Prof. V.K.

Unni
Public Policy & Management Group
Indian Institute of Management Calcutta
E-mail: unniv@iimcal.ac.in

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Intellectual Property Laws deal with the

creative aspects of human mind
With the advent of the TRIPS agreement which
is a part and parcel of WTO, Intellectual
Property creation and protection has become a
very crucial tool for all corporates
All IPRs are territorial in nature

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They are broadly classified into

1.
Copyrights
2.
Patents
3.
Trademarks
4.
Designs
5.
Geographical Indications
6.
Confidential Information (Trade Secrets)
7.
Semiconductor Layouts

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The law of copyright protects all original literary, dramatic, musical

and artistic works
It also protects entrepreneurial works like cinematographic works
and sound recordings
Copyright just like all other intellectual property is a negative right
Copyright is based on the concept of originality and fixation
The plain meaning of originality is to make sure that the work has
originated from the author / creator
Thus the work should not be copied from some other source
Originality does not mean that the work should be inventive novel,
stylish or unique
Fixation only means that the work should be fixed in a medium

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Copyrightable works can be divided into 2 broad

categories
1.
Literary, dramatic, musical and artistic works
which should be original
2.
Entrepreneurial works like sound recordings and
cinematographic films where originality is not a
requirement

However both the categories of work should be

fixed in a medium

Copyright need not be registered although many

owners get it registered for evidentiary value

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Copyright being a negative right, grants the copyright owner the right to
prevent another person from
1.
Making copies of his copyrighted work in any material form
2. Distributing the copies not being copies already in circulation;
3.
Performing the work in public/ showing/communicating to the
public (through broadcasting / Internet etc)
4.
Making an adaptation of the work (adaptation means translation,
converting a story into drama format etc)
5.
Making a cinematographic film/sound recording from that work
6.
In the case of Computer Programs, Films and sound recording the
owners have the right of commercial rental also

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Literary Work
Literary work is any work, other than a dramatic or musical work,
which is written, spoken, or sung,
It certainly includes works like time-tables, compilations, databases,
football coupons, question papers, computer programs etc
Thus in the case of a song the lyrics will be considered as a literary
work
Literary refers to the nature of the work, that is, one in which the
expression is conveyed by means of words/ symbols
Dramatic Work
Generally a dramatic work, means a work of dance, drama or mime
It is a work of action, with or without words or music, which is
capable of being performed before an audience
7

Under the Indian definition dramatic work" includes any piece for
recitation, choreographic work or entertainment in dumb show, the
scenic arrangement or acting form that is fixed in writing or
otherwise
Musical Works
It consists of the music notations and excludes any words or action
intended to be sung or spoken
The definition of a musical work clarifies that it does not include
words intended to be sung or spoken with the music or action
intended to be performed with the music
A dramatic work may include music: then music will be entitled to a
separate copyright, notwithstanding that the music also forms an
integral part of the dramatic work

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Artistic Works
It includes paintings, drawings, diagrams, charts, plans, photos,
maps, engravings, sculptures etc irrespective or artistic quality
Works of architecture like buildings
Works of artistic craftsmanship e.g. specially designed jewellery,
designer furniture etc
Sound recordings
They are entrepreneurial works and are based on an original literary,
dramatic or musical work
The definition of sound recording covers a recording where there is
no underlying work, such as a recording of people talking, howling
or of other sounds such as the sounds of wildlife.
Thus it only protects recording of the sound and not the sound per se

Cinematographic films

Cinematographic films also fall under the category of

entrepreneurial works
Here protection is given only to the recording of images and
not to the image per se
Sound recording accompanying the film will be treated as part
of a film
Authorship and Ownership of Copyright
Since copyright is a property right which can be owned and
assigned certain crucial questions regarding its mechanisms for
exploiting the work would arise
As far as law is concerned authorship and ownership are 2
distinct and separable rights
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Author has the moral right, while owner has the economic
right to exploit the work (like the right to prevent others from
making copies, distributing it, broadcasting , making
adaptations etc)
Sometimes author of the work will be the owner also, but
there are umpteen instances wherein the owner of the work is
different from its author
Generally ownership flows from authorship
Generally the author is considered to be the first owner of the
work
But there is an exception in the case of works made in the
course of employment

