COMPARATIVE ANALYSIS

REGISTRATION DOES NOT GUARANTEE

VALIDITY – REVOCATION/
CANCELLATION/ RECTIFICATION, ETC.
PROCEEDINGS

CERTIFICATE COURSE IN PATENTS AND

INTELLECTUAL PROPERTY LAWS

BATCH - OCTOBER 2005

PRESENTED BY – KAMALJEET KAUR REAL

 INTRODUCTION
In the Corporate World, the rights of persons are
evidential mostly by documentary evidence. The
validity of the ownership of these rights can be
verified if these rights are duly registered with the
concerned authorities. Intellectual property rights
are also subject matter of registration and are
specifically covered under the respective
Intellectual property laws and thus are not
required to be registered under the Registration
Act, 1908.
INRTRODUCTION… CONTD
Registration gives a title to the owner of the
Intellectual property rights and makes available
certain rights. The rights under Intellectual
property laws are mostly negative rights
because they restrain or prohibit others from
exercising the said rights i.e. use of the subject
matter of the intellectual property by others. But
still registration does not guarantee validity. The
following comparisons will make it clear how
registration is subject to several limitations
under the respective Intellectual property laws.
Sections providing for prohibition
of registration
PATENTS
Section 3 & 4 describe things which cannot be patented
COPYRIGHT
Section 13(3) provides details of work in which copyright
does not subsist
DESIGNS
Section 4 of the Designs Act, 2000 provides for prohibition
of certain designs
Sections providing for
prohibition of registration
TRADE MARKS
Section 11 provides for relative grounds for refusal of
registration and section 12 provides for registration in
the case of honest concurrent use, etc.
GEOGRAPHICAL INDICATIONS
Section 9 provides for prohibition of registration of
certain geographical indications.
SEMICONDUCTOR CHIP LAYOUT DESIGNS
Section 7 provides for registration of certain lay-out
designs
NOTES
The above sections form the base not only for
initial refusal of registration but also in case of
some mistake or misrepresentation, the
appellate Board or in some cases the
Registrar can cancel the registration on the
grounds that the Intellectual property was
obtained in violation of the above sections.
 Duration
PATENTS
Section 53 provides the term of patent shall be 20 years from
the date of filing of the application for patent.
COPYRIGHT
Section 23 to 29 provides that copyright shall subsist until 60
years from the beginning of the calendar year next following the
year in which the copyright is established.
DESIGNS
Section 11 provides that when a design is registered, the
registered proprietor of the design shall, have copyright in the
design during 10 years from the date of registration which can
be extended for further period of 10 years
 Duration
TRADE MARKS
Section 25 provides that the registration of a trade mark is for a
period of 10 years, but may be renewed from time to time.
GEOGRAPHICAL INDICATIONS
Section 18 provides that the registration of a geographical
indication is for a period of 10 years, but may be renewed from
time to time.
SEMICONDUCTOR CHIP LAYOUT DESIGNS
Section 15 provides that the registration of a layout-design is only
for a period of ten years counted from the date of filing an
application for registration or from the date of first commercial
exploitation anywhere in India or in any country whichever is
earlier.
NOTES
It is to be noted that the registration of the
Intellectual Property right gives a right for a
limited period only and after the expiration of
the said period, the right gets extinguished.
Though in case of Design, trade mark and
Geographical Indications, the registration can
be renewed or extended on making an
application and after payment of prescribed
fees. This provision limits the validity of the
registration.
 Certain Acts not amounting to
Infringements
PATENTS
Section 49 and section 107A provide that certain acts
will not be considered to be infringements.
COPYRIGHT
Section 52 describes various acts not amounting to
infringement of copyright. Also section 39A describes
certain acts which will not be considered to be infringing
boardcast reproduction right or performers right.
DESIGNS
NO SUCH PROVISION
Certain Acts not amounting to
Infringements
TRADE MARKS
Section 76 provides that certain acts will not amount to
infringement of certification trade marks
GEOGRAPHICAL INDICATIONS
Section 26 provides for protection to certain trade marks
containing geographical indication which has been applied for
or registered in good faith or where rights to such trade mark
have been acquired through use in good faith in certain cases.
SEMICONDUCTOR CHIP LAYOUT DESIGNS
Sub-section (2), (3), (5), (6), (7) and (8) of Section 18 provides
for certain acts which will not amount to infringement
NOTES
The above provisions make it clear that even
after registration certain acts will not be treated
as infringement of the Intellectual property
because of specific protections given under
the Act. Thus it proves that though the
intellectual property is registered, still it does
not grant full-fledged protection of those rights
because the rights are subject to the above
limitations.
Compulsory Licence or permission
granted for usage by Government &
certain other persons
PATENTS
Section 84 provides for grant of compulsory licence on certain
reasons like non satisfaction of the reasonable requirements
of the public w.r.t. patented invention or that the patented
invention is not worked in the territory of India or is not
available to the public at reasonable price.
COPYRIGHT
Section 31 provides for grant of compulsory licence in works
withheld from public and section 31A provides for grant of
compulsory licence in Unpublished Indian works, the author of
which is dead, unknown or cannot be traced
Compulsory Licence or permission
granted for usage by Government and
certain other persons
DESIGNS
NO SUCH PROVISION

