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Class Notes On Intellectual Property
Class Notes On Intellectual Property
Q2. What Do You Mean by Design? What Is the Procedure for Registration?
1. Definitions: -In this Act, unless there is anything repugnant in the subject or context:
“design” - means only the features of shape, configuration, pattern or ornament applied
to any article 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 more or principle of construction or anything
which i sin 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, or property mark as defined in section 479 of the Indian Penal Code.
2. Registration of Designs
The Controller may, on the application of any person claiming to be the proprietor of
any new or original design not previously published in India, register the design under
this Part.
The application must be made in the prescribed form and must be left at the Patent
Office in the prescribed manner and must be accompanied by the prescribed fee.
The same design may be registered in 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.
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 Central
Government.
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
A Design when registered shall be registered of the date of the application for
registration,
3. Certificate of registration
The Controller shall grant a Certificate of registration to the proprietor of the design
when registered.
The Controller may, in case of loss of the original certificate, or in any other case in
which he deems it expedient, furnish one or more copies of the certificate.
4. Copyright in Registered Designs
When a design is registered, the registered proprietor of the design shall, subject to the
provisions of this Act, have copyright in the design during five years from the date of
registration.
If before the expiration of the said five years application for the extension of the period
of copyright is made to the Controller in the prescribed manner, the Controller shall, on
payment of the prescribed fee, extend the period of copyright for a second period of
five years from the expiration of the original period of five years.
If before the expiration of such second period of five years application for the extension
of the period of copyright is made to the Controller in the prescribed manner, the
Controller may, subject1Dany roles under this act, on payment of the prescribed fee,
extend the period of copyright for a third period’ of five years from the expiration of the
second period of five years.
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Q3. Define Intellectual Property Law? What Laws Have Been Enacted To Protect The Holders of
Property?
Copyright. Federal copyright law protects original creative works such as paintings,
writing, architecture, movies, software, photos, dance, and music. A work must meet
certain minimum requirements to qualify for copyright protection. The length of
protection also varies depending on when the work was created or first published.
Trademark. Brand names such as Nike and Apple, as well as logos, slogans, and other
devices that identify and distinguish products and services, are protected under
federal and state trademark laws. Unlike copyrighted works, trademarks receive
different degrees of protection depending on numerous variables, including the
consumer awareness of the trademark, the type of service and product it identifies,
and the geographic area in which the trademark is used.
Right of Publicity. A patchwork of state laws known as the right of publicity protects
the image and name of a person. These laws protect against the unauthorized use
of a person’s name or image for commercial purposes—for example, the use of your
picture on a box of cereal. The extent of this protection varies from state to state.
Trade Secrets. State and federal trade secret laws protect sensitive business
information. An example of a trade secret would be a confidential marketing plan
for the introduction of a new software product or the secret recipe for a brand of
salsa. The extent of trade secret protection depends on whether the information
gives the business an advantage over competitors, is kept a secret, and is not known
by competitors.
Right of Privacy. Although not part of intellectual property laws, state privacy laws
preserve the right of all people to be left alone. Invasion of privacy occurs when
someone publishes or publicly exploits information about another person’s private
affairs. Invasion of privacy laws prevent you from intruding on, exposing private facts
about, or falsely portraying someone. The extent of this protection may vary if the
subject is a public figure—for example, a celebrity or politician.
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Q4. Write Down the Absolute Ground for Refusal of Trademark Under Trademark Act 1999.
Introduction
The Trademarks Act, 1999 is the law in India containing absolute and relative grounds for
refusal of
registration of a trademark.
Fanciful Trademarks
Consider Xerox. This word has no other meaning in the English language.
Arbitrary Trademarks
These are English words with actual meanings, and used to describe consumer products.
Any word in the dictionary can be used, if that word has no relation to your company or
products.
For example, you cannot legally register “orange” if your company produces orange juice.
Suggestive Trademarks
Examples include Coppertone sun lotion, Playboy magazines for men, Mustang sports cars,
and Airbus airplanes.
These are words or phrases actually relate to a particular product, service or company.
Trademarks which impart information like intended purpose, geographical origin, quality,
quantity are liable to be refused.
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Case Laws
In ELGI Ultra Industries Limited v The Assistant Registrar of Trade Marks, the Intellectual
Property Appellate Board [IPAB], held that the words “ultra” and “perfect” are highly
descriptive and any person can use such descriptive words for its products. Disallowed.
In Imperial Tobacco Company of India Ltd v. Registrar of Trademarks, the Calcutta High Court
held that the trade mark “Simla” is a well-known hill– station of India and has geographical
significance. Hence disallowed.
