INTELLECTUAL PROPERTY RIGHTS

INTELLECTUAL PROPERTY RIGHTS

Intellectual property means the legal rights which result from intellectual activity in
the industrial, scientific, literary and artistic fields.

It is the right given to a person over creation of their minds for a certain period of
time. IPR law aims at safeguarding creators and other producers of intellectual
goods and services by granting them certain time-limited rights to control the use
made of those productions.

IPR are customarily divided into two main areas - Copyrights & Industrial Property
COPYRIGHT: This relates to authors of literary and artistic works namely books,
musical composition, painting, etc. The aim of protecting copyright and related
rights is to encourage and reward creative work.

INDUSTRIAL PROPERTY: Industrial Property can be divided into two -

a) One area can be characterized as the protection of distinctive signs, in

particular Trademarks and Geographical Indication. The protection of such
distinctive signs aims to stimulate and ensure fair competition and to protect
consumers, by enabling them to make informed choice.
b) Other types of industrial property like industrial design, geographical
indication, biological diversity etc are protected primarily to stimulate
innovation, design and the creation of technology. The purpose is to provide
protection for the results of investment in the development of new technology.
PATENT
The Patents Act, 1970, as amended by The Patents (Amendment) Act, 2005 and
The Patents Rules, 2003, as amended by The (Amendment) Rules 2006 govern
patents in India.

A patent is a territorial, legal right, granted by the State for a limited time to the
owner of an invention in exchange for public disclosure of the invention.

Invention means any new and useful -

1. Art, process, method or manner of manufacture;

2. Machine, apparatus or other article;
3. Substance produced by manufacture and includes any new and useful
improvement of any them, and an alleged invention.
DEFINITIONS
According to the Act, “a patent means a patent for any invention granted under the
Act.”

According to Sec 2( j), “Invention means a new product or process involving an

inventive step and capable of industrial application.”

According to Sec 2(1)( ja), “ An inventive step means a feature of an invention that
involves technical advance as compared to the existing knowledge or having
economic significance or both, that makes the invention not obvious to the person
skilled in the art.”
For an invention to be patentable, following conditions must be satisfied:

1. It should be novel: An invention will be considered novel, if

a) It does not form part of the state of art or has been describe orally.
b) It has not been published earlier or used before the date of filing the patent
application.
2. It should involve inventiveness: It must not be obvious to a person who is
skilled in that area.
3. The invention should have industrial applicability: Industrial applicability
means there is a possibility of making and using it in practice.
WHAT IS PATENTABLE?

● Process, method or manner of manufacture;

● Machines, apparatus or a product;
● Substances produced including substances that have undergone
improvements although patented.
● Inventions claiming substances intended for use or capable of being used as
food or a medicine or drug relating to substance prepared or produced by
chemical processes are patentable.
WHAT IS NOT PATENTABLE?

● An invention that is frivolous or obvious

● An invention which is contrary to law or morality or injurious to public health;
● Discovery of a scientific principle or the formulation of an abstract theory;
● The mere discovery of any new property or new use for a known substance or
of the mere use of a known process, machine or apparatus unless such known
process results in a new product or employs at least one new reactant;
● A substance obtained by a mere admixture;
● The mere arrangement or re-arrangement or duplication of known devices
without any novelty;
● A method or process of testing applicable during the process of manufacture
for rendering the machine, apparatus or other equipment more efficient;
● A method of agriculture or horticulture;
● Any process for the medical, surgical, or other treatment of human beings or
any process for a similar treatment of animals or plants;
PERSONS ENTITLED TO APPLY (S.6)
The following persons are entitled to make an application for grant of patent:
a) Any person claiming to be the true and first inventor, of the invention.
b) Any person being the assignee of the inventor (assignee must submit the proof
of his right to apply)
c) The legal representative of any deceased person who immediately before his
death was entitled to make the application.
FORM OF APPLICATION (S.7)
An application for a patent can be for a single invention only and it has to be
submitted in the prescribed form in the Patent Office.
Every application must be accompanied by a provisional and complete specification.
Note - An international application under the Patent Cooperation Treaty as may be
filed designating India is deemed to be an application under the Act, provided that a
corresponding application has also been made before the Controller in India.
PROVISIONAL AND COMPLETE SPECIFICATION (S.9)

Where an application has been filed with provisional specifications, complete

specification has to be filed within 12 months from the date of the application.

If the complete specification is not filed, the application is taken as abandoned.

CONTENTS OF SPECIFICATION (S.10)

Every specification whether provisional or complete must begin with a title which
should sufficiently indicate the subject-matter to which the invention relates.

A complete specification has to fully and particularly describe the invention and its
operation or use and the method by which it has to be performed. The best method
of performing the invention has to be disclosed.