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The copyright owner may decide the manner in which a work has to be
exploited
He may grant licenses for publishing his work to one company and may
grant licenses for adapting the work to some body else
Instead of going for a license, he may assign his copyright of the work to
another party
Thus the owner of the copyright has the exclusive right to do certain things
and in case anybody does any of these acts without his consent,
infringement will result
Who is an author ?
In the case of a story , novel or a drama the person who writes / creates it
The music composer in the case of a musical work
An artist in the case of a painting, sculpture etc, a photographer in the case
of a snap

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The producer in relation to a film or sound recording

Ownership of Copyright
Generally author of the work is the first owner of copyright
But there is an exception to this general rule
Thus if any literary, dramatic, musical or artistic work made by an
employee in the course of his employment then his employer will be
the first owner, subject to an agreement to the contrary
In case of photos, portraits, engravings, films made for valuable
consideration the person who has paid the consideration will be 1st
owner,

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Once a work qualifies for copyright protection, 2 distinct categories

of rights may arise
First one is the economic right, granted to the copyright owner
Second one is the non economic right or moral right granted to the
author
To be very simple moral rights protect the non economic interests of
the author and this will remain with the author even after he
assigns the economic right to others (Sec 57 Copyright Act)
Moral rights are only available to the authors, it is not available to
the copyright owners, however they can be exercised by authors
legal heirs also
Moral rights can be broadly divided into 2
1. Paternity Right 2. Integrity Right

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The right of attribution (Paternity right)

It provides the creators of copyrighted works with the right to be
identified as the author and can be claimed even after the expiry of
copyright
Paternity right will be infringed when the author has not been
properly identified in a copyrighted work
The authors name must appear in each copy of the work in a
reasonably prominent manner
Even after authors death it can be enforced by his/her legal
representatives

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Integrity right
This right is otherwise called as the right to object to derogatory
treatment of the work
Thus the author of a literary/dramatic/ musical/artistic work has the
right to oppose any derogatory treatment of the work
Derogatory treatment means any act which amounts to distortion or
mutilation of the work or is otherwise prejudicial to the
honour/reputation of the author
After the 2012 Amendment India recognises a perpetual integrity
right which means that it will extend even after the expiration of
copyright
Thus in India moral rights exist in perpetuity
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Duration of copyright is life of the author plus 60 years

Apart from the protection given to the categories of works
mentioned earlier the law also affords protection to broadcasting
corporations and performers under rights called Broadcast
Reproduction Right and Performers Right
Performers right protects live performances and this is very
beneficial for the performers like Daler Mehendi, whose
performances may be mostly based on non-copyrighted works
It subsists for a period of 50 yrs from the date of performance
Performance in relation to performers right means any visual or
acoustic presentation made live by one or more performers
Broadcasting right is valid for 25 years from the date of broadcast

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In 2011, a Macaque monkey from Indonesia swiped a traveling

British photographers (David Slater) camera and thereafter took
many snaps including the selfie shown earlier
Later on this snap reached Wikipedia who used the said snap in
Wikimedia commons, an online repository of free images.
When Slater came to know that the said snap was used in Wiki he
sent a notice to them to remove the snap in August 2014
However Wikipedia refused Slaters request to take the photos down
from the website and noted that the snap is in the public domain
because as the work of a non-human animal, it has no human author
in whom copyright is vested.
In other words Wikipedia argues that Slater is not the copyright
owner of the snap
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Idea Expression Dichotomy

Idea-expression dichotomy is a very important principle
in copyright law
To be very simple, idea-expression divide or ideaexpression dichotomy is a concept which is generally
designed to protect the fixed expression of an idea rather
than the basic idea itself.
This principle has played a lead role in making sure that
ideas/principles/concepts, which are considered as the
basic building blocks of any work, will always remain
in public domain and there can be no monopoly over
them

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Thus it is not an infringement if someone takes the

idea/concept behind a book or a painting
Idea in simple words covers different things such as the
ideas which inspired the work, the subject matter of the
work, or it may be the general style in which a work is
created ( modern painting, samurai architecture etc)
Expression means the most detailed plot including the
settings, incidents, sequence of events and special
characters if any
The exclusion of ideas from copyright protection is an
important technique used to reconcile the interests of the
copyright owners against the general public