C. It is in customary use.
For example, Otis’s trademark “Escalator” for moving staircases became a generic word and
therefore, the Trademark Office concluded that Otis cannot use its trademark since the mark
has become customary in respect of moving stairs.
If the mark is in use or is a well-known mark and has acquired a distinctiveness, before the
application, it will be registered.
For example, if a company starts to make biscuits by the name of Parle-J, it would be an
infringement of the right of Parle-G, since it is highly deceptive.
In the case of Lal Babu Priyadarshi v. Amrit Pal Singh, the appellant had applied for
registration of the mark “Ramayan” with the device of a crown in relation to incense sticks
and perfumeries. The court observed that “no person can claim the name of a holy text as a
trademark.”
For example, ‘A’ sells DVDs with the trademark ‘SNUFF Movies’. The word ‘SNUFF’ is a
commonly used slang which means murder or arousal. The use of this word in a Trademark
will be considered to be promoting murder and pornography and its registration will be
refused.
D. The mark is prohibited under the Emblems and Names Act, 1950;
For example, the name, emblem or official seal of the United Nations Organization/World
Health Organization or the National Flag of India are prohibited from use as trademark and
these words cannot be registered under the trademarks act.
For example, a Toaster Shape for a seller of toasters, Vanilla Ice cream shape for ice creams.
Only where the shape has a material non-functional element (e.g. important decorative or
imaginative elements) could registration as a trade mark be accepted.
Example: Lego was the owner of a trademark for three-dimensional shape of a red Lego
brick. Mega Brands applied to have Lego’s trademark declared invalid on the basis that the
shape of the brick was necessary to obtain a technical result. Mega Brands contended that it
was necessary to include two rows of studs on the upper surface of the brick in order to fit
with other Lego bricks. The European Courts agreed with Mega Brands and declared Lego’s
trademark invalid.
The basis behind not providing trademark protection to shapes that give substantial value to
the goods is to exclude “aesthetic shapes” from trademark registration. Thus, any shape that
appeals to the eye compared to the common shape of a product cannot be trademarked.
The mark is identical or similar to an earlier trademark and the goods are identical or similar
to the goods of the earlier trademark.
The two words are compared and judged to see whether there will be a confusion among
the trademarks which would lead to one party being injured while the other gaining illicit
benefit.
For example if ‘A’, an established seller, sells beds with the trademark ‘BED KINGS’ and B, a
new player in the market sells his beds with the trademark ‘KING BEDS’, there will be a
confusion in the minds of the public. This is a relative ground for refusal and B’s application
will be rejected because A’s mark with a similar name already exists.
The mark is identical or similar to an earlier trademark though goods may not be similar.
The use of such a mark would allow the applicant to gain unfair advantage or damage the
reputation of the earlier trademark.
For example, ‘APPLE’ is famous for the Iphone, Ipod and other electronic goods.
If a trader B decides to sell speakers with the trademark ‘APPLE SPEAKERS’ or even jeans as
‘APPLE JEANS’, his trademark application will be rejected.
Apple is a well-known trademark and its use in relation to jeans, speakers or any other goods
will cause the general public to believe that the company Apple has produced it.
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Contrary to law
If a law of passing off, or a law of copyright is protecting an unregistered trade mark, such
marks cannot be used by other persons as trademarks.
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Q5. Explain the Term Intellectual Property and Its Various Forms.
Examples are an invention, a music composition, a movie, book, painting or even a brand
name.
Like any other property they are financially beneficial to the owner.
The monetary benefits are said to encourage people to come up with new inventions and
creations.
The rights are related to Article 27 of the Universal Declaration of Human Rights.
The statute says, "everyone has the right to protect his work resulting from any scientific,
literary or artistic production ".
If you are an author, who has written a new book, you can apply for a copyright for your
work.
The commercial ones include patents, trademarks, industrial design rights, and trade secrets.
Once you establish your IP right, you can protect your work legally.
Copyrights:
Rights available
The right lies with the owner-cum-copyright holder for a certain period. In India it lasts up to
a period of 60 years after their death.
In case of anonymous works, the right lasts for 60 years from the date of first publication.
After the time lapses, the work can be republished or reproduced by others.
Patents:
Generally, the time limit of a patent is 20 years from the date of filing the application.
Trademarks:
It is used to distinguish the goods or services of one enterprise from those of its competitors.
For example, Nike products can be identified from the logo, which is embossed on their
products.
They need not be utilitarian, but they should have an aesthetic or ornamental value.
