Transcript of "Intellectual property issues within India working with the authorities"
Intellectual Property Concerns in India and
the Law Enforcement
By Pawanjit S Ahluwalia
The term ‘Intellectual Property’ includes the creative and literary
outputs of human mind, like novels, music, motion pictures and
industrial designs that are used for commercial purposes.
Intellectual property though consists of original creations but
the same creations are divided into two main categories, viz
a) Creations being used for industrial purposes, and b)
Creations that are copyrighted material.
Industrial Property consists of patents or inventions,
trademarks, industrial designs and geographical indications of
source. Patents are rights that are granted exclusively for
inventions pertaining to a product or a process. A trademark is
a symbol or a word or a name that is put on goods in the market
place that indicates its source. Service marks are given to
services as opposed to products. Trademark rights ensure that
the symbol word or name which identifies the source of the
product is not duplicated. Whereas, copyright protects the
authors of original works of art music, film and literary outputs.
In India, the beginning of Intellectual Property Rights (IPR) is
marked with the ‘patent system’ instituted by the British Colonial
government based on their own patent system in 1856. As such,
to save the interests of inventors, the then British rulers enacted
the Indian Patents and Designs Act, 1911 (Act 2 of 1911).
India has throughout shown serious concerns towards IP Rights
and systematically developed laws to protect these rights.
Today, there is a well established statutory, administrative and
judicial framework to safeguard Intellectual Property Rights
(IPRs) in India, whether they relate to patents, trademarks,
copyright or industrial designs. Well known international
trademarks have been protected in India even when they were
not registered in India.
The Indian Trademarks law through Court rulings has been
extended to service marks in addition to trademarks for goods.
The Court rulings have helped computer software companies in
successfully curtailing piracy and protecting computer
database. The Courts, upholding the doctrine of ‘breach of
confidentiality’ accorded an extensive protection of trade
secrets. Right to privacy, which is not protected even in some
developed countries, has been recognized in India.
A Brief Background of IPR Development in India
In the year 1883 Paris Convention for protection of industrial
property came into existence. This was the first internationally
recognized agreement for cooperation among nations for the
protection of intellectual property. As many as 140 States
signed the agreement of the Convention to implement its
provisions. The Convention in the widest sense used the term,
Article 1 (2) of the Convention states, “The protection of
industrial property has as its objects patents, utility models,
industrial designs, trade marks, service marks, and trade names,
indications of source or appellations of origin and the
repression of unfair competition.”
Article 1 (3) says, “Industrial property shall be understood in the
broadest sense and shall apply not (only) to industry and
commerce proper but likewise to agricultural and extractive
industries and to all manufactured or natural products, for
example wine, grain, tobacco leaf, fruit, cattle, minerals, water,
beer, flowers and flour”.
The Paris Convention bears the concept of a ‘union’, viz the
countries to which that convention applied, constituted, a
‘union’ for the protection of industrial property. This meant that
a national of any country of union enjoyed the protection of
industrial property in all other countries of the union, to the
extent the advantages of the laws granted to its own nationals.
The Trade Related Aspects of Intellectual Property Rights
(TRIPS) Agreement adopted this provision of the Paris
Convention. As India was not a member of the Paris
Convention, hence it was not obliged to implement the
provisions of the Convention. However, after signing the TRIPS
Agreement, India is now obliged to recognize and implement the
provision of “national treatment to nationals of other members”,
in accordance to the provisions of TRIPS Agreement.
The Paris Convention dealt with Patents, Trade Marks, Designs
and Utility Models but did not deal with copyright. The rights
granted under copyright include artistic, literacy and musical
works. The first international convention addressing copyright
was “The Berne Convention of 1886’, to which India is one of the
members, among 120 States.
In the year 1947, the General Agreement on Tariffs and Trade
(GATT) came into existence, thereby regulating the international
trade. During 1980s, multi national corporations and
international agencies started emphasizing to include
intellectual property as a subject of discussion at GATT, as the
developed countries were curious to get statutory protection for
their patents, trade marks and designs, which were largely being
infringed by developing countries. The developed countries had
spent huge funds on research and development of their
products such as formulae of drugs, which the developing
countries were copying for commercial benefits without being
liable for damages. The developed countries could not protect
In the absence of global legal provisions, each country either
followed its own statute or had no statute at hand. After the
sustained efforts for a universal IP Law, the developed countries
in the year 1986 could get some relief, when the Uruguay Round
of negotiations began under the GATT, which concluded in
Marrakesh on April 15, 1986, with the signing of the ‘Final Act’.