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In the case of Barbara Taylor Bradford v. Sahara Media

Entertainment Ltd 2004, Barbara sued for infringement of
copyright of her 1979 best seller "A Woman of Substance" and
wanted to stop a serial of the respondent "Karishma - a miracle
of destiny.
The only material on which petitioners base their claim is an
interview given to a journalist by the producer of the serial
wherein he mentioned that the serial has taken the "rags to riches"
theme of the book.
Court made it very clear that there could not be any copyright in
the theme and observed that infringement could be established
only by comparing and showing similarity of details, events,
situations, expressions of language etc

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Infringement can be broadly classified into two

Primary infringement

Secondary infringement
Primary infringement deals with the real act of copying, while
secondary infringement deals with other kinds of dealing like selling
the pirated books, importing etc
In any action for infringement the copyright holder has to show the
following,
He/she is the owner of the work
The person against whom the case is filed (defendant) has carried
out any of the activities falling within the copyright holders domain
The defendants work was derived from the copyright work
Defendant has copied the whole or substantial portion of the
plaintiffs work

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If the copyright holder can prove infringement he will be

entitled to civil, criminal as well as administrative remedies
Civil remedies include injunction (where the court asks the
defendant to stop the act) and /or damages (monetary
compensation) etc
Criminal remedy includes imprisonment for a period from 6
months to 3 years and fine ranging from Rs. 50000 to Rs. 2
lakhs
Administrative remedy means banning the importation of
infringing goods, this can be done by the Registrar of
Copyright upon application by copyright owner

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Upon sued for infringement the defendant may rely upon certain
defences
Here the law provides certain exceptions, one such exception is fair
dealing
Fair dealing provisions allow copying which would otherwise be an
infringement
In many cases the amount of original work used is very relevant
It may be fair-dealing to include 5-10% of another work for the
purpose of criticism or review
But taking the whole work may not be fair-dealing
In almost all common wealth legal systems there are provisions which
deal with fair dealing
For the purpose of research/private study
Criticism/review
Current events

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The whole purpose of fair dealing is to permit in appropriate

cases the taking of a substantial portion of the copyrighted work
In U.K. / India the following factors influence the courts to evaluate
whether there is fair dealing
Purpose: It might be fair dealing to take copy of an entire work
for research or private study, but taking large amounts of
anothers work for the purpose of review or criticism might not
fall under fair dealing
Proportion: Sometimes even proportion of the work taken may
be relevant, it may be fair dealing to take around 10% of
anothers work for criticism or review but taking around 35-40%
of the other work may not be considered as fair

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Motive: if the motive of copying is to compete with the

plaintiffs work, then courts may not consider it as an act of
fair dealing
Status of the plaintiffs work: Under the UK/India law also
the status of the plaintiffs work is very important, In the
case works which are unpublished, the scope of fair dealing
is very restricted

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Indian Position
In India Sec 52 of Copyright Act deals with defences to
infringement,
The Indian Law allows the following
a fair dealing with a literary (except a computer
program), dramatic, musical or artistic work for the
purposes of private use, including research
criticism or review, whether of that work or of any other
work*
Fair dealing for the purpose of reporting current events
in a newspaper, magazine or similar periodical*

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by broadcast or in a cinematograph film or by means of

photographs
Publication in a collection, with the bona fide intention for the use
of educational institutions, and so described in the title*, Sec 52
(1) (g)
Any Act of a Legislature can be reproduced or published together
with any commentary thereon or any other original matter
Publishing in newspaper magazine or periodical an article on
current economic political social or religious topics * Sec 52 (1) (m)
* Proper acknowledgement needed

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It is impossible to define what is fair dealing. It must

be a question of degree . To take long extracts and
attach short comments may be unfair. But, short
extracts and long comments may be fair,

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In July 2012 the Copyright Act was amended and this will have
some implications on the entertainment industry
Generally a cinematograph film contains literary works such as the
script and lyrics, musical works songs background score, artistic
works such as the sets, graphics etc.,
Apart from this it will also contain performances by actors, singers,
dancers, stuntmen etc
Before the amendment the author is the first owner of copyrights in
a work unless such work is commissioned by another person or is
created under a contract of service or employment, in which cases
the employer or the person commissioning the work is the owner.