An industrial design right is conferred after considering factors like novelty, originality and
visual appeal.
Only persons having such right can make or sell such objects.
Trade Secrets:
Trade secrets are the, formulas, recipes, practices, processes or ideas which are used by a
company to gain an economic advantage over its competitors.
They cannot be used by anyone who has learned it through the owner.
For example, an employer can protect trade secrets through contracts with his employees.
Conclusion
Intellectual property rights have encouraged people to come up with indigenous creations,
as the law protects their rights over their works. Thus, it is very important to respect these
rights and refrain from infringing them.
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Copyright in India is governed by Copyright Act, 1957. This Act has been amended several
times to keep pace with the changing times. As per this Act, copyright grants author's
lifetime coverage plus 60 years after death. Copyright and related rights on cultural goods,
products and services, arise from individual or collective creativity. All original intellectual
creations expressed in a reproducible form will be connected as "works eligible for copyright
protections". Copyright laws distinguish between different classes of works such as literary,
artistic, musical works and sound recordings and cinematograph films. The work is protected
irrespective of the quality thereof and also when it may have very little in common with
accepted forms of literature or art.
Copyright protection also includes novel rights which involve the right to claim authorship of
a work, and the right to oppose changes to it that could harm the creator's reputation
A vital field which gets copyright protection is the computer industry. The Copyright Act,
1957 was amended in 1984 and computer programming was included with the definition of
"literary work.' The new definition of "computer programme" introduced in 1994, means a
set of instructions expressed in works, codes or in any other form, including a machine
readable medium, capable of causing a computer to perform a particular task or achieve a
particular result.
The greatest fear and challenges to the copyright industry is the piracy of works whether,
books, musical works, films, television programmes or computer software or computer
database. The special nature of infringement of copyrights in computer programmes has
again been taken note of by the Copyright (Amendment) Act, 1994 by inserting a new
section 63 B.
The Copyright (Amendment) Act, 1999 makes it free for purchaser of a gadget/ equipment
to sell it onwards if the item being transacted is not the main item covered under the
Copyright Act. This means computer software which is built in the integral part of a
gadget/equipment can be freely transacted without permission of copyright owner. This
amendment also ensures fair dealing of 'broadcasting' gaining popularity with the growth of
the Internet. With this amendment India has updated the Act to meet the concerns of the
copyright industries mainly consisting of Book Industry, Music Industry, Film and Television
Industry, Computer Industry and Database Industry.
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Trademark Infringement
Infringement of a trademark in India means a violation of the exclusive rights that are
granted to the proprietor registered under the Trade Marks Act, 1999. The rights that are
violated are those which are granted in relation to goods and services.
Sections 29 and 30 of the Act lay down certain provisions for protecting the registered
trademark in case it is infringed on by someone else.
Section 29 of the Act says that a registered trademark is infringed when an unregistered
proprietor or licensee uses the said trademark for trade and business purposes.
1. Identity with registered mark: a mark that is similar to the registered one and there is also
a similarity between the business activity thus rendered.
2. Similarity with registered mark and identity of goods/services: As mentioned above, there
should be no similarity between the mark or the services rendered so as to avoid any
confusion in public
3. Identity with registered mark and goods and services-presumption of confusion: this is a
mark which is similar to one that already exists and also means that the goods and services
rendered are similar. Do remember that in such cases the courts can decide if the use will be
a cause of confusion for the general public
4. Identity with a registered mark having reputation: A mark which is identical to one
registered in India with a reputation. It’s a concern even if such a mark is used for goods and
services that are not exactly related to the original.
5. Similarity of trade name with registered trademark: The name of a trade that is similar to
the goods and services that are being run under the original registered trademark
7. Use of registered trademarks in advertisements: Such a move takes unfair advantage and
works in contrary to honest commercial and industrial practices. This is also detrimental to
its distinctive character or is against the reputation of the trade mark.
1. Use of mark to indicate the kind, quality, quantity, etc: When the said infringing mark is
used for goods and services covered by the registered trademark to mark the kind, quality,
and quantity of the goods and services rendered. For example, the proprietor of the RICH’S
WHIP TOPPIN filed a case of infringement against the user of BELLS WHIP TOPPING. The
court, however, ruled against the complainant saying that the ‘whip topping’ was indicating
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the sort of goods it sold and the services it rendered, and hence did not amount for
infringement.
2. Use of mark outside the scope of registration: For example, ‘XYZ Garden Market’ can be
registered with the condition that the registered proprietor may not have exclusive rights to
the words ‘garden’ and ‘market’. Hence, the use of the latter by anyone else will not amount
to infringement.
