and in expensive international trademark registration
and to eliminate the need for filing, prosecuting or maintaining separate registrations in
multiple countries. Registration of a mark under the Agreement provides for the legal
equivalent of registration in member countries designated by the mark owner. If the trademark
office of the designated country does not communicate a refusal of registration to WIPO within
12 months (extended to 18 months under the Protocol) the mark will have the same protection
as registered national marks in that country. The Agreement also provides for a simplified
office of origin. An international application must be presented to the International Bureau of
WIPO through the intermediary of the office of origin.

The Madrid Agreement

The Agreement was established in 1891 for the purpose of providing a mechanism that would
allow for a single and in expensive international trademark registration and to eliminate the
need for filing, prosecuting or maintaining separate registrations in multiple countries.
Registration of a mark under the Agreement provides for the legal equivalent of registration in
member countries designated by the mark owner. If the trademark office of the designated
country does not communicate a refusal of registration to WIPO within 12 months (extended
to 18 months under the Protocol) the mark will have the same protection as registered national
marks in that country. The Agreement also provides for a simplified renewal system since
registration to renew and chances to the original registration affecting all the countries included
in the registration can be made through a single filing with WIPO.

Despite the advantages of registration through the Agreement the U.S. and several other major
countries (e.g. Australia, Denmark, Finland, Greece, Iceland, Ireland, Japan, Netherlands,
Republic of Korea, Sweden, the United Kingdom never joined the Agreement because of
perceived defects in its structure. These perceived defects included issues such as the
requirement for registration in the home country before protection of the mark could be
awarded, unlimited risk of “central attack” to the mark, a short examination period, fees that
are lower that the corresponding fees in the home country’s trademark offices, and limitations
on assignability.

The Madrid Protocol

The Protocol was adopted in 1989 to correct the perceived deficiencies in the Agreement.
However, the Protocol maintains the initial intention of the Agreement, to create a system of
simple and inexpensive international trademark registration. The Madrid Union currently has
107 members, covering 123 countries. These members represent more than 80% of world trade,
with potential for expansion as membership grows.
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Overlapping Membership

Any party State to the Paris Convention for the Protection of Industrial Property may become
a party to the Agreement or the Protocol or both. In addition, an intergovernmental organization
may become a party to the Protocol (but not the Agreement) where these conditions are met:
at least one of the Member States of the organization is a party to the Paris Convention and the
organization maintains a regional office for the purposes of registering marks with effect in the
territory of the organization. The number of countries to which international registration may
be extended corresponds to the national origin of the basic application or registration and may
include the signatories of the Agreement, the Protocol, or both.

Since the U.S. is not a signatory to the Agreement, an international registration based on
application for U.S. trademark registration would be limited to protection in those countries
which are members of the Protocol. However, multinational companies who register their
marks under either the Agreement or the Protocol need to be aware of the open a closed sets of
member parties created by overlapping membership. To ease the possible confusion created by
overlapping membership, WIPO provides form MM2(E) for international application for the
Protocol and form MM3(E) for those applications covered by both the Agreement and the
Protocol.

The International Application

An application for international registration must designate one or more Contracting Parties in
which protection is sought. Further designations can be effected subsequently. A Contracting
Party may be designated only if it is party to the same treaty as the Contracting Party whose
office is the office of origin. The designation of a given Contracting Party is made either under
the Agreement or the Protocol, depending on which treaty is common to the Contracting Parties
concerned. If both Contracting Parties are party to the Agreement and the Protocol, the
designation will be governed by the Protocol. International applications can be filed in English,
French or Spanish, irrespective of which treaty or treaties govern the application, unless the
office of origin restricts that choice to one or two of these languages.

Payment of Fees

The filing of an international application is subject to the payment of a basic fee, a

supplementary fee for each class of goods and/or services beyond the first three classes, and a
complementary fee for each Contracting Party designated. However, a Contracting Party to the
Protocol may declare that, when it is designated under the Protocol, the complementary fee is
replaced by an individual fee, whose amount is determined by the Contracting Party concerned
but may not be higher than the amount that would be payable for the registration of a mark, at
the national level, with its office.
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International Registration

Once the International Bureau receives an international application, it carries out an

examination for compliance with the requirements of the Protocol and its Regulations. This
examination is restricted to formalities, including the classification and comprehensibility of
the list of goods and/or services. If there are no irregularities in the application, the International
Bureau records the mark in the International Register, publishes the international registration
in the WIPO Gazette of International Marks and notifies it to each designated Contracting
Party. Any matter of substance, such as whether the mark qualifies for protection or whether it
is in conflict with a mark registered previously in a particular Contracting Party, is determined
by that Contracting Party's trademark office under the applicable domestic legislation. The
Gazette is available in electronic form (e-Gazette) on the Madrid system website.