TRADE MARKS
NO SUCH PROVISION

GEOGRAPHICAL INDICATIONS
NO SUCH PROVISION

SEMICONDUCTOR CHIP LAYOUT DESIGNS

Section 51 gives power to the appellate Board to permit the use of a registered
layout-design by the Govt. or by such person so authorised on conditions such
that the use of the layout-design shall be for non-commercial public purposes or
for the purposes relating to national emergency or of extreme public urgency;
NOTES
The above provisions makes it possible
for other persons to use the Intellectual
property despite the fact that the
Intellectual property is registered on
certain grounds like non –usage or
National emergency. Thus encroaching
the right of the Intellectual property
owner.
Revocation, Cancellation &
Rectification
PATENTS
Section 85 provides for revocation of patents
by the controller for non-working in the territory
of India or for non satisfaction of the
reasonable requirements, etc.
COPYRIGHT
NO SUCH PROVISION
Revocation, Cancellation &
Rectification
DESIGNS
Section 19 provides for cancellation of a design by the Controller on
following grounds:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior
to the date of registration; or
© that the design is not a new or original design; or
(d) that the design is not registrable under this Act; or
(e) it is not a design as defined under clause (d) of section 2.
Revocation, Cancellation &
Rectification
TRADE MARKS
Section 47 provides for removal of the trade mark on ground
of non-use and section 50 gives power to the Registrar for
variation or cancellation of registration as registered user or
the proprietor on certain grounds. Also section 57 provides
that on application made to the Appellate Board or to the
Registrar by any person aggrieved, the tribunal may make
order for Canceling or varying the registration of a trade
mark on the ground of any contravention, or failure to
observe a condition entered on the register in relation
thereto. Section 68 provides additional grounds for removal
of registration of collective marks & Section 77 provides for
cancellation of registration of certification trade mark.
Revocation, Cancellation &
Rectification
GEOGRAPHICAL INDICATIONS

Section 27(1) provides that on an application made in

the prescribed manner to the Appellate Board or to the
Registrar by any person aggrieved, the tribunal may
make such order as it may think fit for cancelling or
varying the registration of a geographical indication or
authorised user on the ground of any contravention, or
failure to observe the condition entered on the register
in relation thereto.
Revocation, Cancellation &
Rectification
SEMICONDUCTOR CHIP LAYOUT DESIGNS
Section 26 gives power to the Registrar for cancellation of
registration on certain grounds like non disclosure of some fact
material to the application for registration. Section 30 provides
that any person aggrieved may apply and the Appellate Board
or the Registrar, may make order for making, expunging or
varying the entry as it may think fit. Section 41 provides that any
person may make an application to the Appellate Board for
cancellation of the registration on the ground that the layout-
design is prohibited for being registered under section 7 ; or in
the case of the registration of assignment or transmission
relating to a registered layout-design, such assignment or
transmission is contrary to any provision of the law.
NOTES
The above provisions make it clear that
even after grant of registration, the
registering authority has powers to
review it and cancel or modify the
registration. This makes it clear that
registration though once granted can
always be revoked or cancelled.
COMMENTS
Thus from the above provisions it is clear that
registration of an Intellectual property gives
certain rights to the owner of that property but
these rights are subject to certain Limitations. The
registration can always be revoked or cancelled on
certain grounds. Moreover these rights are for a
specific period only and after the expiration of that
period where there is no provision of extension of
time, the rights also extinguish. Also non payment
of renewal fees may lead to lapse of registration.
Thus a person who wants to exercise Intellectual
property rights has to be always vigilant.