Chapter - 2

Intellectual Property Rights

2.1 Introduction:
The concept of Intellectual Property Right has emerged as a result
of the concept of globalization, privatization and liberalization that has
necessitated the protection of rights of production, design, trademarks etc.
In fact, this is not a new concept. Trademarks and copyrights were
protected from a sufficiently long time. For example, the concept of
protection of copyright of written material is not new. Published books
were copyrighted since long. Trademarks and names have also been
protected. The concept of ‘registered trademark’ is not new. Even the
names of companies, institutions, and news papers are not allowed to be
repeated i.e. one cannot copy the name of a company or even for a
product. The same concept has now been extended on international scale
as a result of the concept of globalization.
India adopted the New Economic Policy in 1991. The GATT was
updated (GATT 1994) to include new obligations upon its signatories.
One of the most significant changes was the creation of the World Trade
Organisation (WTO). The existing 72 GATT members and the European
Communities became the founding members of the WTO on 1st founding
of the WTO, 21 new non-GATT members have joined and 29 are
currently negotiating membership. There are a total of 153 member
countries in the WTO.
The GATT was a convention, treaty and agreement between the
member States. It was a process for the formation of WTO, which is an
institutional body. The GATT was a concept and dream of the UNO. It

58
was realised by way of the GATT. However, after several Rounds, the
doubts were cleared, and now there is a membership of 153 countries in
the WTO. The GATT was only in the preparation stage. The WTO is now
functioning very well and has become an agency of the UNO.
The WTO expanded its scope from traded goods to trade within the
service sector and intellectual property rights. Although it was designed
to serve multilateral agreements, during several Rounds of the GATT
negotiations (particularly the Tokyo Round) multilateral agreements
created selective trading and caused fragmentation among members. The
WTO arrangements are generally a multilateral agreement settlement
mechanism of the GATT. The GATT had a temporary nature, whereas
the WTO is permanent.
This third chapter presents an overall review of the concept of
protection of traditional Indian knowledge from intellectual property
rights. The chapter reviews the development of the concept in its
historical form. The chapter also analyses the concept as it is developed
after GATT.

2.2 The Concept of Property:

Before the researcher turns to discuss the Concept of Intellectual
Property Rights, it would not be out of place to discuss the Concept of
Property in general. The term “Property” is synonymous with the right of
ownership. Ownership and property are interdependent. In its widest
sense, property includes all a person’s legal rights, of whatever
description. A man’s property is all that is, his in law.
There are different opinions arid different theories among the
Jurisprudents about the definition of “Property”, which differs from
theory to theory.

59
1. Natural Law Theory:
This theory was supported by Grotius, Pufendorf, Locke and
Blackstone. According to their opinion the property is derived from
nature and it is divided by men in the society by an agreement.
Locke says: “Every man has a property in his own person, who has
right to preserve his property, the is, his life, liberty and estate.”

2. Metaphysical Theory:
This theory was propounded by Kant and Hegal. Kant defines:
“The essential elements of legal transaction of original acquisition are
three, viz.
(i) ‘apprehension’ of an object that belongs to none;
(ii) an act of the free will interdicting all others from using it as their;
and
(iii) appropriation a permanent acquisition.”

3. Positive Theory:
Spencer: He opined that the property is the result of individual
labour. No man has a moral right to property which he has not acquired
by his personal labour. This theory is nearer to Karl Marx’s Marxism.

4. Historical Theory:
Bentham: He says: “Property is nothing more than the basis of a
certain expectation of deriving hereafter certain advantage by a thing the
reason of that relation in which we stand towards it. There is no image, no
visible lineament which can property that relation that constitutes
property. It belongs not to physics, but to metaphysics. It is altogether a
conception of mind. To it all or any of these physical circumstances failed
to assist in conveying the idea of property.”

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5. Psychological Theory:
Benetham: He says: “Property is nothing more than the basis of a
certain expectation of deriving hereafter certain advantage by a thing by
reason of the relation in which we stand towards it. There is no image, no
visible lineament which can property the relation that constitutes
property. It belongs not to physics, but to metaphysics.
It is altogether a conception of mind. To hold the object in one’s
hand, to keep it, to manufacture it, to work it up into something else, to
make use of it all or any of these physical circumstances failed to assists
in conveying the idea of property.

6. Sociological Theory:
This theory was propounded by Duguit, Laski, Karl Marx. Laski
says, “Property is a social fact like any other and it is the character of
social facts to alter: It has assumed the most varied aspects and it is
capable of yet further changes.”
Karl Marx: “The capitalist is not capitalist because the directs but
he becomes an industrial commander, because he is a capitalist, Industrial
command becomes an attribute of capital, as under feudalism the power
of command was, in war and law, an attribute of ownership of land.”

Kinds of Property
Salmond simplified the division of property in the following table -

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 Property

Jura in re aliena Jura in re propria

Leases Servitudes Securities Immaterial things Material things

Patents, copyrights Land, chattels

Trade-marks etc.

Corporeal Property
It is also known as tangible property. It is seen to the people, i.e.
land and chattels. They are material things. It has been recognised from
the initial stage of human civilization. Corporeal property again can be
divided into two kinds:
1. Moveable: E.g. Chattels
2. Immoveable: E.G. Land, Buildings

Incorporal Property:
Incorporal property is intangible property. It is also known as the
“Intellectual or Conventional Property.” It is a recent development in the
world. The right in incorporeal property is right in rem (rem = entire
world). Incorporeal property is of two kinds -
1. Immaterial things e.g. Patents, Copyrights, Trademarks etc.
2. Jura in re aliena (Right over other property) e.g. Leases,
Servitudes, Securities etc.

Jura in Re Propria (Right over the property)

Jura in re propria are those rights of ownership in one’s own
property as are not exercised over material objects. Jura in re propria

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deals with land, chattels, patents, copy rights, trade marks, etc. Jura in re
propria is divided into two classes:

1. Material Things:
Land, Chattels, goods etc. The transfer of Propert Act 1882 deals
with land and buildings. The Sale of Goods Act, 1930 deals with Chattels
and goods. Indian Contract Act coordinates all the necessary Acts and
provisions of them. The transfer of material things in an age old practice.
It is corporeal property.

2. Immaterial Things:
They are incorporeal properties. They are produced by human skill
and labour. The book written by an author is recognised as a property of
his own. Examples of these things/ rights are patents, copyrights,
trademarks, etc. The recognotion of these rights is a new trend and a new
idea. To protect these rights Patents Act, Copyrights Act, Trademarks
Act, etc. have been enacted in every country, including India.

Jura in Re Aliena (Right over other property)

These are also incorporeal properties. These are known as
“Encumbrances”. They are right in rem over a res (thing) owned by
another. Rights in re aliena run with the thing encumbered. They bind the
res (thing) in whosoever hands it may pass. There are certain convents.
The convenants and encumbrances restrict the owner to certain extent
with regard to his own property. These important encumbrances are
leases, servitudes, securities, trusts, etc.

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2.3 The Concept of Intellectual Property Right
Intellectual property can be defined as a conceptual or virtual
product produced from the intellectual capacities of a certain person. For
example an author writes a book. It is his intellectual property. A Painter
paints a picture, it is his intellectual property. An Engineer creates a
design, it is his intellectual property. Thus, a book, a picture, a song, a
music note, a design, a product etc. which is the creation of one’s mind
and intellect is an intellectual property. Intellectual property created in
this way may prove useful for others. For example, a design created by
someone can be used for production of goods or a trademark created by a
company has a goodwill in the market. Thus it has an economic value.
This economic value must be protected. Hence the concept of protection
of intellectual property right has been brought in the purview of law.
At the outset it would not be out of place to explain some basic
concepts or terms related with intellectual property. This is a brief
introduction to various types of intellectual property.