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After the amendment a new proviso has been added to provide that a
cinema production house will not own the copyrights created by its
employees/artists during the course of their employment/ engagement
Interestingly this provision does not apply to works incorporated in a
sound recording and as a result a record label like BMG Crescendo
can still own the works created by its employees or commissioned
authors
Previously the author of a literary, artistic or musical work could
assign the copyright to the producers for incorporation in a film.
Such an assignment could broadly be for both existing and future
modes of exploitation.
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There was no right to receive any royalty for exploitation of the

works and if such a right existed, it could be transferred or waived.
The 2012 Copyright Amendment has made 3 important changes
Firstly, an assignment made to a producer or other person is not
applicable to any medium exploitation that is not in existence at
the time of the assignment unless specifically mentioned in the
assignment agreement
Secondly, the author of a literary or musical work incorporated in
a cinematograph film cannot assign or waive his right to receive
equal share of royalties from the assignee for utilisation of such
work in any form other than communication to the public in a
cinema hall.

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This means that producers should now share the non theatrical
exploitation royalties in an equal manner with the script writers,
lyricists and composers
The author however can assign the right to receive royalty to his /her
legal heir or copyright societies
Thirdly the author of a literary or musical work included in a sound
recording shall not assign or waive the right to receive equal share of
royalties from the assignee for utilisation of such work in any form
The author however can assign the right to receive royalty to his /her
legal heir or copyright societies

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Though, amendment is done with a noble intention of granting

royalty rights to the authors, the amendment can really increase the
costs for production houses and entertainment companies
The industry is generally of the view that there is no clarity in
royalty mechanism and distribution between producers, authors of
underlying works and performers
Freedom of contract between producers and authors of underlying
works is abolished by this amendment
The above provisions have serious consequences on the manner in
which the deals will have to be negotiated in the film / broadcasting
industry with the authors of works and among
producers/distributors.
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Patent law deals with new industrially applicable

inventions
It envisages a very powerful and special mode of
protection for inventions
The patent is valid for 20 years from the date of filing
the application
Compared to other streams of IPR the property right
granted is very strong
A patent is never granted in an automatic way, there
is a structured procedure for obtaining a patent

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Patents can be given for products as well as

processes
Here a monopoly is granted to the patentee for
disclosing the details of the invention, which he
would have kept as a secret
The disclosure made by the patentee should enable
a person skilled in the art to work/make the invention
once the patent expires
This would mean that an adequate and enabling
disclosure is a condition precedent for obtaining a
patent

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Patentability Requirements
The invention has to be novel
It should involve an inventive step, i.e. it
should be non-obvious
It should be capable of industrial application
It should not be excluded specifically by the
statute

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Novelty
Invention must be new, it must not already have
been available to the public
An invention can be new only if it does not form part
of the state of art / prior art
The prior art comprises of all matters made available
to the public before the date of the invention whether
by written, oral description, by use or in any manner
Prior publication could have occurred anywhere in
the world

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Inventive Step
There is no precise definition of the term inventive step
An invention can have inventive step if it is not obvious to a person
skilled in the art
Obviousness is always evaluated with reference to skilled worker
Generally commercial success of the invention especially when it
satisfies a long felt want can make an invention non-obvious
(inventive)

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Industrial Application

Industrial application is another requirement for

patentability
The invention has to be worked industrially
This requirement distinguishes patents from
copyright
An invention is capable of industrial application if it
can be made or used in any kind of industry
including agriculture

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Apart from the conditions on novelty, inventive step and industrial application
India law (Sec. 3) also excludes certain inventions from patentability like
an invention which is frivolous or which claims anything contrary to well
established natural laws;

the mere discovery of a scientific principle or the formulation of an

abstract theory; or discovery of any living thing or non living substance
occurring in nature, Sec 3[c]
A mathematical or business method or a computer programme per se, or
algorithms Sec 3(k)
An invention which, in effect, is traditional knowledge, or is an
aggregation or duplication of known properties of a traditionally known
component, Sec 3(p)

42

Rights of a patent holder (Sec 48)