The application must end with a claim defining the scope of the invention. It also has
to be accompanied by an abstract proving technical information of the invention.
PRIORITY DATES OF CLAIMS OF COMPLETE SPECIFICATION (S.11)

Each claim in a complete specification has a priority date.

If a complete specification is filed within 12 months of a previously filed application in

India, the priority date is the date of the previous application.

If a complete specification is filed based on previous application, the priority date is

the date of the earlier specification where the matter was first disclosed.

If a claim has multiple priority dates, the earlier date is priority date.
PUBLICATION OF APPLICATION (S.11-A)
An application for a patent is not to be open ordinarily to public for such period as
may be prescribed.
An applicant may request the Controller to publish the application at any time before
the expiry of the prescribed period. The Controller may publish the application as
soon as possible.
Ordinarily an application has to be published on the expiry of the prescribed period
except where there is a secrecy direction, or the application has been abandoned or
it has been withdrawn three months prior to the period to the prescribed period. An
application has to be published on the expiry of the prescribed period or when
secrecy direction has ceased.
The publication has to include the particulars of the date of application, its number,
name and address of the applicant identifying the application and its abstract.
Upon the publication of the application the Depository Institution has to make the
biological material mentioned in the specification available to the public.
REQUEST FOR EXAMINATION (S.11-B)
An application for a patent is not to be examined unless the applicant or any other
interested person makes a request for such examination with the prescribed period.
EXAMINATION OF APPLICATION (S. 12)
On receipt of an application for examination, the Controller has to refer the
application and specification and other documents relating to it, at the earliest to an
examiner for making a report on the following matters -
1. Whether the application and specification and other documents are in
accordance with the requirements of the Act and rules;
2. Whether there is any lawful ground of objection to the grant of the patent under
the Act in pursuance of the application;
3. The result of investigation made under section 13;
4. Any other matter as may be prescribed.
SEARCH FOR ANTICIPATION BY PREVIOUS PUBLICATION AND BY PRIOR
CLAIM. (S.13)

The examiner to whom the application has been referred to has to make an
investigation for the purpose of ascertaining whether the invention claimed in the
complete specification :

1. Has been anticipated by publication before the date of filing of the applicant’s
complete specification.
2. Has been claimed in any claim of any other complete specification published on
or after the date of filing of the applicant’s complete specification dated before
or claiming priority date earlier than that date. Where an application has been
amended, the amended application has to be subjected to a similar
investigation.
CONSIDERATION OF EXAMINER’S REPORT BY CONTROLLER (S.14)
Where the report of the examiner as received by the controller is adverse to the
applicant or requires any amendment of the application, specification and other
documents so as to ensure compliance with the provisions of the Act, the Controller
has, before proceeding to dispose of the application, to communicate to the applicant
as expeditiously as possible the gist of the objections and hear the applicant if he so
requires.
POWER OF CONTROLLER TO REFUSE OR REQUIRE AMENDED APPLICATION
(S.15)
Where the Controller is satisfied that the application or any specification or any other
document does not comply with the requirements of the Act, he may refuse the
application. Alternatively, he may require the application, specification or other
documents to be amended to his satisfaction. Hey may then proceed with the
application. If the applicant does not make the requisite amendments, the Controller
may refuse the application.
OPPOSITION TO THE PATENT (S.25)
After publication of an application and before grant of patent, any person may in
writing represent by way of opposition to the Controller against the grant of patent
on the following grounds -
1. The applicant for the patent or the person through whom he claims, wrongfully
obtained the invention or any part of it;
2. The invention claimed in complete specification has been published before the
priority date of the claim;
3. The invention claimed on the basis of a complete specification published on or
after the priority date, being a claim of which the priority date is earlier than that
of the applicant’s claim;
4. The invention so far as claimed in any claim of complete specification was
publicly known or publicly used in India before the priority date of the claim.
5. The invention claimed in the complete specification is obvious and clearly does
not involve any inventive step having regard to the matter published or having
regard to what as used in India before the priority date of the applicant’s claim.
 6. The subject of any claim of the complete specification is not an invention within
the meaning of the Act or is not patentable under the Act;
7. The complete specification does not sufficiently and clearly describe the
invention or the method by which it is to be performed;
8. The applicant has failed to disclose to the Controller the information required
under Section 8 or has furnished the informed which in any material particular
was false to his knowledge;
9. In the case of convention application, the same was not made within 12 months
from the date of the first application for protection for the invention made in a
convention country by the applicant or the person from whom he derived title;
10. The complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for invention;
11. The invention claimed in a claim of complete specification is anticipated having
regard to the knowledge, oral or otherwise available within any local or
indigenous community in India or elsewhere
GRANT OF PATENTS (S.43)

Where an application for a patent has been found to be in order for the grant and the
application is not in contravention of any of the provisions of the Act and the
Controller has not refused it in exercise of his powers, the patent has to be granted
as expeditiously as possible.