Statement of Grant of Protection or Refusal of Protection

The office of each designated Contracting Party shall issue a statement of grant of protection.
However, when designated Contracting Parties examine the international registration for
compliance with their domestic legislation, and if some substantive provisions are not complied
with, they have the right to refuse protection in their territory. Any such refusal, including an
indication of the grounds on which it is based, must be communicated to the International
Bureau, normally within 12 months from the date of notification. However, a Contracting Party
to the Protocol may declare that, when it is designated under the Protocol, this time limit is
extended to 18 months. That Contracting Party may also declare that a refusal based on an
opposition may be communicated to the International Bureau even after the 18-month time
limit.

The refusal is communicated to the holder of the registration or the holder's representative
before the International Bureau, recorded in the International Register and published in the
Gazette. The procedure subsequent to a refusal (such as an appeal or a review) is carried out
directly by the competent administration and/or court of the Contracting Party concerned and
the holder, without the involvement of the International Bureau. The final decision concerning
the refusal must, however, be communicated to the International Bureau, which records and
publishes it.

Effects of an International Registration

The effects of an international registration in each designated Contracting Party are, from the
date of the international registration, the same as if the mark had been deposited directly with
the office of that Contracting Party. If no refusal is issued within the applicable time limit, or
if a refusal originally notified by a Contracting Party is subsequently withdrawn, the protection
of the mark is, from the date of the international registration, the same as if it had been
registered by the office of that Contracting Party. An international registration is effective for
10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees.
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An international registration may be transferred in relation to all or some of the designated

Contracting Parties and all or some of the goods or services indicated.

Advantages of the Madrid System

The Madrid system offers several advantages for trademark owners. Instead of filing a separate
national application in each country of interest, in several different languages, in accordance
with different national or regional procedural rules and regulations and paying several different
(and often higher) fees, an international registration may be obtained by simply filing one
application with the International Bureau (through the office of the home country), in one
language (English, French or Spanish) and paying one set of fees. Similar advantages exist for
maintaining and renewing a registration. Likewise, if the international registration is assigned
to a third party, or is otherwise changed, such as a change in name and/or address, this may be
recorded with effect for all designated Contracting Parties by means of a single procedural step.

The Madrid Agreement and Protocol are open to any State party to the Paris Convention for
the Protection of Industrial Property (1883). The two treaties are parallel and independent, and
States may adhere to either or both of them. In addition, an intergovernmental organization that
maintains its own office for the registration of marks may become party to the Protocol.
Instruments of ratification or accession must be deposited with the Director General of WIPO.
 244

6. Explain objects of Paris convention.

SALIENT FEATURES OF PARIS CONVENTION

Paris Convention for the Protection of Industrial Property 1883

The Paris Convention for the Protection of Industrial property was adopted in 1883) It has been
revised at Brussels in 1900, at Washington in 1901, at Hague in 1925, at London in 1934, at
Lisbon in 1958, and at Stockholm in 1967 The Convention is applicable to industrial property
which includes patents, trademarks, service marks, industrial designs, utility models, trade
names, indication of source, appellations of origin, and repression of unfair competition. It is
one of the principal instruments of international law with respect to protection of industrial
property. The countries to which this Convention applies constitute a Union for the protection
of industrial property

In addition to common rules in the field of substantive law, the Paris Convention guarantees a
basic right known as the right to national treatment in each of the member countries and
establishes another basic right known as the right of priority

3 main Categories

1) National Treatment

The Paris Convention provides that in respect of industrial property, each contracting state must
grant the same protection to nationals of the other contracting states as it grants to its own
nationals (Nationals of non- contracting states are also entitled to national treatment under the
Convention if they are domiciled or have a real and effective industrial or commercial
establishment in a contracting state

The principle of national treatment, thus, prohibits two sets of rules for the protection of
industrial property-one for nationals, and the other for foreigners Where a member state did
not provide any industrial property ction to its citizens, the Paris Convention did not require it
to provide protection the same to the foreigners either.

