WEBINAR ON

INTELLECTUAL
PROPERTY RIGHTS:-
ITS VARIANTS & IMPORTANT
JUDGEMENTS
 WHAT IS IPR

• Intellectual property (IP) refers to creations of the mind,

such as inventions; literary and artistic works; designs;
and symbols, names and images used in commerce.

• IP is protected in law, for example, patents, copyright and

trademarks, which enable people to earn recognition or
financial benefit from what they invent or create. By
striking the right balance between the interests of
innovators and the wider public interest, the IP system
aims to foster an environment in which creativity and
innovation can flourish.
TYPES OF IPR
1. TRADEMARK

Definition: A trademark, trade mark, or trade-mark is a recognizable sign,

design, or expression which identifies products or services of a particular source
from those of others, although trademarks used to identify services are usually
called service marks, but trademark is commonly used to refer to both marks
associated with services and goods.
Period of Protection: In India, trademark registration is valid for a period of ten
years. The same may be renewed from time to time for additional periods of ten
years each.
Ministry Administering the IPR:
Department for Promotion of Industry and Internal Trade (earlier Known as
DIPP)
Ministry of Commerce & Industry
Concerned IP Act:
Trade Marks Act 1999 (as amended) & its Rules
SOME WELL KNOWN TRADEMARKS FROM
AGRICULTURE AND DAIRY INDUSTRY
TYPES OF IPR
2. COPYRIGHT

Definition: Copyright is a bundle of rights given by the law to the creators of

literary, dramatic, musical and artistic works and the producers of
cinematograph films and sound recordings. The rights provided under Copyright
law include the rights of reproduction of the work, communication of the work to
the public, adaptation of the work and translation of the work. The scope and
duration of protection provided under copyright law varies with the nature of
the protected work.

Period of Protection: The Indian law extends copyright protection for the work
made by an individual for life time of the author plus sixty (60) years.

Ministry Administering the IPR:

Department for Promotion of Industry and Internal Trade (earlier Known as

DIPP)

Ministry of Commerce & Industry

Concerned IP Act:

The Copyright Act, 1957 (as amended)

 EXAMPLES OF COPYRIGHT
LITERARY WORK
Books Pamphlet Articles

Letters Tables & Compilations Computer Programmes

TYPES OF IPR
3. PATENT
Definition: A Patent is granted for an invention which is “a new product or
process”, that meets conditions of novelty, non-obviousness and industrial use.
Inventive step is the feature(s) of the invention that involves technical advance as
compared to existing knowledge and that makes the invention not obvious to a
person skilled in the art. Industrial use means that the invention is capable of
being made or used in an industry.
Period of Protection: Granted for a term of 20 years.
Ministry Administering the IPR:
Department for Promotion of Industry and Internal Trade (earlier Known as
DIPP)
Ministry of Commerce & Industry
Concerned IP Act:
The Patents Act, 1970 (as amended)
TYPES OF IPR
4. INDUSTRIAL DESIGNS
Definition: Industrial Design protection is a type of intellectual property
right that gives the exclusive right to make, sell, and use articles that
embody the protected design, to selected people only.
Period of Protection: In India, a design registration is valid for a period
of 10 years, renewable for a further period of 5 years.
Ministry Administering the IPR:
Department for Promotion of Industry and Internal Trade (earlier
Known as DIPP)
Ministry of Commerce & Industry
Concerned IP Act:
Designs Act 2000
TYPES OF IPR
5. GEOGRAPHICAL INDICATIONS

Definition: Geographical indications means any indications which define the

goods as originating in the territory of a country or a region or locality in that
territory, provided a given quality reputation or other characteristics of the
product are attributable to its geographical origin.