The grant has to be under the seal of the Patents Office.

The date of grant has to be entered in the register.

On the grant of the patent, the Controller has to publish the fact that the patent has
been granted. The application, specification and other related documents become
open for public inspection.
RIGHTS OF THE PATENTEES (S.48)
A patent confers upon the patentee the following rights:
1. Where the subject-matter of the patent is a product, the patentee gets the
exclusive right to prevent third parties, who do not have his consent, from the
act of making, using, offering for sale, selling or importing for those purposes
that product in India;
2. Where the subject-matter of the patent is a process, the patentee gets the
exclusive right to prevent third parties, who do not have his consent, from the
act of using that process and from the act of using, selling or importing for those
purposes the product obtained directly by the process in India.
Note - When a patent is granted to two or more person, each of those persons is
entitled to an equal undivided share in the patent, unless they make a different
agreement.
HOW DOES A PATENT EXPIRE? (S.53)

A patent is for 20 years from the date of application which is granted by the Office
of the Patent. However, the patent expires under the following circumstance -

● On the expiry of the term

● Patentee failing to pay the annual renewal fee
● Patent is revoked

REMEDIES AVAILABLE FOR INFRINGEMENT

The remedies available are generally in two forms - civil sanctions and criminal
sanctions. Civil remedies include award for damages, grant of injunction or any
other remedy available in general law. The criminal remedy would include
imprisonment or fine or both.
WHAT CONSTITUTES A PATENT INFRINGEMENT?
Patent infringement occurs when a person or entity uses, makes, sells, or
distributes a patented invention without the authorization of the patent holder
within India. Specifically, infringement includes:
1. Making, using, offering for sale, selling, or importing a patented product or
process without permission.
2. Using a patented process to create a product and subsequently selling or
distributing that product.
Types of Patent Infringement
1. Direct Infringement: Unauthorized use or commercialization of the patented
invention.
2. Indirect Infringement: Encouraging or enabling another party to infringe.
3. Willful Infringement: Deliberate violation of the patent holder's rights,
potentially leading to harsher penalties.
Exceptions to Patent Infringement (S.107)

Certain acts are exempt from being considered infringement under Indian law:

1. Private and Non-Commercial Use: Using the invention for personal or

non-commercial purposes.
2. Experimental Use: Conducting experiments or research involving the patented
invention.
3. Bolar Provision (Section 107A): Making or using a patented invention solely for
the purposes of regulatory approval for drugs or medicine.
4. Parallel Importation: Importing a patented product that was legally sold or
distributed in another country by the patent holder.
PROCEDURE FOR OBTAINING A PATENT (a summary)
I. FILING
1. Applicant: An application for a patent can be filed by the true and first inventor. It
can also be filed by the assignee or legal representative of the inventor. The
applicant can be national of any country.
2. Form of application: Every application shall be accompanied by a provisional or
complete specification. Provisional application are generally filed at a stage where
some experimentation/work is still needed to be performed.
3. Priority Date: Priority date is the date of the first filing, allotted by the patent office
to an application. If a provisional application is followed by a complete application,
the priority date shall be date of filing the provisional application.
4. Documents to be submitted at the time of filing:
● Application for the grant of patent
● Provisional or complete specification
● Statement and undertaking by the applicant
● Declaration as to inventorship
● Authorization of a patent agent or any other person.
 II. PUBLICATION: A patent application will be published on the expiry of 18
months after the priority date. It can be published earlier, if such a request is
made by the applicant. The application will not be published if directions are
given for secrecy, until the terms of those directions expire. It will also not be
published if the application is withdrawn 3 months before publication date.
III. EXAMINATION: The process of examination starts with a request for
examination. The request has to be made within 36 months from the date of
priority filing. However, if secrecy directions have been given for the
application, the request can be made within 6 months after the directions are
revoked or 36 months from the date of priority filing, whichever is later. The
examination shall be done by an examiner appointed by the controller.
IV. OPPOSITION: Can be of two types
● Pre-grant: where a person object the granting of the patent
● Post-grant: any person can challenge within 36 months of grant
V. GRANT: If the application satisfies all the requirements of the Act, the
application is said to be in order for grant. A patent granted shall be published
in official gazette and shall be open for public inspection. The patent shall be
valid throughout India.
COPYRIGHT
The Copyright Act, 1957, as amended by The Copyright (Amendment) Act, 2013 and
The Copyright Rules, 1958, as replaced by The Copyright Rules 2013 govern
copyright in India.

A copyright is a right given by law to the author or creator of original literary,

dramatic, musical, artistic works and producers of cinematograph films and sound
recordings. It is a bundle of rights including the rights of reproduction,
communication to the public, adaptation and translation of the work.