(2) Right of Priority

The Convention provides for the right of priority in the case of patents and utility models,
marks, and industrial designs The right of priority means that, on the basis of a regular first
application filed in one of the contracting states, the applicant may, within a certain period of
time) (12 months for patents and utility models and 6 months for industrial designs and marks)
Capply for protection in any of the other contracting states. The later applications filed in other
contracting states will then be regarded as if they had been filed on the date of the first
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application in other words, these later applications will have priority over applications which
may have been filed during the said period of time by other persons for the same invention,
utility model, mark or industrial design) Moreover, these later applications, being based on the
first application, will not be affected by any event that may have taken place in the interval,
such as any publication of the invention or sale of articles bearing the mark or incorporating
the industrial design One of the great practical advantages of this provision is that, when an
applicant desires protection in several countries, he is not required to present all his applications
at the same time but has 6 or 12 months at his disposal to decide in which countries he wishes
protection

(3) Common Rules

The Convention lays down a few common rules which all the contracting states must follow
The more important are the following:

(a) Patents:

Patents granted in different contracting states for the same invention are independent of each
other. The granting of a patent in one contracting state does not oblige the other contracting
states to grant a patentA patent cannot be refused, annulled or terminated in any contracting
state on the ground that it has been refused or annulled or has terminated in any other
contracting state.

Each contracting state that takes legislative measures providing for the grant of compulsory
licenses to prevent the abuses which might result from the exclusive rights conferred by a patent
may do so only with certain limitations Thus, a compulsory license based on failure to work
the patented invention may only be granted pursuant to a request filed after 3 or 4 years of
failure to work or insufficient working of the patented invention, and it must be refused if the
patentee gives legitimate reasons to justify his inaction) Furthermore, forfeiture of a patent may
be provided only in cases where the grant of a compulsory license would not have been
sufficient to prevent the abuse In the latter case, proceedings for forfeiture of a patent may be
instituted, but only after the expiration of 2 years from the grant of the first compulsory license

(b) Marks:

Once the registration of a mark is obtained in a contracting state, it is independent of its possible
registration in any other country. including the country of origin Consequently, the lapse or
annulment of the registration of a mark in one contracting state shall not affect the validity of
registration in other contracting states. The Paris Convention also provides for the protection
of collective marks

Where a mark has been duly registered in the country of origin, it must, on request, be accepted
for filing and protected in its original form in the other contracting states Nevertheless,
registration may be refused in well- defined cases, such as when the mark would infringe
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acquired rights of third parties, when it is devoid of distinctive character, when it is contrary to
morality or public order, or when it is of such a nature as to be liable to deceive the public.

If, in any contracting state, the use of a registered mark is compulsory, the registration cannot
be canceled until after a reasonable period, and only if the owner cannot justify his inaction

Each contracting state must refuse registration and prohibit the use of marks which constitute
a reproduction, imitation or translation, liable to create confusion, of a mark considered by the
competent authority of that state to be well known in that state as being already the mark of a
person entitled to the benefits of the Convention and used for identical or similar goods.
Similarly, each contracting state must refuse registration and prohibit the use of marks which
consist of or contain without authorisation, armorial bearings, state emblems and official signs
and hallmarks of contracting states, provided they have been communicated through the
International Bureau of WIPO. The same provisions apply to armorial bearings, flags. other
emblems, abbreviations and names of certain inter-governmental organisations

(c) Industrial Designs

Industrial designs must be protected in each contracting state, and protection may not be
forfeited on the ground that the articles incorporating the design are not manufactured in that
state.

(d) Trade Names:

Protection must be granted to trade names in each contracting state without the obligation of
filing or registration.

(e) Indications of Source:

Measures must be taken by each contracting state against direct or indirect use of a false
indication of the source of the goods or the identity of the producer, manufacturer or trader.