Including TRIPS, this Final Act, contained 28 agreements. One of
the decisions taken in Marrakesh was the formation of World
Trade Organization (WTO), which is a package deal. The
member nations have to accept the entire package of
agreements in toto and can not defy the provisions without
quitting the WTO.
Patent means the grant of some privilege, property or authority
made by the government to one or more individuals. The
instrument by which such grant is made is called as ‘Patent’.
The term ‘Patent’ in India acquired statutory status after the
enactment of the ‘The Patents Act’ in 1930, which was last
amended in the year 2005. The Patents Rules 2005 were
amended in the years 2005 and 2006.
By grant of Patent, an invention becomes the creation of
intellect applied to capital and labour for producing some new
and useful thing. Such creation is termed as the exclusive
property of the inventor. The patentee enjoys the exclusive
proprietary right in the same manner as owner of any other
moveable property possesses.
The Patent Law guarantees the exclusive right of a patentee to
gain commercial mileage out of his invention. In the case of
Bishwanath Prasad Radhey Shyam Vs Hindustan Metal
Industrial (1979) 2 S C C 511, the Hon’ble Supreme Court of India
held,” the object of patent law is to encourage scientific
research, new technology and industrial progress. Grant of
exclusive privilege to own, use or sell the method or the product
patented for a limited period, stimulates new inventions of
commercial utility. The price of the grant of the monopoly is the
disclosure of the invention at the Patent office, which after
expiry of the fixed period of the monopoly, passes into the
The principles governing the Indian Patent law includes, that the
patentable invention must be a new product or process, must be
non-obvious, must be useful and must be capable of industrial
application. However, certain inventions despite possessing the
aforesaid conditions cannot be patented under the Act, if the
same are injurious to public health, morality or interest; are the
duplication of known properties or are related to atomic energy,
The Indian Patents Act, 1930, does not recognize patent
protection for computer programmes. The protection of
computer programmes and computer data in India is however
covered under Section 2 (O) of the Copyright Act of 1957.
The use of the invention by a person other than the patentee
constitutes infringement of the patent and is as such illegal. The
Act prescribes the legal relief to the patentee against
infringement through civil suits to get the reliefs of:-
(a) Interlocutory Injunction.
(c) Account of profits.
According to the Indian law, the burden of proof in case of
infringement is not on patentee in case the subject matter of the
patent is a process for obtaining a new product or if there is a
likelihood that the identical product is made by the process of
The Controller of Patents can revoke a patent at any time if the
criteria like the novelty are not fulfilled. The violations of the
prescribed conditions and giving false information in the
disclosure forms may cause the termination of the patent.
In India, although the Act provides the exclusive right of use to
the patentee for commercial gain, but the Central Government
may acquire the patents from the patentee and use any
invention even without paying any royalty or compensation to
the inventor. For example, the Central Government may acquire
the invention of a medicine for the purpose of distribution in a
dispensary or hospital.
The Government of India has recently formulated the draft
guidelines relating to the latest amended Patent Act, 2005. As
per the guidelines, non inventions, inventions, relating to atomic
energy, or those contrary to public order or causing serious
prejudice to human beings, animals, health or environment will
not be patentable. The draft guidelines also aim that individual
researchers, inventors, industries and Research and
Development organisations get familiar with the patent system
The guidelines provide for a user-friendly system for obtaining
and maintaining patents under the existing legal system. The
process of preparing genetically modified organisms is
patentable, but the clones and new variety of plants are not
In India, there is a Compulsory Licensing System in place since
the inception of the Patents Act, 1970. As per the provisions of
Section 84 of Patents Act, 1970, the term of patent can cut short
by the grant of compulsory license or `License of right’ to any
person, in case the patented invention has not met the
reasonable requirement of the public at a reasonable price. The
provision is intended to provide for necessary and adequate
safeguard for the protection of public interest, taking into
account the specific needs of a developing country, like India.