Period of Protection: In India, a geographical indication may initially be

registered for a period of ten years, and it can be renewed from time to time
for further periods of 10 years

Ministry Administering the IPR:

Department for Promotion of Industry and Internal Trade (earlier Known as DIPP)

Ministry of Commerce & Industry

Concerned IP Act:

The Geographical Indications of Goods (Registration & Protection) Act, 1999

EXAMPLES OF GEOGRAPHICAL INDICATIONS
DARJEELING TEA KANGRA TEA

MYSORE SILK MADHUBANI PAINTING

TYPES OF IPR
6. TRADE SECRETS
Definition: A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of
information which is not generally known or reasonably ascertainable, by which a business can obtain an
economic advantage over competitors and customers. There is no formal government protection granted;
each business must take measures to guard its own trade secrets (e.g., Formula of its soft drinks is a trade
secret for Coca-Cola.)

Protection: Trade Secrets are capable of being considered within the framework of contract, competition
and intellectual property laws simultaneously. They can be protected by way of restrictive covenants, non-
disclosure agreements and other contractual means.

Ministry Administering the IPR:

No Specific Ministry

Concerned IP Act:

No exclusive legislation exists but the matter would be generally covered under the common law and
Contract Act, 1872

Some Famous Trade Secrets

• The Google Search Algorithm. Google developed a search algorithm and continues to refine it

• Kentucky Fried Chicken

• Coca-Cola
TYPES OF IPR
7. PLANT VARIETIES
Definition: Protection granted for Plant Varieties, the rights of farmers and plant breeders
and to encourage the development of new varieties of plants.
Period of Protection: The certificate of registration issued under this section or sub-section
(8) of section 23 shall be valid for nine years in the case of trees and vines and six years in
the case of other crops and may be reviewed and renewed for remaining period on
payment of such fees as may be fixed by the rules made in this behalf subject to the
condition that the total period of validity shall not exceed:-
• in the case of trees and vines, eighteen years from the date of registration of the variety;
• in the case of extant variety, fifteen years from the date of the notification of that variety
by the Central Government under section 5 of the Seeds Act, 1966 (54 of 1966); and
• in other cases, fifteen years from the date of registration of the variety
Ministry Administering the IPR:
Department of Agriculture and Cooperation
Ministry of Agriculture
Concerned IP Act:
The Protection of Plant Varieties and Farmers’ Rights (PPV&FR) Act, 2001
TYPES OF IPR
8. SEMICONDUCTOR INTEGRATED CIRCUIT LAYOUT DESIGN
Definition: The aim of Semiconductor Integrated Circuit Layout-Design Act
2000 is to provide protection of Intellectual Property Right (IPR) in the area
of Semiconductor Integrated Circuit Layout Designs and for matters
connected therewith or incidental thereto.
Period of Protection: The registration of a layout-design shall be 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.
Ministry Administering the IPR:
Department for Promotion of Industry and Internal Trade (earlier Known as
DIPP)
Ministry of Commerce & Industry
Concerned IP Act:
Semiconductor Integrated Circuits Layout-Design Act, 2000
NATIONAL IPR POLICY, 2016
The policy with its slogan “Creative India; Innovative India”
The National IPR Policy is one among the many steps yet to come
in cementing the future of Intellectual Property on a global
scale. It not only calls for creation and innovation from the
masses but also provides ways to safeguards such creations and
commercialize them to the best interest of such creators and
innovators. The policy is a correct blend for attracting foreign
investments from different countries. A speedy process for IP
registrations also works in the favour of foreign companies which
will in turn serve their IP needs in India. This promotes domestic
as well as foreign IP filings in the country. While unveiling the
policy, the government had specifically announced that the
policy is in consonance with TRIPS of the World Trade
Organization.
NATIONAL IPR POLICY, 2016
The NIPR comes with a set of 7 objectives that needs to be undertaken by the identified
nodal ministry or department and work towards attaining such objectives:
• 1st Objective: IPR Awareness: Outreach and Promotion
To create public awareness about the economic, social and cultural benefits of IPRs among
all sections of society.
• 2nd Objective: Generation of IPRs
To stimulate the generation of IPRs
• 3rd Objective: Legal and Legislative Framework
To have strong and effective IPR laws, which balance the interests of rights owners with
larger public interest
• 4th Objective: Administration and Management
To modernize and strengthen service oriented IPR administration
• 5th Objective: Commercialization of IP
Get value for IPRs through commercialization
• 6th Objective: Enforcement and Adjudication
To strengthen the enforcement and adjudicatory mechanisms for combating IPR infringements
• 7th Objective: Human Capital Development
To strengthen and expand human resources, institutions and capacities for teaching, training,
research and skill building in IPRs
IMPORTANT TRADEMARK JUDGEMENTS
A. CYBERSQUATTING - The practice of registering names,
especially well-known company or brand names, as Internet domains, in the
hope of reselling them at a profit.