History of IRPs
The term “Property” is synonymous with the right of ownership.
Ownership and property are inter-dependent. In its widest sense, property
includes all a person’s legal rights, of whatever description. A man’s
property is all that is his in law. The terms ‘Intellectual Property’ began to
be used since the nineteenth century. Before it, a few British statutes like
the British Statute of Anne, 1710, the Statute of Monopolies, 1623 are
now seen as the origin of copyright and patent law respectively. In 1867,
the North German Congederation’s Constitution granted legislative
power over the protection of intellectual property (Schutz des geistigen
Eigentums) to the confederation. The administrative Secretariat was
established by the Paris Convention in 1983. Later it was merged in the

64
Berne Convention in 1893 in Berne with the new title the United
International Bureaux for the Protection of Intellectual Property. The
Organisation subsequently relocated to Geneva in 1960, and was
succeeded in establishing the World Intellectual Property Organisation
(WIPO) by treaty as an agency of the United Nations in 1967.
England is the birth place of all these rights. These rights came into
existence by two important sources: (1) Statutes; and (2) Common Law.
The same trend has been spread throughout the world, including India.
There are Acts enacted on the Copyrights; the Rights in Performance; the
Patents; the Designs and the Trade Marks. The Law of Confidence,
Passing Off, Trade Libel, etc. are covered under the common law and
also in other statutes.1

Meaning of Intellectual Property

Intellectual property is one of the properties entertained and
exercised by human beings in this modern, scientific and technical age. It
is a new kind of property. Intellectual Property is a term referring to a
number of distinct types of creations of the mind, for which a set of
exclusive rights are recognized by law. While these rights are not actually
property rights, the term property is being used because they resemble
property rights in many ways. Under the intellectual property law, owners
are granted certain exclusive rights to a variety of intangible assets, such
as literary, musical, artistic works, discoveries, inventions, words,
phrases, symbols, designs, etc.
The word ‘Intellectual’ as an adjective means involving or
appealing to the intellect’, ‘having a highly developed ability to think,
reason and understand. The same word as a noun means ‘a person with a
highly developed intellect and great mental ability’.
1
Siddharth Bawa (2008), Law of Intellectual Property, Allahabad Law Agency, Faridabad.

65
 Intellectual property means ‘a property created by human brain’. It
is not similar to that of a land or house. The subject-matter of intellectual
property is very wide and includes literary and artistic works, films,
computer programs, inventions, designs, trademarks, etc. Lands, houses,
etc. immovable properties and vehicles, watches, etc. immovable
properties can be sold, mortgaged, leased, etc. from one person to
another. In the similar way, the intellectual property also can be sold,
mortgaged, leased, assigned, etc. from one person to another person.
Intellectual property first were known collectively as ‘industrial
property’. The Paris Convention for the Protection of Industrial Property,
1883 used the term ‘industrial property’ instead of ‘intellectual property’.
After the Paris Convention, other rights, such as Copyright, Rights in
Performance, etc. were also included in industrial property. Gradually in
place of ‘industrial property’ ‘intellectual property’ was permanently
coined.
Intellectual property law concerns the legal rights associated with
creative effort or commercial reputation and goodwill. Intellectual
property creates rights and duties. If A-an author writes a book-X, A
exercises all rights over it. These rights are rights in rem. There is a duty
upon every person not to copy it and not to take unfair advantage of the
work-X or reputation of A. The intellectual property law explains all
these rights and duties.
The important reason for the development of intellectual property
law is that a person who Creates a work or has a good ideal which he
develops has a right, based partly on morality and partly on the concept of
reward to control the use and exploitation of it, and he should be able to
prevent others from taking unfair advantage of his efforts. When one
person is struggling to create a new thing, why should others be able to
save themselves all the time and effort required to create or invent the

66
thing concerned? That is why the remedies must be provided to the
inventor to protect his ideas and infringement from others. This is done
by the intellectual property law.
Infringement of other’s rights, making counterfeiting is equal to
theft of goods. The intellectual property law protects the intellectual
property owner from the infringement and counterfeiting.
Intellectual property is an umbrella term covering patents,
trademarks and copyrights. Intellectual property rights are specific
abilities, granted by law to right holders, for the control of intellectual
property. An intellectual property right is the legal right to property
owned by a content creator and often protected through the use of a
trademark or copyright. This content is the creator’s intellectual property.
The intellectual property rights can be put into force -
(a) In the case of assignment and transfer, and
(b) In the case of an infringement.
At the same time, the intellectual property is in existence as it was.

Advantages of Intellectual Property

1. Economic Prosperity:
Intellectual property increases the prosperity of the owner, society
and the State, and in certain occasions to entire world. For example, Bill
Gate established ‘Microsoft’, and improved computer technology. He
brought revolutionary changes in computers. Due to his technical
knowledge, he has become the richest person in the world. It helped
U.S.A. to stand in the ahead of computer field. At the ‘same time,
computers spread throughout the world.

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2. Knowledge:
The source of intellectual property itself is the basis of knowledge.
It spreads from the creator to the entire world. Xerox invented xerox
process. Very soon, it spread entire globe, all of us are experiencing the
advantage of it. TVs., information technology, mobiles, internet-banking,
etc. increase the knowledge of the world people. Every field of human
life is affected by the science and technology particularly from the
beginning of nineteenth century

3. Social Changes:
The intellectual properties change the social life. It brings the
modern techniques into the common man life.
Cell Phone: Dr Martin Cooper, a former general manager for the
systems division at Motorola, is considered the inventor of the first
portable handset and the first person to make a call on a portable cell
phone in April 1973. Later revolutionary changes have been in the cell
phones in their shape, cost, attractive features. Now on our planet with
around 6.8 billion (680 crore) people, the number of cell phone
subscriptions has reached to 5 billion (500 crore) at the end of 2010. The
spread of Cellphones has changed the world into a global village. This
has changed the social life, of entire world. To-day the Indian people
have 55 crore cellphones. Daily labour, rickshaw pullers, and even
beggars, are having cellphones in their hands.
For example; T.V., Cell Phone, Computer, etc., have changed the
life-style of entire world. Investment is stimulated. It accrues abundant
profits. Intellectual property renders most abundant facilities to the
human beings in every walk of life. Entertainment: Cinemas, videos,
computers, internet; TV’s., taperecorders, C.Ds., Pen Drives, novels,
dramas, etc. provide entertainment to the people. Intellectual property

68
increases the health. In the beginning of the 20th century, the average
death age was 34 years in India and 50 years in western countries. At the
end of the 20th century, average death age is 54 years in India and 75
years in western countries. This is achieved due to the new inventions and
techniques in the world, which have been adopted in medical field. The
living standard is also increased due to the intellectual property. Every
intellectual property is a private property. It is agreed by TRIP
Agreement.

2.4 Definition & Types of Intellectual Property

Prof. Niblett explains, “Intellectual property is the most basic form
of property because a man uses nothing to produce it other than his brain.
The basic reason for intellectual property is that a man should own what
he produces, that is what he brings into being. If what he produces can be
taken from him, he is no better than a slave.”
Intellectual property law has created several different forms of
rights or areas of law. All these rights and legal provisions altogether are
called as ‘intellectual property’.
Classification of Intellectual Property -
Although the list is not exhaustive, the important rights and areas
can be classified as follows -
1. Copyright
2. Rights in Performance
3. The Law of Confidence
4. Patents
5. Designs
6. Trade Marks
7. Passing Off
8. Trade Libel

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 9. Cyber Law
10.Broad Casting (Neighbouring Rights) etc.
There are many similarities in between these forms of properties
and at the same time, there are also differences. Some rights give
monopoly to the creator, and some merely prevent the unfair use by
others. The period of rights vested in such properties also varies from one
form to another. Some require registration and some do not.