The provision of `Compulsory License’ is aimed to avoid the
misuse of an Exclusive Marketing Right by the right holder, in
compliance with Article 31 of TRIPS.
There are however certain implications of TRIPS for India as
India being a member of the World Trade Organisation (WTO)
has to implement the TRIPS Agreement in totality. There have
been allegations by international community that while the laws
in India on trade marks, copyrights, designs are in conformity
with the provisions of the TRIPS Agreement, but there is
absence of effective patent protection in the pharmaceutical
sector and that India has failed to meet its obligations required
under Articles 70.8 and 70.9 of the TRIPS Agreement.
The fact remains that India is a social welfare state and the
Patent Act of 1970, was designed to ensure that the patent rights
relating to pharmaceuticals and agricultural products could be
regulated by the government. The aim for excluding the above
was to keep the prices low and to ensure the adequate supply
and growth of Indian industry. Other apprehensions included
the threat to the traditional knowledge of Indian medicines like
Unani and Ayurvedic as these medicinal products have existed
in our country for centuries without anyone exercising a
monopoly right over them. As such, whatever may have been
the constraints, India needs to amend the Indian Patent Act,
1970, in accordance with the obligation imposed by the TRIPS
However, to counter such allegations, it is to communicate that
the Government of India with the aim to meet its obligations
under Articles 70.8 and 70.9, on 31st December, 1994,
promulgated an Indian Patents (Amendments) Ordinance, 1994,
to extend the provisions, to receive product patent applications
in the field of pharmaceutical and agricultural chemical products
and also for grant of exclusive marketing rights. Pursuant to
this measure, the Indian Patent Office has been receiving
product patent applications in these fields. India has
established a mail box system through administrative
instructions. Numerous applications have already been filed in
this mail box system. Many of the filed application belong to US
However, the USA filed a complaint against India before WTO
Dispute Settlement Body, objecting that India is under obligation
to the TRIPS Agreement to amend its Patents Act, 1970, to
provide the legal status to the system of mail box applications
and that instead of amending the law, India had put in place mail
box system by an administrative order, which too lapsed on 26th
March 1995. Whereas, India maintains that mail box applications
have a proper legal status under Indian Law and that India was
free to choose an administrative method pending the
amendment in legislation.
In addition to the above legislative provisions, the Government
of India has taken several measures to streamline and
strengthen the intellectual property administration system in the
country. For this purpose the implementing authority was
constituted having office of the Controller General of Patents,
Designs & Trade marks, which is situated at Bhoudhik Sampada
Bhavan, Antop Hill, Mumbai, with regional offices at Chennai,
New Delhi and Kolkata.
Whenever the monopoly rights of the patentee are violated, his
rights are secured again through judicial intervention. Section
104 of the Act provides that a suit for infringement shall not be
instituted in any Court inferior to a District Court. In case the
defendants make a counter claim for revocation of the patent,
the suit is transferred to the High Court for adjudication as the
High Court has the jurisdiction to try cases of revocation,
Section 104-A, of the Patents (Amendment) Act, 2002 provides
for burden of proof in case of suits concerning infringement.
The provisions of the Code of Civil Procedure (CPC) govern the
procedures for conducting a suit for infringement. The suit can
only be instituted by a person who has a right in the patent,
such as, the patentee, the exclusive licensee, a compulsory
licensee, assignee and the co-owners of a patent. The onus of
establishing the infringement is on the plaintiff.
For getting interlocutory injunctions in a patent case, the
plaintiff has to show a prima-facie case of infringement for
justifying the grant of an injunction, which is not an easier task.
Whereas, it is comparatively easy for the defendant to establish
defence sufficient to prevent the grant of such an injunction for
variety of reasons.
The Madras High Court in case of Wockhardt Ltd. Vs Hetero
Drugs Ltd; (2006) 31 PTC 65, laid down the following principles
for granting the interim injunction:-
(a) Whether the plaintiff has a prime facie case?
(b) Whether the balance of convenience is in favour of the
(c) Whether the plaintiff would suffer an irreparable injury, if
his prayer for introductory injunction is disallowed?
The Supreme Court, in the case of Morgan Stanlex Mutual Fund
Vs Kartick Das (1994) 4 SSC 225, laid down the following
(a) Whether the refusal of injunction would involve greater
injustice than the grant of it would involve.