1. Yahoo!, Inc. v Akash Arora & Anr [1999 (19) PTC 201 (Del)]
The Delhi High Court held that a domain name served the same function as a
trademark and was therefore entitled to equal protection and he name had
acquired uniqueness and distinctiveness and was associated with the plaintiff.

2. Rediff Communication v. Cyberbooth & Anr 2000 PTC 209

The Bombay High Court observed that the value and importance of a domain
name is like a corporate asset of a company.
IMPORTANT TRADEMARK JUDGEMENTS
• B. PASSING OFF - Passing off is a common law tort which can be used
to enforce unregistered trade mark rights. The tort of passing off protects the
goodwill of a trader from misrepresentation.
1. DM entertainment v Baby Gift House and ors
The crux of the case is that the defendants had prolific businesses in selling
miniature toys of Daler Mehndi and majorly cashed on to his popularity. Majorly
aggrieved, the plaintiff company of Daler Mehndi filed for permanent injunction
from infringing the artist’s right of publicity and false endorsement leading to
passing off. The Court passed the judgment in favour of Plaintif.
2.Cadila Health Care v Cadila Pharmaceutical Ltd
[Deceptive similarity in a passing-off action.]
In this case the Supreme Court held that It is immaterial whether the plaintiff and
defendant trade in the same field or in the same or similar products.
Section 29 of the Trademark Act, 1999 lays down the aspects of infringement of
trademark. It elucidates that a when a person is using, in course of trade any mark,
which is identical or deceptively similar to a registered mark and which he is not
entitled or licensed to use shall be deemed to infringe onto the rights of the person
who has the lawful right over the mark.
IMPORTANT TRADEMARK JUDGEMENTS
C. PROTECTION OF FOREIGN BRANDS IN INDIA
1. Milmet Oftho Industries & Ors v. Allergan Inc.
In this landmark case, the Supreme Court extended the protection guaranteed
under trademark law in India to a well-known foreign brand. The court
restrained an Indian company from using the mark OCUFLOX. The court
judgment was given irrespective of the fact that the U.S. company has neither
used the mark in the Indian market, nor the mark was registered in India. The
court held that the respondent in this case was the first to enter the market and
adopt the mark. Also, the fact that the respondent has not used the mark in
India is insignificant, if they were the first to enter the world market.
It was also laid down that in the fields of health care and medicine, all
possibilities of deception and confusion should be prevented; keeping in mind
that public interest is not jeopardized.
IMPORTANT TRADEMARK JUDGEMENTS
D. INFRINGEMENT OF TRADEMARK
1. Coca-Cola Company Vs. Bisleri International Pvt. Ltd [Popularly
known as THE MAAZA WAR]
The Delhi High Court held that if the threat of infringement exists, then this court
would certainly have jurisdiction to entertain the suit. In the present matter, the
defendant, Bisleri by a master agreement, had sold and assigned the trade mark
MAAZA including formulation rights, know-how, intellectual property rights, goodwill
etc for India only with respect to a mango fruit drink known as MAAZA to Coca-
Cola. In 2008, the defendant filed an application for registration of the trade mark
MAAZA in Turkey started exporting fruit drink under the trade mark MAAZA. The
defendant sent a legal notice repudiating the agreement between the plaintiff and
the defendant, leading to the present case. The plaintiff, the Coca Cola Company
also claimed permanent injunction and damages for infringement of trade mark and
passing off.
The court finally granted an interim injunction against the defendant (Bisleri) from
using the trade mark MAAZA in India as well as for export market, which was held
to be infringement of trade mark.
IMPORTANT TRADEMARK JUDGEMENTS
E. PRIOR USE OF TRADEMARK
1. M/s R. J. Components and Shafts vs. M/s Deepak Industries Ltd
In this recent judgement passed by the Delhi High Court, the Court recognized the
legal principle of Prior user of a mark. The Court’s verdict in the case has reiterated
the law that prior user of a trademark will override the subsequent user even if the
subsequent user has registered the trademark.
Delhi High Court in this case recognized the prior user right as the superior right
which also prevails over the registered proprietor of a similar or identical
trademark and injuncted the Plaintiff from using the mark NAW.

2. Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors

the Supreme Court opined that a registered proprietor of a trademark
does not possess the right to prevent use by another party of an identical
mark if that use commenced prior to the use of the registered mark.
Section 34 of the Trademark Act, 1999 which enumerates that a registered
proprietor or registered user of a trademark cannot interfere with the use of any
identical or similar mark if a person has been using a mark from an earlier date.
IMPORTANT TRADEMARK JUDGEMENTS
F. DELAY SIMPLICITER IS NO DEFENCE IN TM INFRINGEMENT SUIT
1. Makemytrip (India) Pvt Ltd v. Orbit Corporate Leisure Travels
In this case, the Delhi High Court delved into the law of acquiescence. In the case the
Plaintiff was aware of the Defendant’s mark and still did not take any action for
long. In view of the settled position of law of acquiescence, the Court did not
restrain the Defendant from using the mark GETMYTRIP which Plaintiff alleged was
deceptively similar to its mark MAKEMYTRIP.

2. National Bell Co. v. Gupta Goods Manufacturing Co. (P) Ltd. & Anr.
The Supreme Court held that if a registered proprietor of a mark ignores
repeated infringements of its mark than it can even be considered as an
abandonment of its mark.
According to Section 33 of the Trade Marks Act, 1999, the other user can take
up the defense of acquiescence against TM infringement provided, he has
adopted and used the TM in good faith.
IMPORTANT COPYRIGHT JUDGEMENTS
A. SECTION 17C - in the case of a work made in the course of the author's
employment under a contract of service or apprenticeship, to which clause (a) or
clause (b) does not apply, the employer shall, in the absence of any agreement to
the contrary, be the first owner of the copyright therein.

1. Neetu Singh v. Rajiv Saumitra

In the case of a Director, it is any subsisting agreement, or the Articles of Association
or the Memorandum of Association of the company. Relying on this principle, the
Court held that in the instant case although the Plaintiff was working as a Director
of the Defendant No. 2 company from 2012 to 2014, it noted that the Defendants
had failed to prove that the literary work was authored as part of her duties and
obligations as a Director and granted an injunction in favour of the Plaintiff.