Copyright
This is a type of intellectual property which is related with written
material. Even a poem, a picture or a musical note can have a copyright.
The copyright prohibits others from copying or publishing the written
material, picture or music and thereby the creator is entitled to the income
derived from such a literary product.
Protects creative works that are musical, literary, artistic works,
lectures, plays, art reproductions, models, photographs, computer
software, etc. The rights under this also have a specified duration of
protection. The term of a work, [other than a photographic work or a
work of applied art] is calculated on a basis other than the life of a natural
person.2
Such a term shall be a term not less than 50 years from the end of
the calendar year of the authorized publication or failing such authorized
publication within 50 years from the making of the work [50 years from
the calendar year of making].
For example, the term of protection available to performers is at
least 50 years computed from the end of the calendar year when the
performance took place.

2
Government of India (2008), The Copy Right Act - 1957, Law Publishing House, Lucknow.

70
 The law relating to copyrights is provided by The Copyright Act]
1957 (Act No. 14 of 1957). The Indian Copyright Act, 1914 (Act No. 3 of
1914) was enacted by the British Parliament for India. It was the first
modern copyright legislation in India. The Indian Copyright Act, 1914
was solely based on the English Copyright Act, 1911. The framers of the
Indian Copyright Act, 1914 had framed that Act by taking word to word
from the English Act.
After independence, India participated in the Berne Convention for
the protection of literary and artistic works and the Universal Copyright
Convention, 1952. Taking the inspiration and spirit from these two
Conventions, India enacted a new Act “The Copyright Act, 1957”
repealing the Copyright Act, 1911. Great changes were brought in the
Copyright Act, 1957 according to the two Conventions.

Registration Copyright
The rules and procedure of registration of Copyright are given in
Section 44 to 50 of The Copyright Act 1957. Chapter-X of the Copyright
Act, 1957 explains the legal provisions about “Registration Copyright”.
This Chapter contains Sections 44 to 50 and 50-A.

Objectives of Registration
Under the Copyright Act, 1957 registration of copyright is only
optional. The Registration not compulsory. ‘Registration of a copyright
performs as a conclusive proof of such artistic work. It provides prime
facie proof for the work or performance done by the author.
Registration is not a condition precedent to file any action against
infringement of copyright.
A writes a book-X, but does not register it. B copies it. A can file
suit against B for infringement of his copyright, and can recover damages

71
from B. This decision was given in Nav Sanity a Trakashan vs. Anand
Kumar (AIR 1981 All 2000)
While disposing Kaviraj Laxman Misra vs. Sadhu Charan Mathani
(1976 OJD 42), the Court held that registration of copyright is only
optional, and non-registration does not deprive the author to file civil and
criminal proceedings against the infringer.

Maintenance of Register of Copyrights:

There shall be kept at the Copyright Office a register in the
prescribed form to be called the Register of Copyrights in which may be
entered the names or titles of works and the names and addresses of
authors, publishers and owners of copyright and such other particulars as
may; be prescribed. [Sec. 44]

Entries in Register of Copyrights: Section 45 - explains the provisions

about entries in Register of Copyrights:
1) The author or publisher of, or the owner of or other person
interested in the copyright in, any work may make an application in the
prescribed form accompanied by the prescribed fee to the Registrar off
Copyrights for entering particulars of the work in the Register of
Copyrights:
Provided that in respect of an artistic work which is used or is
capable of being used in relation to any goods, the application shall
include a statement to that effect and shall be accompanied by a
certificate from the Registrar of Trade Marks referred to in Section 4 of
the Trade and Merchandise Marks Act, 1958 (43 of 1958), to the effect
that no trade mark identical with or deceptively similar to such-artistic
work has been registered under that Act in the name of, or that no

72
application has been made under that Act for such registration by any
person other than the applicant.
2) On receipt of an application in respect of any work under sub-
section (1), the Registrar of Copyright! May, after holding such inquiry as
he may deem fit, enter the particulars of the work in the Register of
Copyrights.
Index: There shall be also kept at the Copyright Office such indexes of
the Register of Copyrights, as may be prescribed. [Sec. 46]

Form and Inspection of Register : The Register of Copyrights and

Indexes thereof kept under this Act shall at all reasonable times be open
to inspection, and any person shall be entitled to take copies of, or make
extracts from, such register or indexes on payment of such fee and subject
to such conditions as may be prescribed. [Sec. 47]
The Register of Copyrights and Indexes are public documents
within the meaning of Section 35 of the Indian Evidence Act, 1872.
Anybody- can inspect, and take copies of the contents by paying the
prescribed fee to concerned authorities. The copies obtained from the
Register of Copyrights and indexes become relevant facts and
documentary evidence.

Register of Copyrights to be prima facie evidence of particulars

entered therein: Section 48 says that the Register of Copyrights shall be
prima facie evidence of the particulars entered therein and documents
purporting to be copies of any entries therein, or extracts there-from
certified by the Registrar of Copyrights and sealed with the seal of the
Copyright Office shall be admissible in evidence in all courts without
further proof of production of the original.

73
Correction of entries in the Register of Copyrights: Section 49 says
that the Registrar of Copyrights may in the prescribed cases and subject
to the prescribed conditions amend or alter the Register of copyrights
by—
a) Correcting any error in any name, address or particulars; or
b) Correcting any other error which may have arisen therein by
accidental slip or omission.

Rectification of Register by Copyright Board:

Section 50 lays down that the Copyright Board, on application of
the Registrar of Copyrights or of any person aggrieved, shall order the
rectification of the Register of Copyrights by,—
a) The making of any entry wrongly omitted to be made in
the register; or
b) The expunging of any entry wrongly made in, or
remaining on, the register; or
c) The correction of any error or defect in the register.
Entries in the Register of Copyrights, etc. to be published: Section
50-A directs that every entry made in the Register of Copyrights or the
particulars of any work entered under Section 45, the correction of every
entry made in such register under Section 49, and every rectification
ordered under Section 50, shall be published by the Registrar of
Copyrights in the Official Gazette or in such other manner as he may
deem fit.
Procedure: Chapter-VI of Copyright Rules, 1958 explains the
manner of registering copyrights in an elaborative way. This Chapter
contains Rules 15 to 20.

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Rule15, Form of Register of Copyrights:
(1) The Register of Copyrights shall be kept in six parts follows -
Part I Literary works other than computer programmes,
tables and compilations including computer data bases
and Dramatic Works.
Part II Musical Works.
Part III Artistic Works.
Part IV Cinematograph Films.
Part V Sound Recordings.
Part VI Computer Programmes, tables and compilations
including computer data bases.

(2) The Register of Copyrights shall contain the particulars specified in

Form -III.

Rule 16, Application for Registration of Copyright:

(1) Every application for registration of copyright shall be made in
accordance with Form IV and every application for registration of
changes in the particulars of copyright entered in the Register of
Copyrights shall be made in accordance with Form V.
(2) Every such application shall be in respect of one work only, shall
be made in triplicate and shall be accompanied by the fee specified
in the Second Schedule in this behalf.
(3) The person applying for registration shall give notice of his
application to every person who claims or has any interest in the
subject-matter of the copyright or disputes the rights of the
applicant to it.
(4) If no objection to such registration is received by the Registrar of
Copyrights within thirty days of the receipt of the application by

75
 him, he shall, if satisfied about the correctness of the particulars
given in the application, enter such particulars in the Register of
Copyrights.
(5) If the Registrar of Copyrights receives gny objections for such
registration within the time specified in sub-rule (4), or if he is not
satisfied about the correctness of the particulars given in the
application, he may, after holding such inquiry as he deems fit,
enter such particulars of the work in the Register of Copyrights as
he considers proper.
(6) The Register of Copyrights shall, as soon as may be, send,
wherever practicable, a copy of the entries made in the Register of
Copyrights to the parties concerned.