(f) Unfair Competition

Each contracting state must provide for effective protection against unfair competition

Conclusion

The Paris Convention covers all forms of industrial property, such as patents, trademarks,
industrial designs, utility models, geographical indications, service marks, trade names, and
the prevention of unfair competition.
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7. Explain salient features of Patent Co-operation Treaty

THE PATENT COOPERATION TREATY

The Patent Cooperation Treaty is a special agreement under the Paris Convention. It is
mandatory for a state to become a member of the Paris Convention, before it becomes a
member of the PCT. The PCT was adopted to simplify and make the procedure more
economical to obtain patents for inventions. The PCT has made it possible to seek patent
protection for an invention simultaneously in each of a large number of countries by filing an
international patent application. Anyone who is a national or a resident of a Contracting State
may file an application with the National Patent Office or with the International Bureau of
WIPO in Geneva. The PCT regulates the formal requirements with which any international
application must comply.

The applicant may designate those Contracting States in which he wishes his international
application to have effect. The effect of the international application in each designated state is
the same as if a national patent application had been filed with the national patent office of that
State.

International Search
The international application is subjected to an international search. That search is carried out
by one of the major patent offices and results in an international search report, that is, a listing
of the citations of published documents that might affect the patentability of the invention
claimed in the international application. The international search report is communicated to the
applicant who may decide to withdraw his application, in particular where the content of the
report suggests that the granting of patent is unlikely, or to amend the claims in the application.

If the applicant decides to continue with the international application with a view to obtaining
national (or regional) patents, he can wait until the end of the 20th month from the priority date
to commence the national procedure before each designated office by furnishing a translation
(where necessary) of the application into the official language of that office and paying to it
the necessary fees. The periods of 20 month may be extended by a further period of 10 months
where the applicant asks for an “international preliminary report. The report is prepared by one
of the major patent offices and gives a preliminary and non-binding opinion on the patentability
of the claimed invention.

The applicant is entitled to amend the international application during the international
preliminary examination. Once the international application has been searched and published,
it is sent to the offices of the designated states, together with the international search report. If
international preliminary examination has been carried out, these offices also receive the
international preliminary examination report. The offices then proceed either to grant or to
refuse a patent in respect of the application.
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6 MARKS

1. Write a note on 'Patent Co-operation Treaty'. (PCT) (3)

Refer 10 marks question 7

2. Write a note on Madrid Convention. (2)

Refer 10 marks question 5

3. Write a note on provisions of Paris convention.

Refer 10 marks questions 1

4. Write a short note on World Intellectual Property Organisation

(WIPO).

Refer 10 marks question 2,3,4

5. Write a note on convention countries.

6. International Bureau of WIPO

Refer 10 marks question 3

7. WIPO Conference

Refer 10 marks question 3

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8. International Registration of mark

Madrid Protocol

The Madrid Protocol governs international trademark registration. The Madrid agreement
relating to the international trademark registration was adopted on 14 April 1891, and the
Madrid Protocol relating to the Madrid Agreement was adopted in Madrid on 27 June 1989.

The Trademarks Act, 1999 was amended to comply with the Madrid system after India became
a member of the Madrid Protocol. On 21 September 2010, the Trademarks (Amendment) Act,
2010 was passed, and the international trademark registration under the Madrid Protocol was
introduced in India.

The Madrid Protocol allows trademark registration in the countries that are members of the
Madrid Union. The Madrid Union has 112 members, covering 128 countries. The trademark
proprietor can obtain international trademark registration under the Madrid Protocol by filing
a single application in the national trademark office or office of origin.

Where the business is registered in India, the Registrar of Trademark Office is the office of
origin to file an international trademark application under the Madrid Protocol. The office of
origin will process the trademark registration application and record it with the Intellectual
Property Organisation in Geneva.

For example: Micromax, India’s mobile phone manufacturer, recently obtained the 1.25
millionth international trademark registration for its trademark ‘MICROMAX’. Thus, the
trademark ‘MICROMAX’ has protection in over 110 countries now. The international
trademark registration for the ‘MICROMAX’ trademark was filed under the Madrid Protocol
to obtain international registration.

Pre-requisites for International Trademark Registration

The trademark applicant must ensure that the following requirements are met before applying
for international trademark registration:

• The applicant should be domiciled in India, be an Indian national or have an effective

and real business or commercial establishment in India.
• The applicant must have a trademark registered with the Indian Trademarks Registry
or must have applied for a national trademark application in India. The national
trademark application/registration acts as the basis of the international application.
• The applicant should apply for an international application for the same trademark for
which the national trademark registration is obtained or mentioned in the national
trademark application.
 250

• The list of services and goods in the international application should be the same as the
national trademark registration or application.
• The applicant must choose one or more Madrid Protocol member countries where
he/she wants protection in the international application.