2. Indian Performing Society V. Eastern Indian Motion Pictures Ltd

IPRS in the instant case had claimed royalty Hon’ble Supreme Court observed that
the cinematograph film producer becomes the first owner of the copyright. IPRS
cannot claim the right over the composition the moment it comes into existence and
authority of producer of the cinematograph film cannot be questioned.
IMPORTANT COPYRIGHT JUDGEMENTS
B. NO COPYRIGHT IN RELATION TO AN IDEA, SUBJECT MATTER,
THEMES, PLOTS, OR HISTORICAL OR LEGENDARY FACTS
1. G. Anand v. Delux Films and Ors.
The Hon’ble Supreme Court in the instant case held that infringement is restricted
only to the form, manner, arrangement and expression of idea by the author of the
copyright work. SC further stated that court should settle on whether the similarities
are substantial o fundamental in nature or not with respect to the mode of
expression adopted in the work. If substantial or fundamental portion has been
copied, then it would amount as infringement.
2. Sanjay Kumar Gupta v. Sony Picture Networks India Pvt. Ltd.
The appellants, in this case, had a concept termed “Jeeto Unlimited”, where home
viewers of a quiz show could participate live in a quiz show and were rewarded for
answering correctly. It was alleged that, on presenting this concept to Sony, they
were compelled to sign a consent letter which allowed Sony to use the concept
without incurring any liability. The case was decided in favour of the KBC makers by
relying on the famous RG Anand v. Delux Films judgment which had held that a
concept is not entitled to copyright protection. In this case Hon’ble Delhi HC cleared
KBC makers of allegations of copyright infringement.
IMPORTANT COPYRIGHT JUDGEMENTS
C. SECTION 2 (o) – LITERARY WORK
1. UNIVERSITY OF OXFORD VS. RAMESHWARI PHOTOCOPY SERVICES
The infamous DU photocopy case was a landmark copyrights violation case in
India. The genesis of this case lies in an prevalent practice in University of Delhi,
wherein photocopy shops copy reading material from prescribed textbooks and
sell it to students at subsidised rates.
To contest the same, the chancellors, masters and scholars of University of
Oxford filed a case against Rameshwari Photocopy Services, alleging them of
copyright infringement under Section 2(o) of the Copyright Act.
The publishers had to withdraw their lawsuits against the defendants, as it was
observed that the shop had a legal license to operate within the North Campus
premises of DU.
Copyright is not a divine right and it is intended to increase the harvest of
knowledge, not impede it. Photocopying with the objective of spreading
knowledge and fostering education doesn’t constitute as copyright infringement.
FAMOUS COPYRIGHT INFRINGEMENTS
1. THE ASSOCIATED PRESS VS. SHEPARD FAIREY
Associated Press had published a photograph of Barack Obama in 2008, and a
street artist named Shepard Fairey took the image and turned it into a colourised
poster. The artist’s design rapidly gained popularity as the ‘hope’ poster, which was
used in Obama’s first presidential election. In January 2009, AP demanded
compensation for the photograph’s use in Fairey’s work.
Outcome: Fairey and Associated Press came to a private settlement in January
2011, part of which included sharing the profits made by the poster.
Lesson: A proper license to use copyrighted work could’ve saved both parties a lot
of time and energy.
2. VANILLA ICE VS. DAVID BOWIE & FREDDIE MERCURY
This case revolved around the song ‘Ice Ice Baby’ by Vanilla Ice. The song sampled,
but did not credit the song ‘Under Pressure’ by David Bowie and Queen. Denying it
at first, Vanilla Ice did admit to using the same melody.
Outcome: The case was settled privately out of court. Vanilla Ice ended up paying
a certain sum of money and crediting Bowie/Queen on the track.
Lesson: No good ever comes from copying other artist’s work.
IMPORTANT PATENT JUDGEMENTS
A. REJECTION OF A PATENT FOR A DRUG WHICH WAS NOT
‘INVENTIVE’ OR HAD AN SUPERIOR ‘EFFICACY’
1. Novartis v. Union of India
Novartis filled an application to patent one of its drugs called ‘Gleevec’ by
covering it under the word invention mentioned in Section 3 of the Patents
Act,1970. The Supreme Court rejected their application after a 7 year
long battle by giving the following reasons: Firstly there was no invention of
a new drug, as a mere discovery of an existing drug would not amount to
invention. Secondly Supreme Court upheld the view that under Indian
Patent Act for grant of pharmaceutical patents apart from proving the
traditional tests of novelty, inventive step and application, there is a new
test of enhanced therapeutic efficacy for claims that cover incremental
changes to existing drugs which also Novartis’s drug did not qualify. This
became a landmark judgment because the court looked beyond the
technicalities and into the fact that the attempt of such companies to
‘evergreen’ their patents and making them inaccessible at nominal rates.
IMPORTANT PATENT JUDGEMENTS
B. INDIA’S FIRST COMPULSORY LICENSE
1. Bayer Corporation vs Union Of India
On March 9, 2012, the Indian Patent Office granted its first Compulsory
License to Natco Pharma Ltd. for producing generic version of Bayer
Corporations’s patented medicine Nexavar (Sorafenib Tosylate), which is used
in the treatment of Liver and Kidney cancer. While the multinational giant was
selling the drug at INR 2.80 lakh for a month’s course, Natco promised to make
available the same at a price of about 3 % (INR 8800) of what was charged
by Bayer.
Bayer further moved to Intellectual Property Appellate Board (IPAB) and also
filed appeal challenging compulsory license granted to Natco by the Controller.
The IPAB dismissed the appeal and confirmed the grant of Compulsory license
stating that it has dealt with each of the issue indetail in view of the
significance of the order of compulsory licence made in India for the first time.
IMPORTANT PATENT JUDGEMENTS
C. THE ACTUAL DATE OF GRANT OF A PATENT
1. Dr. Snehlata C. Gupte v. Union of India & Ors
This case was instrumental in determining when a patent can said to be granted
under the Patent Act 1970 (the Act). This lack of clarity led to a scrutiny of the
relevant provisions the Act and also the existing process with a time gap
between the grant and the issuance of the patent certificate.
At the core of the legal challenge was the existing process, which resulted in a
time gap between the grant of a patent and the issue of the patent certificate.
The court held that the date of the grant of a patent is the date on which the
controller passes an order to that effect on the file i.e. on the day in which the
Controller makes a decision to grant a patent. The issue of a certificate at a
later date is then nothing more than a mere formality.
Therefore, the decision taken by the Controller on the file is the determining
event for ascertaining the date of grant of patent and the acts of sealing of
the patent and entering the same in the Register are ministerial acts evidencing
the grant of patent.
LANDMARK DECISIONS IN PATENT LAW
Bishwanath
Prasad’s Case
(1979)
Mere Workshop
improvements Monsanto Case
Dr. Alloys obvious (1986)
Wobben’s Case Prior public
(2014) knowledge
Challenges to judged through
validity Limited eyes of person in
pursuit of that
knowledge