Trademark or Service Mark

This is a design of a picture used by a certain company for its
specific product. It is generally in a symbolic form. It represents goodwill
of the firm using it. For example, a gramophone with a dog sitting in front
of it is the trademark of HMV.
Registrable Marks (words/signs / or combinations) capable of
distinguishing the goods or services in connection with which they are
used in course of trade which are certified by the proprietor of the mark in
respect to the origin, material, mode of manufacture of goods or
performance of services. In some countries distinctive sound or smell
characterising the product can also be registered as a trademark. e.g.
‘Tyre that smells like a rose.’ Initially a trademark is valid for not less
than 7 years but it can be perpetually renewed from time to time.
The law relating to trademark is governed the Trade Mark Act
1999. The trademarks are a diverse and familiar feature in both the
industrial and commercial markets. For more than one thousand years and

76
upto the middle of the eighteenth century, the Great Britain was
importing the textiles, ornaments, etc. from India. At that time, the Indian
mark goods were very popular in entire Europe. In the Roman times, it
was common for pottery to be embossed or impressed with a mark, for
example a representation of a dolphin or the maker’s initials, as a visit to
the British Museum will testify. The merchant’s marks were used in
commerce in Britain since the thirteenth century.

The Trade Marks Act, 1999

Introduction:
Since 1958, there were tremendous changes in the technology and
trade, several new inventions, such as, Seat Belt (1959), Computer-Mini
(1960), Cassette-Audio (1963) Synthesiser (1964), Cassette, Videotape
(1969), Floppy Disk (1970), Micro-Processor (1971), Compact Disc
(1972), Disc-Video (1972), Cloning (DMA) (1973), CT Scan (1973),
Rubik Cube (1975), Super Computer (1976), Compact Disc Player
(1979), Parallel Computing (1979), Roller Blades (1980), Computer-
Laptop, Cloning Mammal (1996), HIV (1984), etc., have brought
tremendous changes in the human living and culture. Besides these new
inventions, the previous inventions have also been further developed.
Some of the developed versions are - cell phones, computers, e-
commerce, e-banking, etc.
The Trade and Merchandise Marks Act was passed in the year
1958, since then it has been amended several times. Even though the
T958 Act was not in a satisfactory position to meet the requirements and
challenges, which have been creating by the new and developed versions
of inventions.
Moreover in view of developments in trading and commercial
practices, increasing globalization of trade and industry, the need to

77
encourage investment flows and transfer of technology and the need to
simplify and harmonize trade mark management systems, the Indian
Parliament considered it necessary to bring out a comprehensive statute in
place of The Indian Trade and Merchandise Marks Act, 1958.

The Indian Parliament enacted the Trade Marks Act, 1999

(Act No. 47 of 1999), w.e.f. 15-9-2003.
The Preamble of the 1999 Act says: “An Act to amend and
consolidate the law relating to trade marks, to provide for registration and
better protection of trade marks for goods and services and for the
prevention of the use of fraudulent marks.”

Statement of Objects & Reasons Stated in 1999 Bill:

The Trade and Merchandise Marks Act, 1958 has served its
purpose over the last four decades. It was felt that a comprehensive
review of the existing law be made in view of developments in trading
and commercial practices, increasing globalisation of trade and industry,
the need to encourage investment flows and transfer of technology, need
for simplification and harmonization of trademark management systems
and to give effect to important judicial decisions. To achieve these
purposes, the present Bill proposes to incorporate, inter alia the
following, namely -
a) Providing for registration of trade mark for services, in addition to
goods;
b) Registration of trademarks, which are imitation of well known
trademarks, not to be permitted, besides enlarging the grounds for
refusal of registration mentioned in clauses 9 and 11.
Consequently, the provisions for defensive registration of
trademarks are proposed to be omitted;

78
c) Amplification of factors to be considered for defining a well-
known mark;
d) Doing away with the system of maintaining registration of trade
marks 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 registered user and enlarging the
scope of permitted use.
f) Providing for registration of “Collective Marks” owned by
associations etc.
g) Providing an Appellate Board for speedy disposal of appeals and
rectification applications which at present lie before High Courts.
h) Transferring the final authority relating to registration of
certification trade marks to the Registrar instead of the Central
Government.
i) Providing enhanced punishment for the offences relating to trade
marks on par with the present Copyright Act 1957, to prevent the
sale of superior goods.
j) Prohibiting 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) Incorporating other provisions, like amending the definition of
“trademarks”, provisions for filing a single application for
registration in more than one class, increasing the period of
registration and renewal from 7 to 10 years, making trade mark
offences cognizable, enlarging the jurisdiction of courts to bring
the law in this respect on par with the copyright law, amplifying the

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 powers of the court to grant ex parte injunction in certain cases and
other related amendments to simplify and streamline the trade mark
law and procedure.

The Trade Marks (Amendment) Act, 2010 (40 of 2010):

After the enactment of the Act of 1999, India participated several
International Conventions as a Member-Signatory. One of such
Conventions was the Madrid Protocol, and it has signed “the Madrid
Agreement” the Indian Parliament enacted “the Trade Marks
(Amendment) Act 2010 (Act No. 40 of 2010), which has certain major
changes in the Trade Marks (Amendment) Act, 1999. The object of this
Amendment is to give protection of trademarks through International
Registration under the Madrid Protocol. Therefore, now, an Indian trade
Marks Register Holder can have International Registration by registering
it in India itself. This is the major achievement of the Indian Trade Marks
Act, 1999.

Kinds of Trade Marks

A trademark provides protection to the owner of the mark by
ensuring the exclusive right to use it to identify goods or services, or to
authorize another to use it in return for payment. The period of protection
varies, but a trademark can be renewed on payment of additional fees.
Trademark protection is enforced by the Courts, which in most systems
have the authority to block trademark infringement.
In a larger sense, trademarks promote initiative and enterprise
worldwide by rewarding the owners of trademarks with recognition and
financial profit. Trademark protection also hinders the efforts of unfair
competitors, such as counterfeiters, to use similar distinctive signs to
market inferior or different products or services. The system enables

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people with skill and enterprise to produce and market goods and services
in the fairest possible conditions.
There are several kinds of trademarks. Trademarks may be one or a
combination of words, letters, and numerals. They may consist of
drawings, symbols, three-dimensional signs such as the shape and
packaging of goods, audible signs such as music or vocal sounds,
fragrances, or colors used as distinguishing features.
In addition to trademarks identify the commercial source of goods
or services, several other categories of marks exist. Collective Marks are
owned by an association whose members use them to identify themselves
with a level of quality and other requirements set by the association.
Examples of such associations would be those representing accountants,
engineers or architects. Certification Marks are given for compliance with
defined standards, but are not confined to any membership. They may be
granted to anyone who can certify that the products involved meet certain
established standards. The internationally accepted “ISO 9000” quality
standards are an example of such widely-recognized certifications.
1. The terms “Trade Mark” are defined in Section 2 (1) (zb) of the
Trade Marks Act, 1999. The “Trade Description” is defined in
Section 2 (1) (za) of the Trade Marks Act, 1999. The Trade Mark
law is governed by the Trade Marks Act, 1 999.
2. Section 2 (1) (zb) of the Trade Marks Act, 1999 defines: “Trade
Mark” means 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 both; and,
(i) in relation to Chapter XII (other than section 107), a register
trade mark or a mark used in relation to goods or services for
the purpose of indicating or so as to indicate a connection in