(b) The Court would expect a party applying for injunction
to show utmost good faith in making the application.
(c) The general principles like prima facie case, balance of
convenience and irreparable loss would also be
considered by the Court.
There is a provision under the Patents (Amendment) Act, 2002,
to practice as a Patent agent. A person desiring to be registered
as Patent Agent has to apply with the Head Office or the Patent
Office, as per the procedure specified in Patent Rules, 2003. A
Patent Agent is entitled to practice before the Controller and
prepare all documents, transact all business and discharge such
other functions that may be prescribed by the controller.
In India, the Trade Mark law has been evolved to recognize and
protect the proprietary right of a trader to use a mark for his
goods or services. The law is contained in the Trade Marks Act,
1999, repealing the earlier Trade and Merchandise Marks Act,
1958. However, there are certain principles, on which these laws
have been devised.
(1) Absolute proprietary on any word or symbol can not
be bestowed upon to a trader, vide Section 28 (3) of
the Trade Marks Act, 1999.
(2) Surnames and geographical names are not register
able as trade mark. However, there are 28 Indian
products registered with the Geographical Indications
(GI) Registry, such as Darjeeling tea, with exceptions
under the Geographical Indications of Goods
(Registration and Protection) Act, 1999. Similarly, a
surname can be registered upon proof of its
(3) No trade mark is to be registered if the same is
against public interest.
(4) According to Section 47 of the Act, the trade mark
should remain in constant use. The non-use of the
same may cause its removal from the Register.
(5) Like other property, the trade mark is also a form of
property, which can be assigned and transferred to
other person or party.
(6) A person using a trade mark without registration will
be given preference in respect to the monopolistic
rights if he has been using the same trade mark prior
to the use by another person who has got its
(7) The trade mark under the Law does not only protect
the interest of the trader, but also provides the
opportunity to others to file opposition to the
registration of a trade mark after it has been
advertised in the Trade Mark Journal. Even in certain
cases, objections can be made after the mark has
A Register of Trade Marks is maintained under Section 6 of the
Trade Marks Act, 1999 and the Registrar is the sole authority in
this respect. The particulars of registration under Rule 59 (2),
include, the names, addresses and description of the
proprietors, notifications of assignment and transmissions as
well as the names, addresses and description of registered
users, conditions, limitations and such other matters relating to
the registered trade marks.
However, the phenomenon of registration is not the absolute
right of the prospective user. Under Section 9 of the Trade
Marks Act, 1999, the authorities can refuse the registration of
trade mark on various grounds such as the trade marks devoid
of any distinctive character or the trade marks which consist
exclusively of indications which have become customary in the
current language or established practices of the trade or if it is
of such nature as to deceive the public or cause confusion, etc.
In India, the trade mark is protected against infringement
(i) Civil Remedies
In case the instances of infringement occur, the Civil Court,
not lower than the District Court can be moved for grant of
interlocutory injunction, Anton Pillar Orders, damages and
account of profits. The provisions for grant of injunction are
contained in Section 36 to 42 of the Indian specific Relief Act,
1963 and Order XXXIX Rule 1 & 2 and Section 151 ( Inherent
Power of the Court) of the Code of Civil Procedure,1908.
(ii) Criminal Proceedings
Action can be initiated against the person causing
infringement in a criminal court. However, under the law both
actions i.e. civil and criminal can be initiated simultaneously.
Under the civil law proceedings, the plaintiff seeks relief for
himself, while under the criminal law proceedings the
complainant seeks award of punishment to the infringer.
(iii) Administrative Remedies
At a point of time when the Trade Mark Registry is in the
process of considering the grant of a trade mark, the
opposition of the registration of deceptively similar type of a
trade mark, can protect the trade mark by stopping the
proceeding of the registration. Even if the trade mark has
been registered through deceptive means, the same can be
removed by the Registrar.
According to Indian laws, infringement of a trade mark
constitutes when a person other than the registered proprietor
or permitted user of the trade mark in the course of trade, in
relation to the same goods or services for which the mark is
registered, uses the mark or makes a deceptively similar type of
mark. The courts in matters where infringing marks are identical
with the registered trade mark and the goods and services are
also identical, presume that such mark is likely to mislead and
confuse the general public.