When a patent is for a product, the patent holder has the
exclusive right to prevent somebody from making, using,
selling, distributing, importing such article
In case of a process patent the patent holder has the exclusive
right to prevent somebody from using, selling, exercising,
importing the method/process in India
A patent is always territorial in nature
If any person violates any of these rights then there will be
infringement
Patent Law only provides for civil remedies like injunction
and damages

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The Appellant (TVS) and Respondent (Bajaj) are two wheeler

automobile manufacturers.
In the High court Bajaj filed an application for permanent injunction
in order to prevent TVS from infringing its Patent and/or from using
the technology / invention described in the said patent in 2/3
wheelers including the proposed 125 cc 'FLAME' motorcycle of the
Appellant.
Bajaj claimed it had invented an unique technology of using two
spark plugs for efficient burning of lean air fuel mixture in a small
bore engine (bore size between 45 mm and 70 mm) which was the
subject matter of the aforementioned patent.
TVS challenged the validity of the patent on the basis that the use of
twin plugs in an engine was a part of prior art since it was the
subject matter of the expired patent US Honda Patent filed in 1985
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The case involves that following issues:

Whether Bajajs patent is valid in view of the
Novelty test?
Whether TVSs modified use of the same
technology amounts to infringement?
Whether the balance of convenience is in
favour of Bajaj or TVS?

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Though the merits of the case are yet to be decided in the Madras
High Court, the lower court (single bench) decided in favour of
Bajaj and held the patent to be valid.
The lower court was of the opinion that infringement had occurred
and hence granted an injunction and damages.
The decision was appealed by TVS before the Division Bench of
Madras High Court
The division bench overruled the lower court holding that, while the
merits of the case were yet to be decided, the balance of convenience
was in favour of TVS since it had invested large amounts in the
marketing and production of the impugned FLAME model bike.
The court asked TVS to maintain record of sales and accounts but
allowed the sale of the product (May 2009 order)
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Recently India has witnessed lot of high profile patent battles in the
pharma and non pharma sector
Top MNC pharma companies like Novartis, Roche and Bayer are
involved in many patent litigation with Indian companies like Cipla
Even in non pharma sector many companies are involved in patent
battles to protect their monopoly against rival companies
Very recently (December 2014) the Delhi High Court restrained the
Chinese mobile phone company Xiaomi from selling, advertising,
manufacturing or importing devices that infringe Ericssonss
Standard Essential Patents (SEPs)
The judge also directed the Customs officials to stop the imports
under the IPR Rules
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Trade Marks are used by manufacturers/ traders to identify

their goods and distinguish them from goods made or sold by
others
Right from the period of Romans it was common for pottery
to be impressed with a mark
The industrial revolution saw an enormous growth in the use
of trade marks for advertising
Very often a trade mark is associated with quality and
consumer expectations
A trade mark should be used or intended to be used in
relation to certain goods/ services

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The funda is that a trade mark should denote a

connection in the course of trade between a
manufacturer or goods in question, and thus if the
mark is not being used there then there can be no such
connection
Another important aspect is that the mark should be
distinctive, i.e. it should be capable of distinguishing
the goods and services of one from another
This requirement of distinctiveness serves as a
limitation on the types of words being used as marks
Ownership of a trade mark gives the owner a restricted
monopoly and the owner has a proprietary right in the
mark
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Trade Mark Law has the following objectives

1.
Protection of business reputation and goodwill
2.
Protection of consumers from deception

By fulfilling these two broad objectives this

branch of Law strikes at the root of unfair
competition

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Trade Mark
It must be a mark capable of being represented graphically
(interestingly the term mark has been defined in the Act to include a
device, heading, label, name , signature, word, letter, numeral, shape
of goods, packaging, combination of colours etc)
It must be capable of distinguishing the goods/ services of one
company from that of others
It should be used or intended to be use in relation to goods
In 2008 Yahoo was able to register a sound mark from the Indian
Trademark Office

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Absolute grounds for refusal of registration (Sec 9)

When a mark is devoid of any distinctive
character, i.e when it is not capable of
distinguishing the goods/services of one person
from those of another, it cannot be registered , for
example the word computer cannot be used as a
trademark to market computer/IT HARDWARE