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 the course of - trade between the goods or services, as the
case may be, and some person having the right as proprietor
to use the marl and
(ii) in relation to other provisions of this Act, a mark used or
proposed to be used in relation to goods or services for the
purpose o indicating or so to indicate a connection in the
course of trade between the goods or services, as the case
may be, and some person having the right, either as
proprietor or by way of permitted user to use the mark
whether with or without any indication of the identity of that
person, and includes a certification trade mark or collective
mark.”
3. A trade mark is an intellectual property.
4. Generally, a trade mark belongs to a company.
5. The value of a trade mark can be assessed depending upon the
popularity, business quantity, good will, etc. In fact, there is no
market value, which can be assessed in the case of a property mark.
6. The good will and trade mark cannot be seen by eyes.
7. The infringers of the trademarks are punished under Chapter- XII
(Ss. 101 to 121) of the Trade Marks Act, 1999.
8. House mark and product mark (or brand name): In the
pharmaceutical business a distinction is made between a house
mark and a product mark. The former is used on all the products
of the manufacturer. It is usually a device in the form of an
emblem, word or both. For each product a separate mark known
as a product mark or a brand name is used which is invariably a
word or a combination of a word and letter or numeral by which
the product is identified and asked for. The house mark serves as

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 an emblem of the manufacturer projecting the image of the
manufacturer generally.
9. It is an incorporeal property
10. The, Trade Mark law is newer than the Property Mark Law.
11. There are revolutionary changes in the Trade Mark law. The Trade
Mark law has been changing from time to time due to new
inventions and market trends. There are tremendous changes in
the Trade Mark Law including the International Covenants and
Conventions.
12. A trade mark can have an International Registration.
13. A trade mark is a legal recognition, and is a part and parcel of the
manufactured article or service rendered. It fetches additional
merchandise quality and price.
14. A trade mark may be assigned without goods and services to a third
person, who can produce his own goods and render services.

Procedure for and Duration of Registration

Application for Registration
The law relating to application for registration is given in Section
18 of Trade Mark Act, 1999. The summary of provisions is as follows:
(1) Any person claiming to be the proprietor of a trade mark 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 trade mark.
(2) A single application may be made for registration of a trade mark
for different classes of goods and services and fee payable thereof
shall be in respect of each such class of goods or services.
(3) Every application under sub-section (1) shall be filed in the office
of the Trade Marks Registry within whose territorial limits the

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 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:
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 Trade Marks Registry within whose territorial
limits the place mentioned in the address for service in India as
disclosed in the application, is situate.
(4) Subject to the provisions of this Act, the Registrar may refuse the
application or may accept it absolutely or subject to such
amendments, modifications, conditions or limitations, if any, as he
may think fit.,
(5) In the case of a refusal or conditional acceptance of an application,
the Registrar shall record in writing the grounds for such refusal or
conditional acceptance and the materials used by him in arriving at
his decision.

Withdrawal of Acceptance
The law relating to withdrawal of acceptance for registration is
given in Section 19 of Trade Mark Act, 1999. The summary of provisions
is as follows:
Where, after the acceptance of an application for registration of a
trade mark but before its registration, the Registrar is satisfied,
(a) That the application has been accepted in error; or
(b) That in the circumstances of the case the trade mark should not be
registered or should be registered; subject to conditions or limitations or
to conditions additional to or different from the conditions or limitations
subject to which the application has been accepted, the Registrar may,

84
after hearing the applicant if he so desires, withdraw the acceptance and
proceed as if the application had not been accepted.

Advertisement of Application
The law relating to advertisement of application for registration is
given in Section 20 of Trade Mark Act, 1999. The summary of provisions
is as follows:
(1) When an application for registration of a trade mark 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:
Provided that the Registrar may cause the application to be
advertised before acceptance if it relates to a trade mark to which sub-
section (1) of section 9 and sub-sections (1) and (2) of section 11 apply,
or in any other case where it appears to him that it is expedient by reason
of any exceptional circumstances so to do.
(2) Where, (a) an application has been advertised before acceptance
under sub-section (1); or (b) after advertisement of an application,—
(i) an error in the application has been corrected; or
(ii) the application has been permitted to be amended under Section 22,
the Registrar may in his discretion cause the application to be advertised
again or in any case falling under clause (b) may, instead of causing the
application to be advertised again, notify in the prescribed manner the
correction or amendment made in the application.

Opposition to Registration
The law relating to opposition to registration is given in Section 21
of Trade Mark Act, 1999. The summary of provisions is as follows:

85
(1) Any person may, within four months from the date of the
advertisement or re-advertisement of an application for registration, give
notice in writing in the prescribed manner and on payment of such fee as
may be prescribed, to the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant for
registration and, within two months from the receipt by the applicant of
such copy of the notice of opposition, the applicant shall se to the
Registrar in the prescribed manner a counter-statement of the grounds on
which he relies for his application, and if he does not do so he shall be
deemed to have abandoned his application.
(3) If the applicant sends such counter-statement, the Registrar shall
serve a copy thereof on the person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely
shall be submitted in the prescribed manner and within the prescribed
time to the Registrar, and the Registrar shall give an opportunity to them
to be heard, if they so desire.
(5) The-Registrar shall, after hearing the parties, if so required, and
considering the evidence, decide whether and subject to what conditions
or limitations, if any, the registration is to be permitted, and may take into
account a ground of objection whether relied upon by the opponent or
not.
(6) Where a person giving notice of opposition or an applicant sending
a counter-statement after receipt of a copy of such notice neither resides
nor carries on business in India, the Registrar may require him to give
security for the costs of proceedings before him, and in default of such
security being duly given, may treat the opposition or application, as the
case may be, as abandoned.

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(7) The Registrar may, on request, permit correction of any error in, or
any amendment of, a notice of opposition or a counter-statement on such
terms as he thinks just.

Correction & Amendment

The law relating to correction & amendment for registration is
given in Section 22 of Trade Mark Act, 1999. The summary of provisions
is as follows:
The Registrar may, on such terms as he thinks just, at any time,
whether before or after acceptance of an application for registration under
section 18, permit ; the correction of any error in or in connection with
the application or permit an amendment of the application:
Provided that if an amendment is made to a single application
referred to in sub-section (2) of Section 118 involving division of such
application into two or more applications, the date of making of the initial
[application shall be deemed to be the date of making of the divided
applications so divided.

Registration
The law relating to registration of trademark is given in Section 23
of Trade Mark Act, 1999. The summary of provisions is as follows:
(1) Subject to the provisions of Section 19, when an application for
registration of a trade mark has been accepted and either—
a) The application has not been opposed and the time for notice
of opposition has expired; or
b) The application has been opposed and the opposition has
been decided in favour of the applicant, the Registrar shall,
unless the Central Government otherwise directs, register the
said trade mark within eighteen months of the filling of the

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 application and the trade mark when registered shall be
registered as of the date of making of the said application
and that date shall, subject to the provisions of Section 154,
be deemed to be the date of registration.
(2) On the registration of a trade mark, the Registrar shall issue to the
applicant a certificate in the prescribed form of the registration
thereof, sealed with the seal of the Trade Marks Registry.
(3) Where registration of a trade mark is not completed within twelve
months from the date of the application by reason of default on the
part of the applicant. The registrar may, after giving notice to the
applicant in the prescribed manner, treat the application as
abandoned unless it is completed within the time specified in that
behalf in the notice.
(4) The registrar may amend the register or a certificate of registration
for the purpose of correcting a clerical error or an obvious
mistake.3

Patent
Patent is a right of a particular design or formula used for the
manufacture of a given product. For example, the formula used for
Chyawanprash by Dabur company with a specific constitution of
ingredients can be called a patent. Similarly the electronic design of a
motherboard supplied by Intel company is also a patent. Even the
computer based system of Windows sold by Microsoft company is a
patent. In fact, patent gives the right to produce and deploy a certain
design commercially in the market. Even food products can have a patent.
It protects inventions that are novel, non-obvious with respect to
the prior art and useful. The invention must be disclosed in a specified
3
Government of India (2008), The Trademark Act, 1999, Law Publishing House, Lucknow.