For initiating action against infringement, the following
conditions must be fulfilled:-
(a) The Complainant should be a registered owner of a
(b) The respondent must use the similar mark deceptively.
(c) The use must be in relation to the goods of the plaintiff.
(d) The use by the respondent must be in the course of
It will be pertinent to mention a few Court rulings for protections
of trade marks against infringement.
In a case, Vidya Bhushan Jain Vs Collector of Customs, (2006)
32 PTC 480 (Mad), the writ petition was filed for issuance of a
writ of mandamus, directing the respondents to pass orders on
the representations dated 30th October 2004 and 2nd February,
2005, to strictly enforce the bar contained in Sections 29(6) and
140 of the Trade Mark Act, 1999, and consequently direct them
not to permit import of any goods infringing the registered trade
mark ELFY of the petitioner in any manner. The respondents
were directed to consider the said representation on merits and
in accordance with the law.
In another case, (PTC 1996, 567) the Plaintiff under the
registered trade mark “Lakme” was selling the cosmetic
products, while for the same type of products, the defendant
was using the trade mark “Like-me”. The Court granted
permanent injunction on grounds that there was striking
resemblance between the two words, which are also
In a case, (PTC 1995, 389) Plaintiffs were the bonafide
manufacturer of tooth paste `Colgate’, whereas, the defendants
used the mark `Collegiate’. The mark, `Collegiate’ was
restrained through injunction, on the grounds that the mark was
phonetically identical and the deceptively similar letters in white
with red background create confusions in the minds of
In SIA Gemes and Jewellery Pvt. Ltd., Mumbai Vs SIA Fashion,
Mumbai, (AIR 2004 Bom10), the defendants were using Plaintiff’s
trade name “SIA”. The shops of the Plaintiff and the defendant
were in the same vicinity. The Court ruled that a suit by Plaintiff
for an injunction restraining the defendant from passing off their
goods as those of the plaintiff by using the trade name SIA in
the course of trade, is maintainable, even though the word SIA is
the name of Goddess Sita, which is a common name in India.
Still the trade mark “SIA” is distinctive for the purpose of
passing off action.
In Satyam Infoway Ltd Vs Sifynet Products Pvt. Ltd. (AIR 2004
SC 3540), the Hon’ble Supreme Court of India, ruled, a passing
off action, as the phrase “Passing Off” itself suggests, is to
restrain the defendant from passing off its goods and services
to the public as that of the plaintiff. If two trade rivals claim to
have individually invented the same mark, then the trader who is
able to establish prior user will succeed.
The statutory authority under the Trade Marks Act, 1999, is the
Joint Registrar, Trade Marks, in respect of functions of
Registration, situated at Mumbai, supported by Deputy Registrar
and Assistant Registrars sitting at Kolkata, New Delhi, Chennai
and Ahmedabad, who exercise the powers as the Registrar
delegated to them.
In addition to the above, the Central Government established the
Intellectual Property Appellate Board, which sits at Chennai by a
notification with effect from 15th September, 2003, for
jurisdiction powers and authorities. The Fourth Schedule of the
Trade marks Rules, 2002, has laid down the classification of
goods and services. In all there are 34 classes of goods as well
as 8 classes of services mentioned in the schedule.
The Intellectual Property Appellate Board have the same power
as are vested in a Civil Court under the Code of Civil Procedure,
1908, while trying a suit in respect of receiving evidence, issuing
summons to witnesses, requisitioning any public record and any
other matter which may be prescribed. Any proceeding before
the Appellate Board is deemed to be judicial proceeding within
the meaning of Section 196 of the Indian Penal Code, 1860 and
the Appellate Board is deemed to be a Civil Court for the
purposes of Section 195 of the Code of Criminal Procedure,
The Intellectual Property Appellate Board being empowered
under Section 92 of the Trade Marks Act, 1999, made the
Intellectual Property Appellate Board (Procedure) Rules, 2003.
These rules came into force wef December 5, 2003. The rules
provide procedure for appeal, payment of fees, documents to be
attached with application, adjournments for hearing, orders of
Appellate Board and the relevant forms.