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If the trade mark consists exclusively of marks/signs which

denote the kind, quality, quantity, geographical origin, values
etc, Sec 9(1) (b)
If the trade mark consists exclusively of marks/signs which
have become customary in the current language or in the
bonafide or established practices of trade, Sec 9(1) (c)
But Sec 9(1) (a), (b) and (c) come with an exception
If on the date before the application for registration, the trade
mark had acquired a distinctive character as a result of use
made of it, then it can be registered,
Similarly if the mark is a well-known mark, then also it can be
registered, e.g. Head & Shoulders, Fair & Lovely etc

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The following marks cannot be registered in any

circumstances
If the mark contains any matter likely to hurt the
religious feelings of any class or section of Indian
citizens, Sec 9 (2) (b)
If the mark comprises of scandalous or obscene
matter then it cannot be registered, Sec 9 (2) (c)
Then marks coming under the purview of Emblems
& Names Act 1950 cannot be registered, Sec 9(2) (d)

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Relative grounds for refusal of registration

A trademark which is identical to an earlier trademark cannot be
registered on similar goods covered by earlier trademark, if there
is a likelihood of confusion in the minds of the public which may
include a likelihood of association with the earlier mark
The mark Brittania cannot be registered by another company on
products like chocolate/ice-cream because Brittania is already
registered for Biscuits, cakes etc and somebody registering the
identical name for chocolates may be create confusion

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A trademark which is similar to an earlier

trademark cannot be registered on identical or
similar goods covered by earlier trademark, if there
is a likelihood of confusion in the minds of the
public
The mark Brittanica cannot be registered by
another company on products like biscuits,
chocolate/ice-cream because Brittania is already
registered for Biscuits, cakes etc and somebody
registering the similar name for those products
may be create confusion

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Normally the likelihood of confusion requires an

appreciation of the visual, phonetic or conceptual
similarity of the marks based on the overall
impression given by them
Perception of the average customer is very
important
Generally a customer sees a trade mark as a whole
and doesnt analyse its individual details

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Factors which may lead to confusion

Look and sound of the words
Goods to which the mark is applied
Nature of customers
Surrounding circumstances
What is likely to happen if both the marks were
to be used together.

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A trade mark which is identical or similar to an earlier

trade mark can ordinarily be registered for a
dissimilar goods
But this also will not be allowed if the first mark is a
well-known mark
For e.g. if Mercedes Benz is considered as a wellknown mark, it can stop some chappal manufacturer
in Joka if he applies to get a trademark registration
for the name Mercedes Benz to market the chappals
produced by him
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The following factors have to be considered by the Registrar

to determine whether a Mark is well known or not
Knowledge or recognition of the trademark in the
relevant section of public
Market share, intensity, geographic extent, duration of
use of the trade mark
Investments made to promote the trade mark
Successful enforcement of rights associated with the trade
mark
Thus in the case of a well-known mark there is no
requirement of any confusion in the minds of the public
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Trademark Infringement happens when anybody other than the

trademark owner uses the mark in the course of trade
1.
By affixing it to the goods or packaging
2.
Offering the goods for sale, marketing, stocking them for such
purposes
3.
Importing the goods with the said mark
4.
Using the mark on business letters or advertisements

If the mark is infringed the trademark owner can file a case for civil
and criminal remedies

Civil remedies include injunction and damages while criminal

remedies include imprisonment and fine ranging from Rs. 50000 to
Rs. 200000

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Many corporates take utmost care to protect their trade/service

marks and are very vigilant in matters involving any misuse or
infringement of their trade marks
Very recently (December 2014) Make My Trip, filed a case for
trade mark infringement against Make My Tours who was using
the mark Make My Tours
The Delhi High Court restrained the use of the mark Make My
Tours as it was causing confusion in the minds of the public
The court accepted the plaintiffs contention that Make My Tours
is deceptively similar to Make My Trip and the two logos in issue
are identical.
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With the advent of Internet and domain names, the trademark

holders are facing threat from Cybersquatting
During the early days of Internet, many individuals had in fact
registered the domain name versions of some famous trade
marks and had charged huge amounts from them for selling
back these domain names, this practice is popularly called as
Cybersquatting
Now there is an international mechanism available to check
Cybersquatting under the aegis of Internet Corporation for
Assigned Names and Numbers (ICANN)