88
format in a patent specification. A granted patent has a specific ‘term’
(generally 20 years, in some countries it is 14 years and in some others
5/7 years under special circumstances) and must be periodically renewed
upto the end of the term to retain the rights from it. If not renewed
periodically as required by the statute a patent becomes public property
that can be used by anyone without fear of infringement.

The Patents Act, 1970

Regarding the origin and development of all intellectual property
rights, including patents, England has origin and a prime place in the
world history of trade marks. It has set the mould for patent rights
internationally. It was the coincidence that First industrial Revolution
took place in the middle of the eighteenth century. The Patents played an
important role in the industrial revolution in England and subsequently in
other western countries.
Before the industrial revolution, in the medieval times also, Great
Britain had seedlings of patent laws. Letters Patent were issued by the
King’s Great Seal on the bottom granting rights, often to foreign weavers
and other craftsmen, allowing them to practice their trade and
overcoming guild regulations which suppressed competition. The first
such letters patent were granted in 1311 to John Kempe, a Flemish
weaver, who wanted to practice his trade in England, one of the earliest
recorded instances of the patents.
Letters Patent were granted for inventions, for example, a patent
was granted to John of Utyman in 1449 for his new method of making
stained glass.
Darcy vs. Allin (1602 Co, Rep. 84b) was an example of an early
patent case which involved a monopoly for the making, importation and
selling of playing cards. In that case, patent was held invalid as being

89
inter alia, a common law monopoly. Later in Clothworkers of Ipswich
Case (1614 Godboit 252), patent right was recognised.
Section 6 of The Statute of Monopolies, 1623 gave recognition to
patents as an exception to the general rule against monopolies. This
Section gave 14 years in which the inventor could exploit his invention to
the exclusion of others.
All these patent laws were overhauled by the Patent Law
Amendment Act 1852. This saw the beginnings of the Patent Office and
the opening of the Patent Office Library soon followed. Between 1853
and 1857, about 1671 Patents were granted by Letters Patent in England.
In 1883 the Patents, Designs and Trade Marks Act, 1883 was
enacted incorporating the provisions of the Paris Convention for the
Protection of Industrial Property. 1883. In 1902, the Patents Act, 1902
was enacted. Consequently, further Acts enacted were the Patents Act,
1949, the Patents Act, 1977. The maximum term of a patent has been
extended to 20 years by the Patents Act, 1977 in England.

Historical Overview of the Patents Law in India

During the British reign, the then British rulers enacted the Patents
Act, 1856 for India. The Act of 1856 was consolidated into the Patents
and Designs Act, 1911. Thereafter there was no further development of
patent laws in India, as this country was under the foreign rule. After
independence, the Parliament appointed two expert Committees headed
Rajagopal Iyengar and Justice Bakshi Tek Chand. These two Committees
found that the foreign multinational corporations misused the patent laws
of India, and they registered about 90 per cent of patents registered in
India. This led a thorough debate in Parliament and outside.

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Statement of Objects & Reasons
While the Patents Bill, 1970 was introduced in the Parliament, the
Select Committee expressed the statement of objects and reasons of the
Bill as follows—
“The existing The Indian Patents and Designs Act was enacted in
1911 and since then there have been substantial changes in the political
and economic conditions of the country. The need for a comprehensive
law so as to ensure more effectively that patent rights are not worked to
the determent of the consumer or to the prejudice of trade or the industrial
development of the country was felt as early as 1948 and in that year the
Government appointed the Patents Enquiry Committee to review the
working of the patents law in India. The Committee submitted its final
report in 1950. The Patents Bill 1953, based largely on the United
Kingdom Patents Act, 1949 and incorporating some of the
recommendations of the Committee was introduced in the Lok Sabha on
7th December, 1953. The Bill, 1953 was lapsed on the dissolution of the
First Lok Sabha.
In 1957, the Government of India appointed Shri Justice N.
Rajagopala Ayyangar to examine afresh and review the Patents Law in
India and advice the Government on the necessary changes. The Judge
submitted a comprehensive Report on Patents Law Revision in
September, 1959. The Patents Bill, 1965, based mainly on the
recommendations contained in his detailed Report and incorporating a
few more changes in .the light of further examination made particularly
with reference to patents for food, drugs and medicines, was introduced
in the Lok Sabha on 21st September, 1965, The Bill was framed on 25th
November, 1965 to a Joint Committee of Parliament. The Joint
Committee, after a careful consideration of the matter, adopted a number
of amendments to the Bill. The Report of the Joint Committee with the

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amended Bill, was presented to the Lok Sabha on 1st November, 1966.
The Patents B*H, 1965, as reported by the Joint Committee was formally
moved in the Lok Sabha on 5th December, 1966, but could not be
proceeded with for want of time and eventually lapsed with the
dissolution of the Third Lok Sabha on 3rd March, 1967.
The present Bill contains comprehensive provisions to amend and
consolidate the existing law and also contains amendments/
recommendations by the Joint Committee referred to above. The notes on
clauses explain the provisions of the Bill, wherever necessary.”
As a result, the Patents Act, 1970 has been separately enacted
separating from the Patents and Designs Act, 1911. The Patents Act, 1970
has incorporated several new provisions preventing misuse of patents.
This Act came into force w.e.f. 20-4-1972.

Scheme of the Patents Act, 1970

This Act contains 163 Sections housed in 23 Chapters. Chapter-1
(Ss. 1&2) narrates about “Preliminary” Provisions. Chapter-ll (Ss. 3-5)
narrates about “Inventions not patentable”. Chapter-Ill (Ss. 6-11) states
about “Application for Patents”. Chapter-IV (Ss. 11-Ato 21) states about
“Publication and Examination of Applications”. Chapter-V (Ss. 25-28)
deals with “Opposition Proceedings to Grant of Patents”. Chapter-VI (Ss.
29-42) enunciates about “Anticipation”. Chapter-VII (Ss. 35-42) narrates
about “Provisions for Secrecy of Certain Inventions”. Chapter-VIII (Ss.
43-53) states about “Grant of Patents and Rights Conferred thereby”.
Chapter-IX (Ss. 54-56) narrates about “Patents of Addition”. Chapter-X
(Ss. 57-59) states about “Amendment of Applications and
Specifications”. Chapter-XI (Ss. 60-62) narrates about “Restoration of
Lapsed Patents”. Chapter-XII (Ss. 63-66) narrates about “Surrender and
Revocation of Patents”. Chapter-XIII (Ss. 67-72) contains the provisions

92
about “Register of Patents” Chapter-XIV (Ss. 73-76) states about “Patent
Office and its Establishment”. Chapter-XV (Ss. 77-81) narrates about
“Powers of Controller Generally”. Chapter-XVI (Ss. 82-94) states about
“Working of Patents, Compulsory Licences and Revocation”. Chapter-
XVII (Ss. 99-103) narrates about “Use of Inventions for purposes of
Government and Acquisition of Inventions by Central Government”.
Chapter-XVIII (Ss. 104-115) contains the provisions about “Suits
Concerning Infringement of Patents”. Chapter-XIX (Ss. 116-117-H)
narrates about “Appeals to the Appellate Board”. Chapter-XX (Ss. 118-
124) contains the provisions about “Penalties”. Chapter-XXI (Ss. 125-
132) contains the provisions about “Patent Agents”. Chapter-XXIl (Ss.
133-139 contains the provisions about “International Arrangements”.
Chapter-XXIII (SS. 140-162) contains the provisions about
“Miscellaneous”. There is only one Schedule containing the
“Amendments to the Indian Patents and Designs Act, 1911”
The Central Government enacted The Patents Rules, 2003, which

came into effect from 2nd May, 2003.