Copyright is the intellectual property right, which a person
acquires in a work, through his intellectual labour is called his
The primary objective of a copyright law in India is to protect the
fruits of a man’s hard work, labour, creativity and skill from
being taken away by other people. The statutory definition of
copyright in India vide Section 14 of the Copyright Act, 1957,
means the exclusive right to do or authorize others to do certain
acts in respect of :-
(a) Literary, dramatic or musical works.
(b) Artistic work
(c) Cinematographic film
(d) Sound recording
In India, Copyright Act was passed in 1914. It was a replica of
the British Copyright Act of 1911, which was suitably modified in
context of British India. The prevalent Copyright Act was
passed in the year 1957 and was amended by Copyright
(Amendment) Act, 1999.
The requirement for protecting the copyright is that the author
must have created the work with “sufficient judgment, skill,
labour and capital”. However, the owner of a copyright has no
monopoly in the subject matter. Others are at liberty to produce
the same result (from the common source), provided they do so
independently and their work is original.
A literary work need not be of literary quality. Even a railway
guide or a list of stock exchange quotations qualifies the test of
a literary work, provided sufficient labour has been involved in
compiling the same.
In India, there exists a comprehensive law for protecting the
copyright. Some interesting but complex instances are
In G leeson Vs Denne, (1975 RPC 471), it was held that if one
works hard, walking down the streets, taking down the names of
people who live at houses and makes a street directory in the
result of that labour, this will justify in making claim to
In Blackwood Vs. Parasurama, (A I R 1959 Madras 410), the
Court ruled that a translation of literary work is itself a literary
work and is entitled to copyright protection if it is original.
The judgment or order of the Courts are exempted from
copyright protection. Any person can reproduce or publish
them unless such reproductions or publication has been
specifically prohibited by the concerned judicial authority.
Legal reporters and lawyers generally collect the judgements of
the Courts for publishing in Law report and newspapers.
However, if the reporters or lawyers also supply head notes
prepared by them alongwith the reported judgements, these
reports will then be covered under copyright.
Historical facts do not attract the provisions of the copyright as
the history books are merely the source of information for the
readers. However, if the manner of presenting the information is
unique, it will be considered as an original literary work.
Similarly, a lecture, address, speech or sermon will be entitled to
copyright only if it is reduced to writing before its delivery.
With regard to letters, copyright subsists in private, commercial
and government letters as original literary works, However, in
the case of a private letter, the author is the owner of copyright,
whereas, in the case of commercial and government letters,
written by employees in the course of employment, the
copyright belongs to the employer, according to the
Section 17 (a) of the Copyright Act.
The catalogues made by manufacturers listing their products are
also capable of copyright protection. Copyright also subsists in
a dictionary for the arrangement, sequence or idiom format of a
dictionary which can not be appropriated by another.
Dictionaries are Compilations and compilations are included in
the definition of literary work.
Computer programmes are considered to be literary works and
are entitled to copyright protection. Similarly, programme
schedules of television and radio programmes come in the
ambit of compilations and are therefore protected under
copyright. In addition to the above, question papers set for
examination are covered under copyright as the person who
sets the question paper invests Labour, skill and time on its
preparation. There have been several judgments of the Courts
in which this matter was reiterated, viz. Jagdish Prasad Vs
Parmeshwar Prasad, (A I R 1966 Pat 33); Agarwala Publishing
House Vs Board of High School and Intermediate Education, UP,
(AIR 1957, A 119) and University of London Press Vs University
Tutorial Press, (1916) 2 Ch 601.
A lot of labour is involved in the preparations of thesis and
dissertation by the students doing research, which too is
protected. In an interesting case, Fateh Singh Mehta Vs.
Singhal, (1990) IPR 69 Raj, the guide of the researcher copied
material from his own student’s thesis to prepare his own Ph.D
thesis. The Court granted interim injunction against awarding
Ph.D degree to the guide.
Parody and Satire, which are the forms of literary criticism are
covered under copyright protection. On the contrary, news
published in the newspapers are not covered under copyright
but only the manner and style of expression in which it is
written. Hence, there is no violation of copyright if a person
takes up the matter of the news and rewrites the same in his
In another interesting case, Indian Express Vs. Jagmohan, ( AIR
1985 Bom 229 ), the defendants made a movie based on the
series of articles published by the plaintiff, in his newspaper,
narrating the nightmarish phenomenon of flesh trade prevalent,
which was proved by newspaper’s journalist by purchasing a
woman, named Kanta. However, the Court ruled that the stage
play on the theme does not constitute the infringement of the
Copyright in India protects the original musical work under the
provisions of Section 13 (1) (a). The song if written by the same
music composer of the song will get the umbrella of copyright.