The Indian Copyright Act affords separate and exclusive protection to the following
work - Original Literary Work, Original Dramatic Work, Original Musical Work,
Original Artistic Work, Cinematograph Films, Sound Recording, and Computer
Programme.
MEANING OF COPYRIGHT (S.14)

Copyright primarily means that the right of the creator of a work to multiply copies.
The author gets the right to prevent adaptations of his work by another person for
his own advantage.

Copyright is a right to stop others from exploiting the work without the consent or
the assent of the owner of the copyright. It presents a balance between the
interests and rights of the author and that of the public in protecting the public
domain, or to claim the copyright and protect it under the copyright statute.
AN AUTHOR UNDER THE COPYRIGHT ACT SHALL MEAN -

● In case of a literary or dramatic work - the person who creates the work
● In case of a musical work - the composer
● In case of a cinematograph film - the producer
● In case of sound recording - the procedure
● In case of photograph - the photographer
● In case of a computer generated work - the person who causes the work to be
created
MEANING OF ORIGINAL WORK

It was held in R.G.Anand v Dulux Films and Ors that -

1. There can be no copyright in ideas, subject matter, themes, plots or historical

or legendary facts.
2. Where the same idea is developed by different people in different ways it is
obvious that similarities are bound to occur since the source is common. In
order to be actionable the copy must be substantial and material.
3. According to the court, one of the surest and safest tests to determine whether
or not there has been a violation of copyright is to see if the reader, spectator
or the viewer, after having read or seen both the works, is clearly or the same
opinion and gets an unmistakable impression that the subsequent work
appears to be a copy of the original.
4. Where the theme is same but is presented and treated differently so that
subsequent work becomes a completely new work, no question of violation of
copyright arises.
5. In cases where the question is of violation of the copyright of a stage play by a
film producer or a director, the task of the plaintiff is to prove piracy becomes
more difficult.

In Eastern Law Book v O.B.Modhak the court held original work does not always
need to be novel or non-obvious. It was further held that in case of derivative oerk,
whenever the author produces his work with the exercise of skill, labour and
judgement with the flavour of creativity, it would amount to original work.
MEANING OF FAIR USE

The copyright law permits limited use of copyrighted material without permission
from the copyright holder. This is called fair use. Fair use is permitted:

● For the purpose of research or private study

● For criticism or review
● For reporting current events
● In connection with judicial proceedings
● Performance by an amateur club or society if the performance is given to
non-paying audience.
● The making of sound recordings of literary, dramatic or musical work under
certain conditions.
PUBLICATION (S.3)

For the purpose of the Act, the word publication means making a work available to
the public by issue of copies or by communicating the work to the public. A work is
not deemed to be published or performed in public if it is so done without the
license of the owner of copyright.

A work which is published in India is to be deemed as first published in India

though it has been simultaneously published in some other country also.

A work is to be taken simultaneously published in India and the other country if the
time gap does not exceed 30 days. The Central Government may prescribe a
different time gap in relation to any specified country.
COPYRIGHT OFFICE (S.9)

An office has been established under the Act called the Copyright Office. The office
is under the immediate control of the Registrar of Copyright. The Registrar has to
act under the superintendence and direction of the Central Government.

COPYRIGHT BOARD (S.11)

The Central Government has constituted a Copyright Board. It consists of a

Chairman. Other members are to be not less than two, nor more than fourteen.

The tenure of office and its conditions have to be prescribed by the Central
Government.
WHO CAN APPLY FOR COPYRIGHT REGISTRATION?

1. The author (creator of the work)

2. The owner (if rights are assigned)
3. A legal heir or representative

IS COPYRIGHT REGISTRATION MANDATORY?

No, copyright protection is automatic upon the creation of an original work.

However, registration provides prima facie evidence of ownership and legal
standing in case of disputes.
AUTHOR
The author is the person who creates the work, such as a literary, artistic, or scientific
work. The author's rights include receiving compensation for the work and protecting it
from exploitation.
FIRST OWNER
The first owner is the person or entity that has the exclusive rights to the work. The first
owner's rights include the right to reproduce, publish, adapt, and translate the work.

The first owner is responsible for registering and enforcing the copyright. They also have
the right to assign, prevent usage, and monetize the work.
PROCEDURE OF REGISTRATION

1. FILLING THE APPLICATION

Applications can be filed online via the Copyright Office’s portal

(www.copyright.gov.in) or submitted physically to the Copyright Office in New Delhi.

Each separate work (e.g., book, song, painting) requires a separate application.

While filling the application form, the appropriate category of work (literary, artistic,
musical, cinematographic film) must be selected. If the work has multiple owners, a
No Objection Certificate must be obtained from the co-authors or co-owners as
may be required.