Lots of Indian companies including Tata, Dr. Reddys,

Times of India, Mahindra and Mahindra have successfully
used the ICANN policy against cybersquatters
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Apart from cybersquatting there are other emerging issues like use
of trademark as metatags by competitors, deep-linking, pop up
advertisements etc
Tata Sons v Bodacious Tatas [1999, Delhi High Court].
This case concerned the well-known Indian trade mark TATA in its
use as a domain name www.bodacious-tatas.com , as a trade mark
and as a meta-tag
The defendants had given hyperlinks to pornographic sites which
might very badly affect the companys reputation
The name TATA was also used as a meta-tag to confuse search
engines.
Thus, the moment a user queried for TATAs, the defendant's web site
would show up in the search results right at the top

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The Delhi High Court restrained the use of the

famous trade mark TATA not only as a domain name
and as a trade mark but also as a meta-tag
Duration of Trademark Protection
Trademark is granted protection for a 10 year term
and this can be renewed any number of times
Indian law also allows distinctive shapes to be
registered as trademarks

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This area of IPR is concerned with the protection of eye

appeal
Designs that are purely functional cannot be registered
Design law protects features of
shape,
configuration,
pattern,
ornamentation or
composition of lines or colours applied to any article
But it does not include certain things like trade marks, artistic
wok under the Copyright Act , mere mechanical devices etc

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As a matter of general principle designs that are purely

functional are not registrable
This would simply mean that if a particular shape is dictated
solely to make the article perform certain functional
requirements then it cant be registered
Shape means the external form of the article
Configuration means the arrangement of an article
Shape and configuration signifies something in 3 dimensions,
i.e the form in which the article is fashioned
Pattern and ornamentation is something which is placed on
article for its decoration, its is in 2-dimensional form

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Duration of design registration is for a period of 10 years,

which can be extended by 5 more years
The followings designs cannot be registered under the Designs
Act
Designs which are not new or original
Designs which has been disclosed to the public anywhere in
the world prior to the filing date
Design which is not significantly distinguishable from
known designs or combination of known designs
Design which comprises of scandalous and obscene matter

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Trade Secrets: There is no special law in India to protect trade secrets mostly
it comes under the law of contract as in most of the cases there involves an
employer-employee relationship
Trade Secrets cannot be registered/published, if that happens the entire
trade secret is lost
Definition (Provided in TRIPS Agreement)
A trade secret is any information, including a formula, pattern, compilation,
program, device, method, technique, or process, that:
1.
Derives independent economic value, from not being generally known to,
and not being readily ascertainable by proper means by, other persons who
can obtain economic value from its disclosure or use; and
2.
Is the subject of efforts that are reasonable under the circumstances to
maintain its secrecy
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Since many of the trade secrets cases that come before the courts do
involve contracts and, particularly, contracts of employment, such
cases may be treated as a breach of contract
An employer, like anyone else, is entitled to restrain unauthorized
disclosure or use of information which, in the, is confidential.
On the other hand, for public policy reasons, an employee is entitled
to use and put at the disposal of new employers all his acquired skill
and knowledge, no matter where he acquired that skill and knowledge
and whether it is secret or was so at the time he acquired it
Under Section 27 of the Indian Contract Act, a service covenant that
extended beyond the termination of the service is void.
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1.

1.
2.
3.

There are numerous Indian cases in which courts have refused to

extend a service covenant beyond the termination of the service
American Express Bank Ltd. v. Priya Puri (2006 )
(Delhi High Court has held that freedom of changing employment
for improving service conditions is a vital and important right of
an employee which cannot be restricted or curtailed even on the
ground that he or she has possessed the employers data and
confidential information
Ambiance India Pvt. Ltd. Vs. Shri Naveen Jain (2005)
Pepsi Foods Ltd. and Others Vs. Bharat Coca-Cola Holdings Pvt.
Ltd. & others (1999)
Sandhya Organic Chemicals P. Ltd V. United Phosphorous Ltd
(1999)
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Prof. V.K. Unni

Public Policy & Management Group
Indian Institute of Management Calcutta
E-mail: unniv@iimcal.ac.in

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