The remix songs are not an infringement of the copyright of the
original musical composition as it comes under the permissible
definition of adaptation.
With regard to engraving, etching, lithographs and woodcuts,
the law recognizes it as art, provided the works are not based on
photographs. Hence, the act of copying from an engraving is an
infringement of a copyright but the act of copying the engraving
produced from a picture is not infringement.
A painting can be copyrighted provided the painter has created
it as an original piece and not just a copy of another painting.
Similarly, the drawing, be it engineering or mechanical or a map,
or a plan are protected under copyright, provided they qualify
the criteria of originality.
In India, the Law is quite complex with regard to the issue of
photographs’ copyright. Besides prescribing the conditions of
originality, skill and labour before recognizing the `photograph’
as an artistic work, it measures the grant of copyright in a
microscopic manner. A photographer’s original photo of Taj
Mahal taken at a particular angle is a subject matter of copyright.
Whereas, the Law does not restrict another person to take the
photograph of Taj Mahal in the same manner, style and angle.
Similarly, taking photograph or Photostat copy of a photograph
does not constitute the violation of copyright.
In Associated Publishers Vs. Bashyam, (AIR 1961 Mad 114),
based on two photographs a portrait of Mahatma Gandhi was
made. The Court ruled that a portrait based on photographs will
be copyrighted, provided it produced the results different to
Further, the law says that when a person or group of persons
are asked to pose for a photograph, the publication of the same
photograph would not be possible without the prior permission
of the posers in question. No such consent is required in case
of a crowd photograph. However, most of the events,
conferences and functions covered by the media, photographs
of posers including that of elites, ministers and other dignitaries
are published, but who takes the formal permission. This
activity can only be shielded with the rule of `implied consent’ in
the absence of an `expressed consent’.
In India, there are three kinds of remedies against infringement
of copyright, viz:-
(a) Civil Remedies The civil remedies include, injunction
for instantly stopping the alleged infringement, damages
in the form of monetary loss; account of profit, viz. the
profits that the defendant wrongfully earned by selling
the infringed copies and damages for converting the
original form of author’s work.
(b) Criminal Remedies The complainant can initiate
criminal action against the infringer, resulting in fine
(c) Administrative Remedies Besides, the judicial
intervention, an administrative remedy is also available
to the Complainant. This complaint is made before the
Registrar of Copyrights with the aim to ban the import of
infringing copies, into India and to seek the delivery of
the confiscated infringing copies.
The then British Government in the year 1911 passed Designs
Act, which was subsequently amended extensively. The
Designs Act, 1911, was repealed by the Designs Act, 2000. A
design to be registered under the Designs Act, 2000, must
possess some shape, configuration, pattern or composition of
lines or colours. Section 5 of the Act lays down that any person
claiming himself the owner of a new or original design that has
not previously been published in India can apply for the
registration of the design. When a design is registered, the
registered owner of the design shall have the copyright of the
design for 10 years, extendable for renewal for another five
years, totaling 15 years.
Infringement of a copyright in a design is called as `Piracy of the
Design’. As per the Section 22 (2) of the Act, any person guilty
of piracy is liable to a fine of a sum up to 25,000 rupees. The
registered proprietor is also at liberty to file a suit for recovery of
damages or for injunction, provided that the total sum
recoverable shall not exceed 50,000 rupees.
The aggrieved party has at hand the judicial remedy for
infringement of a registered design by filing a suit for damages
or for injunction. Section 22 (2) stipulates remedy in the form of
payment of a certain amount by the person who has pirated the
A few citations are mentioned to show the judicial trend in India
in respect of Designs Act, 2000.