The prescribed fee must be paid based on the type of work.

2. EXAMINATION AND OBJECTION
After submission, a Diary Number is generated, which acts as a reference number.
The Copyright Office conducts a formal examination to check for errors or missing
documents. A 30-day waiting period is provided to allow objections from third
parties.
3. HANDLING OBJECTIONS
If no objections are received within 30 days, the application proceeds to scrutiny by
the Copyright Examiner.
If an objection is filed, the Copyright Office notifies both the applicant and the
opposing party.A hearing is conducted, where both parties present their claims.
If the objection is resolved in favor of the applicant, the application moves forward.
If the objection is upheld, the application may be rejected.
4. EXAMINATION BY THE COPYRIGHT OFFICE
The Copyright Examiner verifies the originality and compliance of the work.
If any discrepancies are found, the applicant is notified and must respond. If no
issues arise, the application is approved.
5. REGISTRATION AND CERTIFICATE ISSUANCE
Upon approval, the work is registered, and the details are entered into the Register
of Copyrights.
The Copyright Office issues a Certificate of Registration to the applicant, serving as
official proof of copyright ownership.
The applicant can then use this certificate for legal and commercial purposes, such
as proving ownership in court in case of infringement.
WHAT IS THE TERM OF A COPYRIGHT?

1. For work published during the lifetime of the author the term of a copyright is
for the lifetime of the author plus 60 years.
2. For cinematographic films, records, posthumous publication, anonymous
publications, works of a 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.
3. For broadcasting, the term is 25 years from the beginning of the calendar year
following the year in which the broadcast was made.
INFRINGEMENT OF COPYRIGHT

Infringement includes -

● Reproduction without permission

● Translation
● Adaptation
● To perform the work in public or communicate to the public
● To make cinematographic film or sound recording. In case of computer
programs the rights also include the right to sell or give on hire, or offer for
sale or hire any copy of the computer programme, regardless of whether such
copy has been sold or given on hire on earlier occasions.
REMEDIES FOR COPYRIGHT INFRINGEMENT.

1. Before Civil Courts: A copyright holder may move a Civil Court to grant
injunction against such persons, claim damages and accounts.
2. Criminal Courts: To get the infringer imprisoned and the infringing copies
seized. Besides one can get ANTON PILLER order from the court, which means
that court grants an ex-parte order if it feels that the case is balanced in favour
of copyright holder, damage otherwise cause could be great, there should be
clear evidence to show the presence of infringing copies in the premises of
infringer having knowledge he could be liable for imprisonment ranging 6
months to 3 years and fine ranging Rs. 50,000 to Rs. 2 lakhs.
3. Before Registrar: The copyright holder may also request the Registrar of
copyright to stop importing infringing copies and confiscation. And also for
delivery of confiscated copies
PROCEDURE FOR REGISTRATION OF A WORK UNDER COPYRIGHT (a
summary)

1. FILING: Application needs to be made along with requisite fees to the Office of
Copyright. The Registrar issues a filing number, filing date and filing receipt.
The applicant shall have to wait for a mandatory period of 30 days during
which anyone having objection can file their objection. If any objection is filed,
the Registrar shall within 30 days hear the parties and decide whether
registration could be granted or not.
2. EXAMINATION: If no objection is filed, the Registrar shall examine the
application and any further information required shall be filed within 30 days.
3. REGISTRATION: The Registrar shall issue the copyright registration certificate
TRADEMARK
The Trademark Act, 1999, as amended by The Trademark (Amendment) Act, 2010
and The Trademark Rules, 2002, as replaced by The Trademark Rules
(Amendment) 2010 govern copyright in India.

A trademark is a visual symbol which may be a word, signature, name, device, label,
numerals, symbols, marks, slogans, sounds, gestures, shapes, packaging or colors
used by one undertaking on goods or services or other articles of commerce to
distinguish it from other similar goods or services originating from different
undertaking.
TYPES OF TRADEMARKS

1. Product mark: A product mark is a type of trademark that is used specifically

for products or goods, but not on services. It is used to identify the provider,
the reputation, and the origin of the product.
2. Word mark: A Word Mark is a type of trademark that consists of words, letters,
numerals, or any combination of these. In a Word Mark registration, attention
is given to the style or manner in which the words or letters are written,
represented, the font size used, the design attached with the words, or any
other graphic feature of the letters or words.
3. Device mark: A device Mark is also known as a logo mark. Logo marks are
those which would represent your brand or company brand in the market.
These are specially used for marketing purposes
4. Colour mark: A unique and distinctive Trademark with catchy colors that can
be easily distinguished by consumers.
TYPES OF TRADEMARKS