SUPREME
Novartis Case COURT J. Mira’s Case
(2013) (2008)
Bioavailavility not Unamended
Therapeutic provisions apply
efficacy till amendment
brought in force

Cipla Case Glaxo Smith

(2012) Klien’s Case
Principles of (2008)
natural justice EMR-Rights
apply to patent accrued remain
law after repeal
RECENT AMENDMENT PROPOSED IN INTELLECTUAL
PROPERTY RIGHTS
1. Patent (Amendment) Rules, 2019 – The following are the proposed changes suggested:
a. Suggested amendments to Rule 21(2) and (3) of Patent Rules 2003:
For Rule 21(2): For applications, where the priority document is not in English, the deadline for
filing the verified English translation is three months from the invitation of the Examiner while
the time-line for filing the certified copy of the priority document is 31 months from the
priority date under Rule 20(4) of the Indian Patent Rules, 2003.
For Rule 21(3): There are no extensions provided for filing the above-mentioned documents and
non-compliance of the timelines shall lead to disregard of the priority.
b. Amendments with regard to submission of Annual Working Statements – Rule 131(2):
The rule says that the statement be furnished once every calendar year, beginning from the
year immediately after the calendar year in which the patent was granted, and to be furnished
by March 31st of the next calendar year thereby clearing off all the ambiguity that existed
with regard to timelines in Rule 131(2) of Patent Rules 2003 and Section 146(2) of Patent Act,
1970 respectively.
c. Amendments to Form 27- working of patented invention in India on a commercial scale:
Form 27 now delineates a separate column for submission of information related to process
patents which was missing in the previousform of Form 27.
RECENT AMENDMENT PROPOSED IN INTELLECTUAL
PROPERTY RIGHTS
2. Copyright (Amendment) Rules, 2019
Ministry Of Commerce And Industry - (Department for Promotion of Industry
and Internal Trade) has proposed the following amendment:

a. The amendment in following Rules and Schedules has been proposed:

3, 7, 11, 16, 18, 19, 3, 27, 29, 30, 31, 33, 34, 39, 49, 50, 55, 56, 57, 58, 59,
61, 62, 64, 65, 66, 68, 69, 70, 79, 83 and in First and Second Schedule.
THANK YOU
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