In officine Lovato SPA Vs. Pravinbhai Jagjivandas Mehta, (2006)
32 PTC 569, the Design No. 181093, was registered on December
17, 1999, in the name of Pravinbhai Jagjivandas Mehta. M/s
Officine Lavoto SPA, moved an application to cancel the
registration of the above mentioned design, vide Section 19 of
the Act, on the ground that the design was not new or original as
the same had been published in India and abroad prior to the
date of registration. The directions were given to cancel the
registration of the design.
In Hindustan lever Ltd., Vs, Nirma Pvt. Ltd., (AIR 1992 Bom 195),
the plaintiff filed a case for injunction restraining the defendant
from using the impugned carton containing label relating to
soaps, alleging infringement of their registered design and
passing off. It was however contended by the defendant that the
said label was a design, capable of being registered under
Designs Act and copyright of the said label had ceased to be
operative by the provisions of Section 15 (2) of the Copyright
Act , 1957. The Court held that the label put on a carton cannot
be regarded as a design within the meaning of Section 2 (5) of
the Designs act, 1911.
In Dabur India Ltd Vs. Emami Ltd., (2006) 32 PTC 125, the
plaintiff alleged the violation of interim injunction. The similarity
of the bottles of products of the parties had restrained TV
commercials. The defendant stated that they have changed the
bottles and apologized for the same. The apology was accepted
and the application was disposed of.
It has been proven beyond doubt that India has got firm laws
besides firm conviction to tackle and subdue the infringement of
intellectual property rights, which is a tortuous invasion of
property. Since time immemorial India has been the golden
treasury of multi-dimensional wisdom, covering not only the
physical and mental development but also the economic,
technological, scientific development as well as the
development of legal system and law making.
India view seriously that a solid, broad-based education in law is
of vital importance to understand the intricacies of `Intellectual
Property’ in the significantly changing and challenging
circumstances, although IP rights as a technical subject dates
back to the era of industrial revolution and entrepreneurship.
In India, Intellectual Property Rights were recognized and
introduced in the year 1884, with the passing of Indian Trade and
Merchandize Marks Act, 1884, followed by several such laws.
However, after coming into existence of World Trade
Organisation in the year 1994, India to meet the international
obligations amended and enacted new Laws. The post WTO
formation laws include:-
(a) The Geographical Indications of Goods (Registration
and Protection) Act, 1999.
(b) The Trade Marks Act, 1999.
(c) The Semi Conductor Integrated Circuits Layout design
(d) Copyright (Amendment) act, 1999.
(e) The Designs Act, 2000.
(f) The Protection of Plant Varieties and Farmers Rights
(g) The Biological Diversity Act, 2002.
(h) Indian Patent (Amendment) Act, 2005.
(i) The Drugs and Cosmetics Act.
The development of IPR laws is synonymous to sustainable
economic development. Intellectual property law is the fast
growing field of legal system worldwide. There are four main
factors behind this unprecedented and rapid evolution and the
accompanying massive upsurge in the use of intellectual
property system, viz. the advent of the Internet, unprecedented
scientific and technological advancement, the emergence of
intangible assets, such as knowledge, information and
innovation, as the main drivers of economic progress ; and the
growing interdependence of Nations, in the result of
internationalization of Commerce and Trade.
The negative side of this development is the recurrence of
intellectual property rights laws violation worldwide. Trade in
pirated and counterfeit goods costs the global economy $650
billions dollars annually, in addition to loss of millions of jobs.
The Federal Bureau of Investigation (FBI) describes
counterfeiting as “the crime of the 21st Century”.
It is heartening to note that in India, judiciary has come down
heavily to break the back of those who break IPR Laws. The
judges have set new standards in dealing with India’s
intellectual property – related (IPR) offences. They are ordering
higher punitive damages, imposing litigation costs on
defendants and even asking them to do community service and
other socially useful work as an innovative way of punishment.
To cite an example, in a case between Dharampal Satyapal
Group, manufacturers of chewing tobacco Tulsi Zarda and the
maker of the knock – off Tara Zarda, the offender was asked to
install 100 spittoons at the Osmania Hospital in Hyderabad apart
from paying damages.
The eternal vigilant judiciary in India is the custodian of
intellectual property rights and the other two arms of the
government, the executive and the legislature are constantly
extending their support by preventing offences and making
appropriate excogitated laws to curb the violations. India is
socially active Nation, which is committed to protect the
interests, lives and property of all its citizens and of those who
are associated to our country.