5. Shape mark: Shape Mark is also known as Trade Dress. It means that if a
company has a product in a unique shape or patterns, then they can register
that pattern or shape easily to differentiate.
6. Sound mark: These are sounds or tunes that the company has created and are
registered. The function of a sound Trademark is to uniquely identify the
commercial origin of products/ services by means of an audio clip.
7. Motion mark: These are 3D or moving trademarks that consist of a
combination of moving visuals with audio.
8. Service mark: A service is the same as Trademark expect that it identifies the
source or service and not the product. This has become necessary due to the
increase in variety of services available.
TYPES OF TRADEMARK

9. Collective mark: A collective mark may be owned by an association/groups.

The members may use the collective mark provided they comply with the set
criteria established by the association.
10. Certification mark: A certificate trademark means a guarantee mark which
indicates that the goods to which it is applied are of a certain quality or are
manufactured in a particular way or come from a certain region or use some
specific material or maintain a certain level of accuracy. Certification marks are
also applicable to services and the same parameters will have to be satisfied.
TRADEMARKS THAT CANNOT BE REGISTERED

➔ That which is not capable of distinguishing the goods or services of one

person from those of another person; or
➔ Of such nature as to deceive the public or cause confusion; or
➔ Contains or comprises of any matter likely to hurt the religious susceptibilities
of any class or section of the citizens of India; or
➔ Comprises or contains scandalous or obscene matter; or
➔ It is prevented under the Emblems and Names (Prevention of Improper Use)
Act, 1950; or
➔ A generic term
➔ Words or shapes commonly used.
APPLICATION FOR REGISTRATION (S.18)
A person who claims to be the proprietor of a trademark which he is using or
proposes to use and if he is desirous of getting it registered, he may file an
application. The application in writing has to be filed with the Registrar in the
prescribed manner.
The application has to be filed in the office of the Trade Mark Registry within whose
territorial limits in the principal place of business in India of the applicant is situate.
Subject to the provisions of the Act, the Registrar may refuse the application or may
accept it absolutely or subject to amendments, modifications, conditions or
limitations, if any.
In case of refusal or conditional acceptance of an application, the Registrar has to
record in writing the grounds of refusal or conditional acceptance and the materials
used by him in arriving at the decision.
WITHDRAWAL OF ACCEPTANCE (S.19)
The Registrar can withdraw his acceptance but before registration if he is satisfied
that -
1. The application has been accepted in error; or
2. In the circumstances of the case, the trademark should not be registered or
should be registered subject to conditions or limitations or conditions
additional to or different from the conditions or limitations subject to which the
application has been accepted.
ADVERTISEMENT OF THE APPLICATION (S.20)
After the application has been accepted, the Registrar has to cause the application
to be advertised. The advertisement has to show the conditions and limitations
subject to which the application has been accepted.
OPPOSITION TO REGISTRATION (S.20)

Any person may give a notice to the Registrar of his opposition to registration. The
notice has to be in writing and has to be given in the prescribed manner. The
application has to be made within three months from the date of advertisement or
within such further period, not exceeding one month in the aggregate as the
Registrar may allow.

The Registrar has to serve a copy of the notice on the applicant. The applicant has,
within two months from the receipt of the notice, to send to the Registrar in the
prescribed manner a counter statement of the grounds on which he relies for his
application. If he does not do so, he is to be taken to have abandoned the
application. If he does send a counter-statement, the Registrar has to serve a copy
of it on the person opposing the statement.
The evidence on which the applicant/owner rely has to be submitted in the
prescribed manner and also within the prescribed time. An opportunity to be heard
must be given.

The Registrar has to consider the evidence and arguments of the parties and
decide subject to what conditions and limitations the application is to be allowed.
CORRECTION AND AMENDMENT (S.22)

The Registrar can permit correction of any error in or amendment of the application
on such terms as he thinks fit. He may do so, at any time whether before or after
the acceptance of the application for registration under section 18.

REGISTRATION (S.23)

When an application for registration of a trademark has been accepted and either
the application has not been opposed and the time for opposition has expired, or
the application was opposed and it has been decided in favour of the applicant, the
Registrar may register the trademark, unless the Central Government has directed
otherwise. The trademark when registered becomes registered as of the date of
making the application and that date is deemed to be the date of the registration.
RIGHTS CONFERRED BY REGISTRATION OF TRADEMARK