3. Implied consent of use: Where a person uses the mark in relation to goods and services
for which the registered user had applied for the trademark and may not have removed it or
consented to its use
5. Use of the two registered trademarks that are similar to each other: Such a usage of trade
mark being one of two or more registered trade mark, which are identical or similar in
exercise of the right to the use of that registered trade mark
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Q8. Explain the Term Geographical Indication? What Geographical Indication Cannot Be
Registered
The term 'Geographical Indications (GI) has been defined as "Geographical Indications", in
relation to goods, means an indication which identifies such goods as agricultural goods,
natural goods or manufactured goods as originating, or manufactured in the territory of a
country, or a region or locality in that territory, where a given quality, reputation or other
characteristics of such goods is essentially attributable to its geographical origin and in case
where such goods are manufactured goods one of the activities of either the production or
of processing or preparation of the goods concerned takes place in such territory, region or
locality, as the case may be.
by or under any law for the time being in force representing the interest of the producers of
the concerned goods, who are desirous of registering geographical indication in relation to
such goods shall apply in writing to the Registrar in such' form and in such manner and
accompanied by such fees as may be prescribed for the registration of the geographical
indication.
Agreement on Trade Related Aspects Intellectual Property Rights was negotiated at the
end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) treaty in
1994. With the establishment of the world trade Organization (WTO), the importance and
role of the intellectual property protection has been Crystallized in the TRIPS Agreement.
The general goals of the TRIPS Agreement are contained in the Preamble to the
Agreement, which reproduces the basic Uruguay Round negotiating objectives established
in the TRIPS area by the 1986 Punta del Este Declaration and the 1988-89 Mid-Term
Review. These objectives include the reduction of distortions and impediments to
international trade, promotion of effective and adequate protection of intellectual
property rights, and ensuring that measures and procedures to enforce intellectual
property rights do not themselves become barriers to legitimate trade.
The TRIPS Agreement encompasses, in principle, all forms of intellectual property and aims
at harmonizing and strengthening standards of protection and providing for effective
enforcement at both national and international levels. It addresses applicability of general
GATT principles as well as the provisions in international agreements on IP (Part I). It
establishes standards for availability, scope, use (Part II), enforcement (Part III), acquisition
and maintenance (Part IV) of Intellectual Property Rights. Furthermore, it addresses related
dispute prevention and settlement mechanisms (Part V). Formal provisions are addressed
in Part VI and VII of the Agreement, which cover transitional and institutional
arrangements respectively.
The obligations under TRIPS apply equally to all member states. However developing
countries were allowed extra time to implement the applicable changes to their national
laws, in two tiers of transition according to their level of development. The transition
period for developing countries expired in 2005. For least developed countries, the
transition period has been extended to 2016, and could be extended beyond that.
The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most
comprehensive multilateral agreement on intellectual property. The areas of intellectual
property that it covers are:
(i) Copyright and related rights (i.e. the rights of performers, producers of sound recordings
and broadcasting organisations);
(vii) The undisclosed information including trade secrets and test data.
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Q10. Explain the Term Intellectual Property and Its Various Forms.
Like any other property they are financially beneficial to the owner.
The monetary benefits are said to encourage people to come up with new
inventions and creations.
The rights are related to Article 27 of the Universal Declaration of Human Rights.
The statute says, "everyone has the right to protect his work resulting from any
scientific, literary or
If you are an author, who has written a new book, you can apply for a copyright
for your work.
The commercial ones include patents, trademarks, industrial design rights, and
trade secrets.
Once you establish your IP right, you can protect your work legally.
Copyrights:
Rights available
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The right lies with the owner-cum-copyright holder for a certain period. In India it
lasts up to a
In case of anonymous works, the right lasts for 60 years from the date of first
publication.
After the time lapses, the work can be republished or reproduced by others.
Patents:
Generally, the time limit of a patent is 20 years from the date of filing the
application.
Trademarks:
It is used to distinguish the goods or services of one enterprise from those of its
competitors.
For example, Nike products can be identified from the logo, which is embossed
on their products.
They need not be utilitarian, but they should have an aesthetic or ornamental
value.
appeal.
Only persons having such right can make or sell such objects.
Trade Secrets:
Trade secrets are the, formulas, recipes, practices, processes or ideas which are
used by a company
They cannot be used by anyone who has learned it through the owner.
For example, an employer can protect trade secrets through contracts with his
employees.
Conclusion
law protects their rights over their works. Thus, it is very important to respect
these rights and