Amendments of the Patent Act, 1970 & Their Effect

The Patent Act, 1970, consequently provided an impetus for the
growth of patents in all fields, especially in the pharmaceutical industry in
India. The pharmaceutical industry picked up the developing innovative
processes and methods standardization including bio-equivalence studies,
for process development, manufacture, and marketing of generic
equivalents which were therapeutically equivalent to the innovator
products. During 25 years (1975-1995), the pharmaceutical industry grew
18%, and became nearly self-sufficient in manufacture of medicines and
a substantially large manufacturer and exporter of bulk drugs/active
ingredients. India became net exporter of pharmaceuticals occupying the
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3rd largest position in terms of volumes and 14th largest in terms of
values.
India is the signatory and member-State of GATT, WTO and
TRIPS. After the emergence of GATT, WTO and TRIPS. On signing of
TRIPS, it became obligatory on member countries to comply with the
provisions of TRIPS Agreement by making amendments to the national
laws, wherever necessary. Thus the Indian Parliament brought many new
Acts and amendments in the Intellectual Laws. In place of The Trade and
Merchandise Act, 1958, The Trade Marks Act, 1999 has been enacted. In
place of The Designs Act, 1911, The Designs Act, 2000 has been enacted.
Several new provisions have been incorporated in The Copyright Act
1957. Similarly, the Indian Parliament Brouaht amendment brought
amendments –
i) The Patents (Amendment) Act, 1999 (17 of 1999)
ii) The Patents (Amendment) Act, 2002 (38 of 2002)
iii) The Patents (Amendment) Act, 2005 (15 of 2005)
These new Acts and Amendments have been enacted in accordance
with TRIPS Agreement. This has helped the Indian Pharmaceutical
sector.

General Principles of the Patents [S. 83]

Section 83 (General Principles applicable to Working of Patented
Inventions) explains the CONCEPT & GENERAL CONDITIONS of the
Patents as follows: Without prejudice to the other provisions contained in
this; Act, in exercising the powers conferred by this Chapter, regard shall

be had to be following general considerations, namely;

(a) That patents are granted to encourage inventions and to secure that
the inventions are worked in India on a commercial scale and to the
fullest extent that is reasonably practicable without undue delay;
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(b) That they are not granted merely to enable Patentees to enjoy a
monopoly for the importation of the Patented Article;
(c) That the protection and enforcement of Patent Rights contribute to
the promotion of technological innovation and to the transfer and
dissemination of technology, to the mutual advantage of producers
and users of technological knowledge and in a manner conducive
to social and economic welfare, and to a balance of rights and
obligations;
(d) That Patents granted do not impede protection of public health and
nutrition and should act as instrument to promote public interest
specially in sectors of vital importance for socio-economic and
technological development of India;
(e) That Patents granted do not in any way prohibit Central
Government in taking measures to protect public health;
(f) That the Patent Right is not abused by the Patentee or person
deriving title or interest on patent from the Patentee, and the
Patentee or a person deriving title or interest on patent from the
Patentee does not resort to practices which unreasonably restrain
trade or adversely affect the international transfer of technology;
and
(g) That Patents are granted to make the benefit of the Patented
Invention available at reasonably affordable prices to the public.

Procedure for Obtaining Patent [Ss. 6-21]

Applications for Patents [Ss. 6-11]
Section 6 : Persons Entitled to Apply for Patents
1) Subject to the provisions contained in Section 134, an application
for a patent for an invention may be made by any of the following
persons, that is to say -

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 (a) By any person claiming to be the true and first inventor of
the invention.
(b) By any person being the assignee of the person claiming to
be the true and first inventor in respect of the right to make
such an application.
(c) By the legal representative of any deceased person who
immediately before his death was entitled to make such an
application.
2) An application under sub-section (1) may be made by any of the
persons referred to therein either alone or jointly with any other
person.4

Section 7: Form of Application

(1) Every Application for a patent shall be for one invention only and
shall be made in the prescribed form (Form No. 1) and filed in the Patent
Office.
(1-A) Every International Application under the Patent Cooperation
Treaty for a patent, as may be filed designating India shall be deemed to
be an application under this Act, if a corresponding application has also
been filed before the Controller in India.
(1) The filing date of an Application referred to in sub-section (1-A)
and its complete specification processed by the Patent Office as
designated office or elected office shall be the international filing
date accorded under the Patent Cooperation Treaty.
(2) Where the Application is made by virtue of an assignment of the
right to apply for a patent for the invention, there shall be furnished
with the application, or within such period as may be prescribed

4
Government of India (2008), The Patents Act, 1970, Law Publishing House, Lucknow.

96
 after the filing of the application, proof of the right to make the
Application.
(3) Every Application under this Section shall state that the applicant is
in possession of the invention and shall name the person claiming
to be the true and first inventor; and where the person so claiming
is not the applicant or one of the applicants, the application shall
contain a declaration that the applicant believes the person so
named to be the true and first inventor.
(4) Every such Application (not being a Convention Application or an
application filed under the Patent Cooperation Treaty designating
India) shall be accompanied by a provisional or a complete
specification.

Section 8: Information and undertaking regarding foreign

applications
(1) Where an applicant for a patent under this Act is prosecuting either
alone or jointly with any other person an application for a patent in any
country outside India in respect of the same or substantially the same
invention, or where to his knowledge such an application is being
prosecuted by some person through whom he claims or by some person
deriving title from him, he shall file along .with his application or
subsequently within the prescribed period as the Controller may allow,—
(a) A statement setting out detailed particulars of such application; and
(b) An undertaking that, up to the date of grant of patent in India, he
would keep the Controller informed in writing, from time to time, of
detailed particulars as required under clause (a) in respect of every other
application relating to the same or substantially the same invention, if
any, filed in any country outside India subsequently to the filing of the
statement referred to in the aforesaid clause, within the prescribed time.

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(2) At any time after an application for patent is filed in India and till
the grant of a patent or refusal to grant of a patent made thereon, the
Controller may also require the applicant to furnish details, as may be
prescribed, relating to the processing of the application in a country
outside India, and in that event the applicant shall furnish to the
Controller information available to him within such period as may be
prescribed.

Design Registration
A registered design includes features of shape, configuration,
pattern, ornament or composition of lines or colours, applied to any
article either in two or three dimensional or in both forms by any
industrial process which in the finished article appeal to and are judged
solely by the eye. The industrial process or means can be manual,
mechanical or chemical separate of combined.
The protection does not include -
* The mode of principle of construction
* Anything which is in substance a mere mechanical device
* Trademark or property mark
This registration has a specific term (initially 10 years and
renewable for another term of 10 years.) If it is not periodically renewed
as required by the statute the registered design becomes public property
that can be freely used by anyone without fear of infringement.
Section 2 (d) of The Designs Act, 2000 defines: “Design” means
only the features of 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

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the eye; but does not include any mode or principle of construction or
anything which is in substance a mere mechanical device, and does not
include any trade mark as defined in clause (v) of sub-section (1) of
Section 2 of the Trade ^and Merchandise Marks Act, 1958 (43 of 1958)
or property mark as defined in section 479 of the Indian Penal Code (45
of 1860) or any artistic work as defined in clause (c) of section 2 of the
Copyrjght Act, 1957 (14 of 1957).”

Characterstics of Design
In Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., 2008 (10)
SCC 657: 2008 (7) SCR 397), the Supreme Court explained that
“Design” means that a feature or a pattern which is registered with the
registering authority for being produced on a -particular article by any
industrial process whether manual, mechanical or chemical or by any
other means which appears in a finished article and which can be judged
solely by eye appeal.
Analysation of Section 2 (d) of The Designs Act 2000:— “Design”
means only the features of 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; but does not include any mode or principle of construction or
anything which is in substance a mere mechanical device and does not
include any trade mark as defined in clause (v) of sub-section (1) of
Section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958)
(now the Trade Marks Act, 1999); or property mark as defined in Section
479 of the Indian Penal Code (45 of 1860); or any artistic work a&

99
defined in clause (c) of Section 2 of the Copyright Act, 1957 (14 of
1957).”