The proprietor or owner of the goods or service has the right to apply for the
registration of the trademark with the Office of the Registry of Trademarks. Once
the Trademark is registered, the proprietor or owner of the Trademark enjoys the
statutory right of not only to the exclusive use of the said mark in relation to the
goods or services for which the same is registered but also to exclude others from
using an identical or deceptively similar mark in respect of the goods or services.
PROCEDURE FOR REGISTRATION OF A TRADEMARK.
1. Filing of an application: With requisite details and the fee at any one of the
office of Trademark Registry.
2. Examination: The office of the Registry shall examine the report. This shall take
anywhere between 3 months to 1 year.
3. Advertisement: An advertisement shall be given in the Indian Trade Mark
Journal. This enables the public to file objections, if any. Opposition can be
filed within 3 months from the date of the advertisement in the journal, which is
extendable by 1 month.
4. Registration: If there is no objection or when there is an objection which has
been heard and disposed off, the Registrar shall proceed to register the
trademark.
ACTS AMOUNTING TO INFRINGEMENT OF TRADEMARK
1. Using the same or similar marks even for different goods falling in other
classes; or
2. Using the same or similar marks even only as a part of the firm name or
company name; or
3. Using the same or similar mark only in advertising or on business papers; or
4. Unauthorised oral use of the said Trademark; or
5. Importing or exporting goods under the said Trademark.
Trademark rights are granted for a period of 10 years which is renewable. The right
granted can be renewed by paying requisite fees.
However, whenever a registered trademark is not used continuously for a period of
5 years and 3 months from the date of registration, it is liable to be cancelled.
REMEDIES FOR INFRINGEMENT.

1. Civil Remedies: When instances of infringement and passing off incur, the court
of competent jurisdiction (not lower than a District Court) can be moved for
grant of injunction, Anthon Pillar Orders, damages and accounts of profits.
2. Criminal Proceedings: Complaints can be made against persons causing
infringement. Imprisonment between 6 months upto 3 years and fine of Rs.
50,000 to Rs. 2 lakhs may be levied. (Limitation period - 3 years)
GEOGRAPHICAL INDICATION
A geographical indication is a sign used on products that has a specific
geographical origin and includes the qualities or reputation of that origin.

A geographical indication is given mainly to agricultural, natural, and manufactured

handicrafts arising from a certain geographical area.

Geographical indications (G.I.) are one of the forms of IPR which identifies a good
as originating in the respective territory of the country, or a region or locality in that
particular territory, where a given quality, reputation or other characteristic related
to the good is essentially attributable to its geographical origin.

The relationship between objects and place becomes so well known that any
reference to that place is reminiscent of goods originating there and vice versa.
It performs three functions:

● First, it identifies the goods as to the origin of a particular region or locality;

● Secondly, it suggests to consumers that goods come from a region where a
given quality, reputation, or other characteristics of the goods are essentially
attributed to their geographic origin;
● Third, they promote the goods of producers of a particular region.
PROHIBITION OF REGISTRATION OF CERTAIN GEOGRAPHICAL INDICATIONS
SECTION 9
The following types of geographical registration are not to be entered:
1. The use of which is likely to deceive or cause confusion
2. The use of which would be contrary to law for the time being in force
3. Which comprises or contains scandalous or obscene matter
4. Which comprises or contains any matter likely to hurt religious sentiments of
any class or sections of citizens of India.
5. Which would otherwise be disentitled to protection in court
6. Which are determined to be generic names or indications of goods and as
such not protected in the country
7. Which are literally true as to the territory, region or locality in which the goods
originate but falsely represent that the goods originate in another territory,
region or locality
PROCEDURE AND DURATION OF REGISTRATION Application (S.11)
An application for registration can be made by any association of persons or
producers or any organization or authority established under the law representing
the interests of the producers of the goods concerned.
They should be desirous of registering a geographical indication in relation to the
goods. The application must be in the prescribed manner and form. Prescribed fees
must also be paid.
The application must contain the following particulars -
1. a statement showing how geographical indication serves to designate the
goods as originating from the territory concerned of the country, region or
locality. The statement has also to show the specific quality, reputation or other
characteristics which are due exclusively or essentially to the geographical
environment with inherent natural and human factors.
2. the class of goods to which geographical indication is to apply
3. the geographical map of the territory of the country in which the goods
originate or are being manufactured
4. the particulars regarding appearance of the geographical indication and
whether it is comprised of the words or figurative elements or both
5. such statement of producers as may be prescribed who are to be initially
registered with the registration and
6. such other particulars as may be prescribed
A single application can be made for registration for different classes of goods. The
fees payable shall be in respect of each such class of goods.
An application has to be filed in the office of the GI Registry within whose territorial
limits the locality to which the GI relates is situated.
The Registrar may refuse an application or accept it absolutely or subject to such
amendments, modifications or conditions or limitations as he may think fit. In the
case of refusal or conditional acceptance, the Registrar has to record the grounds
of the decision in writing mentioning the materials used by him in arriving at his
decision.
WITHDRAWAL OF APPLICATION (S.12)

The Registrar can withdraw the registration if he is satisfied that the registration
was accepted in error or in circumstances of the case, it should have been
accepted subject to conditions or limitations, or, if the registration was already
conditional, there should have been some further conditions or limitations.