International Trademark Registration Process Under Madrid Protocol

The process of international trademark registration under the Madrid Protocol is as follows:

Trademark Search
The applicant must first conduct a trademark search before applying for international trademark
registration. The applicant can conduct a trademark search on the WIPO’s Global Brand
Database to determine if any similar or identical registered trademark exists. The applicant
must ensure that no similar or identical registered trademark exists in any of the Madrid
Protocol countries where he/she is planning to apply for trademark registration. If a similar or
identical trademark exists, the application will be rejected.

File Registration Application

After the trademark search, the applicant must file the international trademark registration
application in Form MM2(E). The applicant should file the international trademark registration
application with the Office of the Registrar of Trademarks in India, as it is the office of origin
for Indian businesses. The Registrar of Trademarks will process and verify the application.
After verification, the Registrar will file it with the World Intellectual Property Organisation
(WIPO) in Geneva. The applicant must file the international trademark application
electronically through the official IP India website and pay the handling fee.

Examination of Application by WIPO

After the Registrar of Trademark Office sends the trademark registration application to WIPO,
the WIPO will examine the application. When the WIPO deems the registration application
appropriate, the trademark is recorded in the International Register and published in the WIPO
Gazette of International Trademarks.

Notification of Trademark Registration by WIPO

The WIPO will issue a notification regarding the international trademark application to each
Madrid Protocol member country where the applicant chooses to obtain registration. The
member countries will examine the international registration application as per the trademark
regulations and rules. The member countries will submit their examination report and notify
acceptance or refusal of the application to the WIPO within 12 to 18 months of receipt of the
trademark registration application.
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Opposition to Trademark Registration

If the member countries have any opposition to the trademark registration application, it must
be submitted to the WIPO in a prescribed way. The opposition proceedings to the trademark
application will be conducted directly between the trademark applicant and the concerned
member country of the Madrid Protocol. The opposition procedures include response, appeal,
hearing and prosecution. The WIPO will be involved in the whole opposition procedure.

Grant of International Trademark Registration

The trademark will be registered in the respective chosen member countries under the Madrid
Protocol for ten years when the member countries accept the application. After the acceptance
of the registration application, a statement of the grant will be issued to the applicant, which
certifies the international trademark registration of an Indian trademark.

Benefits of International Trademark Registration

Legal protection

International trademark registration legally protects the trademark from international

infringement of that trademark. The registered trademark gets protection against a third person
who uses it without authorised permission in the foreign country where it is registered. It
becomes easy to prove the legal right in the trademark before the court when it is registered.

Business opportunity

Trademark is an intangible asset of a business and plays a significant role in the brand’s growth.
A successful trademark provides the business with an opportunity to earn money. The
trademark owner can also licence trademarks to a foreign entity when it is registered
internationally. Thus, international trademark registration enables the success of the brand or
product. Businesses like Nike or McDonald’s have earned royalties through licensing
agreements due to obtaining an international trademark registration.

Unique identity

International trademark registration provides global recognition for a product. International

trademark registration helps fight against infringement, ensuring that the trademark owners get
an exclusive right to one of their most valuable assets.

Beneficial for online operators

International trademark registration plays a significant role in the growth of an e-commerce

business. When a business is involved in selling products online, it paves the way for the
product to be available globally to international consumers. Once the product has gained
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recognition in the global market, it becomes easy for the trademark to gain popularity amongst
a vast consumer base. It is better to obtain international trademark registration for such products
to avoid confusion amongst the buyers regarding the product.

Protects brand during export or import

The international trademark registration protects the trademarked product from any trademark
misuse in foreign countries by foreign parties. As the trademark gets recognition in foreign
countries, it is prone to be copied or used fraudulently by other parties to gain customers using
the mark. In case of any such infringement conducted during import or export, the international
trademark registration gives the right to take legal action against such infringement and protect
the trademark associated with a product or service.

9. Co-ordination Committee of WIPO

Refer 10 marks question 3