Section 3: Controller and other Officers

(1) The Controller-General of Patents, Designs and trade Marks
appointed under sub-section (1) of Section 4 of the Trade and
Merchandise Marks Act, 1958 (43 of 1958) (now The Trade Marks
Act, 1999) shall be the Controller of Designs for the purposes of
this Act.
(2) For the purposes of this Act, the Central Government may appoint
as many Examiners and other Officers with such designations as it
thinks fit.
(3) Subject to the provisions of this Act, the Officers appointed under
sub-section.
(2) Shall discharge under the superintendence and directions of the
Controller such functions of the Controller under this Act as he
may, from time to time, by general or special order in writing,
authorise them to discharge.
(4) Without prejudice to the generality of the provisions of sub-section
(3) The Controller may, by order in writing and for reasons to be
recorded therein, withdraw any matter pending before an officer
appointed under sub-section (2) and deaf with such matter Himself
either de novo or from the stage it was so withdrawn or transfer the
same to another officer appointed under sub-section (2) 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.

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Section 4: Prohibition of Registration of Certain Designs
A design which,
(a) is not new or original; or
(b) has been disclosed to the public anywhere in India or in any other
country by publication in tangible form or by use or in any other
way prior to the filing date, or where applicable, the priority date of
the application for registration; or
(c) is not significantly distinguishable from known designs or
combination of known designs; or
(d) comprises or contains scandalous or obscene matter, shall not be
registered.

Problem:
A Central Government Organization constructed a building for its
office. Its design is similar to the architectural design of the famous
Charminar. Can anyone challenge the action of the Central Government?
If so, under which I PR Law and on what grounds?

Solution:
According to Section 4 of the Trade Marks Act, 1999, the action of
the Central Government Organization is prohibited. Hence anyone
challenge the action of the Central Government under Section 4 of the
Trade Marks Act, 1999.

Section 5: Application for Registration of Design

(1) The Controller may, on the application X/of any person claiming to
be the proprietor of any new or original design not previously
published in any country and which is not contrary to public order
or morality, register the design under this Act.

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 Provided that the Controller shall before such-registration refer the
application for examination, by an Examiner appointed under sub-
section (2) of Section 3, as to whether such design capable of being
registered under this Act and the rules made there under and
consider the report of the examiner on such reference.
(2) Every application under sub-section (I) shall be in the prescribed
form and shall be filed in the Patent Office in the prescribed
manner and shall be accompanied by the prescribed fee.
(3) A design may be registered in not more than one class, and, in case
of doubt as to the class in which a design ought .to be registered,
the Controller may decide the question.
(4) The Controller may, if he thinks fit, refuse to register any design
presented to him for registration; but any person aggrieved by any
such refusal may appeal to the High Court.
(5) An application which, owing to any default or neglect on the part
of the applicant, has not been completed so as to enable registration
to be effected within the prescribed time shall be deemed to be
abandoned.
(6) A design when registered shall be registered as of the date of the
application for registration.5

Section 6: Registration to be in respect of particular article

(1) A design may be registered in respect of any or all of the articles
comprised in a prescribed class of articles.
(2) Any question arising as to the class within which any article falls
shall be determined by the Controller whose decision in the matter
shall be final.

5
Government of India (2008), The Designs Act, 2000, Law Publishing House, Lucknow.

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(3) Where a design has been registered in respect of any article
comprised in a class of article, the application of the proprietor of
the design to register it in respect of some one or more other
articles comprised in that class of articles shall not be refused, nor
shall the registration thereof invalidated,—
(a) On the ground of the design not being a new or original
design, by reason only that it was so previously registered; or
(b) The ground of the design having been previously published
in India or in any other country, by reason only that it has
been applied to article ID respect of which it was previously
registered:
Provided that such subsequent registration shall not extend the
period of copyright in the design beyond that arising from previous
registration. ,
(4) Where any person makes an application for the registration of a
design in respect of any article and either,—
(a) that design has been previously registered by another person
in respect of some other article; or
(b) the design to which the application relates consists-of a
design previously registered by another person in respect of
the same or some other article with modifications or
variations not sufficient to alter the character or substantially
to affect the identity thereof, then, if at any time white the
application is pending the applicant becomes the registered
proprietor of the design previously registered, the foregoing
provisions of this Section shall apply as if at the time of
making the application, the applicant had been the registered
proprietor of that design:

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Lay-out Designs for Integrated Circuits
Substantive provisions of the Washington Treaty for protection of
Layout Designs for integrated circuits must be respected. The scope of
protection not only includes the protected chip but also the articles
incorporating it. The term of protection is 10 years. An innocent infringer
must be free from liability, but once he has received the notice of
infringement, he is liable to pay a reasonable royalty.

Trade Secrets & Undisclosed Information

This provides protection to persons/ institutions on information,
which is lawfully under their control from being disclosed to, acquired by
or used by others without their consent in a manner contrary to
commercial practices so long as the information is secret and has
commercial value because it is secret. It is expected that the
person/institution has taken reasonable steps to keep the information
secret. This also applies to test data whose generation requires
considerable effort (e.g. for marketing approval/FDA clearances, etc.) and
requires to be submitted to the government or governmental agencies for
statutory clearances. This underlines the significance of institutions
having a well established and operative ‘information classification policy’
and confidentiality clauses in service contracts with employees/
associates.

Geographical Indications
This tool affords protection to goods that can be identified as
originating or manufactured in the territory of a country, or a region or
locality in that territory where as given quality, reputation or other
characteristic of such goods is essentially attributable to its geographical
origin. In the case where such goods are manufactured goods, one of the

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activities of production or of processing or preparation of goods
concerned takes place in such territory or locality as the case may be. The
term is initially for a period of 10 years and can be renewed from time to
time.6

Protection of New Plant Varieties

Countries that exclude patent protection to plant varieties are
required to provide protection to new plant varieties by an effective ‘sui
generis’ or any combination of ‘sui generis’ and patents. The
international conventions followed on this feature are UPOV 78 and
UPOV91 and the ‘Convention of Biodiversity’ (CBD). There could be a
variation in the adoption of these features in the National Laws of
different countries.

Anti Competitive Practices in Contractual Licenses

It is accepted that some licensing practices related to IPR, which
restrain competition may have an adverse impact on trade and impede
transfer of technology. Examples of such restrictive practices may include
exclusive grant back conditions, conditions preventing challenges to
validity and coercive package licensing, etc. Countries are encouraged to
introduce legislations that discourage such restrictive practices in
contractual licenses but remain consistent within the provisions of TRIPs.
This generally links to the national anti-trust/anti-competition laws and
‘compulsory licensing’ that regulate ‘monopolistic practices’. These are
country specific and are guided by international principles.
From the above discussion it will be clear how protection of
intellectual property is necessary from commercial point of view. It has
been rightly observed by Prabuddha Ganguly, -
6
Siddharth Bawa (2008), Law of Intellectul Property, Allahbad Law Agency, Faridabad.

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 "The modern IPR tool kit provides a range of distinct legal
platforms for protection of the fruits of human creativity that span from
innovations in technical fields, products and services, literary/artworks,
performances, computer programs etc. It should be appreciated that each
of these instruments is governed by a set of laws with frameworks that
offer varying degrees of protection, rights, obligations, enforcement
procedures and reliefs."
Thus, in this chapter the researcher has introduced various concepts
related with the history of intellectual property rights. The researcher has
also discussed the concepts as they appear in the statute with reference to
international understanding about these concepts.

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