The Registrar must give the affected party an opportunity, if he so wants and decide
the matter after hearing him.

ADVERTISEMENT OF APPLICATION (S.13)

When an application has been accepted absolutely or conditionally, the Registrar

has to advertise the application. It should be done as soon as possible after
acceptance. The advertisement must also disclose the conditions or limitations
subject to which the application has been accepted.
OPPOSITION TO REGISTRATION (S.14)

Any person can present his opposition to the registration. An objection has to be
presented within 3 months from the date of advertisement. The Registrar can
extend this period on an application for one more month. The Registrar has to
serve a copy of the opposition to the applicant.

Within 2 months from the date of receipt of the copy, the applicant has to submit his
counter-statement showing the grounds on which he relies for his application. If he
does not do so, he has to be deemed to have abandoned his application. If he filed
his counter-statement, the Registrar has to serve a copy of it to the opponent. If the
parties want to rely on any evidence, they must file with the same with the
Registrar.

Should the parties so desire, the Registrar should give them an opportunity of
being heard post which he may decide the matter.
CORRECTION AND AMENDMENT (S.15)

The Registrar can permit an amendment of the application for registration or

correction of any error in it.

REGISTRATION (S.16)

When the time for opposing the application has expired or the objections, if any,
have been decided in favour of the applicant, the Registrar may register the GI,
unless the Central Government otherwise directs.

The registration becomes effective from the date of application. The Registrar has
to issue a certificate of registration to all the applicants and authorised users.
APPLICATION FOR REGISTRATION AS AUTHORISED USER (S.17)

After registration of a GI, a person may apply to the Registrar, on a prescribed form,
for registering him as an authorised user. The applicant has to submit documents
along with the prescribed fees, showing prescribed facts on the basis of which the
Registrar can judge whether the applicant is a producer of the goods in question.

DURATION, RENEWAL, REMOVAL AND RESTORATION OF REGISTRATION (S.18)

The registration of a geographical application is for a period of 10 years but may be

renewed from time to time. The registration of the authorised user is also for a
period of 10 years or for a period till the registration of the GI expires.A registration
can be extended for a further spell of 10 years.

When a registration is about to expire, the Registrar has to give notice to the
registered proprietor or the authorised user informing him of the date of expiry and
the requirements to be complied for the same
If the requirements are not complied with within the time permitted in the notice,
the Registrar may remove the geographical indication from the register.

But where late application is made within 6 months with the payment of surcharge,
the Registrar has to renew the application .

Where the GI has been removed from the register by reason of non-payment of
prescribed feed, the Registrar is authorised to renew the same after the expiry of 6
months and within 12 months from the date of removal if the applicant has complied
with the prescribed conditions.
RIGHTS CONFERRED BY REGISTRATION (S.21)

A valid registration of a geographical indication creates the following rights

1. The registered proprietor or authorised user or users have the right to obtain
any relief against infringement as provided in the Act;
2. The authorised user gets exclusive right to the use of the indication in relation
to the goods which the GI is registered. Such use would however be subject to
any condition and limitation to which the registration is subject
DESIGN
The registration and protection of industrial designs in India is administered by the
Designs Act , 2000 and corresponding Designs Rules , 2001 which came into force
on 11th May 2001 repealing the earlier Act of 1911. The Design Rules, 2001 was
further amended by Designs (Amendment) Rules 2008 and Designs (Amendment)
Rules 2014.
As per Sec 2(d) of the Designs Act, 2000 “design” means shape, configuration,
pattern, ornament or composition of lines or colours applied to any article whether
in two dimensional or three dimensional or in both forms, by any industrial process
or means, whether manual, mechanical or chemical, separate or combined, which
in the finished article appeal to and are judged solely by the eye.
Essentials Requirements
To be eligible for protection, a design must be:

1. New or Original – Not published or used before.

2. Distinctive and Unique – Must not resemble an existing design.
3. Applied to an Article – It should be applicable to a physical product.
4. Non-Functional – Must not be dictated by the product’s function
5. Visible to the Eye – The design should be evident in normal use.

What Cannot Be Registered as a Design?

1. A design that is not new or already published.

2. Designs dictated by function (e.g., a gear shape necessary for mechanical
working).
3. Designs contrary to public order or morality.
4. Logos, trademarks, and artistic works (these are protected under trademark
Duration of protection.
10 years from the registration date.
Can be renewed for an additional 5 years, making it 15 years in total.

Eligibility criteria for application

Any person or the legal representative or the assignee can apply separately or
jointly for the registration
The term "person" includes firm, partnership, small entity, and a body corporate.
In the case of an NRI, his agent or legal representative needs to initiate the Design
Registration process in India.