Intellectual Property Rights: Legal

Legal
INTELLECTUAL PROPERTY RIGHTS
Submitted by
AKSHAY MORE :09-741

AJAY NAMBIAR :09-743
AKASH PAL :09-745
RAHUL PRAKASH :09-747
YOFESH RAUT :09-749
ABHIDNYA SALUNKE :09-751
KRISHNA SANAP :09-753
SONAL SAWANT :09-755
MANASWI SHATY :09-757
MAYURI TEDDU :09-759
KETAN VAGRECHA :09-761
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INDEX
TOPIC PAGE NO
Introduction....................................................................................................4
1.Trademark...................................................................................................5
1.1 TRIPS Agreement on Trademark.........................................................6
1.2What Are the Types of Trademarks That Can Be Registered................6
1.3Selecting a trademark.......................................................................6
1.4Trademark registration requirements................................................7
1.5Infringement:...............................................................................8
1.6 Passing Off:..................................................................................8
1.7 Differences between Passing Off and Infringement...........................8
1.8What Are Benefits of Trademark Registration.....................................9
1.9Amendments...................................................................................9
1.10The Trade Marks (Amendment) Bill, 2009.......................................9
1.11Special provisions relating to protection of Trademarks through International

registration under the Madrid protocol 36A...........................................10
1.12Case Studies................................................................................11
2.Geographical Indications..................................................................14
2.1Definition.....................................................................................14
2.2Unregisterable Geographical Indications...........................................14
2.3Infringement of Registered Geographical Indications and Appeals.......15
2.3.1 What is Infringement...................................................................15
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2.3.2 Appeal.....................................................................................15
2.4 Offences and Penalties...................................................................15
2.4.1 What Amounts to an Offence?.....................................................15
2.4.2 Penalty for Offences..................................................................16
2.4.2.1 For applying false geographical indications................................16
2.4.2.2 For selling goods to which false geographical indication is applied....17

2.4.2.3 For falsely representing a geographical indication as registered.........17
2.4.2.4 For improperly describing a place of business as connected with the

Geographical Indications Registry............................................................17
2.4.2.5 For falsification of entries in the register:.......................................17
2.6 Procedure for registration...................................................................17
2.7 TRIPS Agreement on GI...................................................................18
2.7.1 Provisions of TRIPS.......................................................................18
2.8 Protection Benefits on GI...................................................................19
2.9 GI Interest........................................................................................20
2.10 Geographical Indication Registration..................................................20
2.11 Geographical Indication Office..........................................................20
2.12 Geographical Indication Commission..................................................21
2.12.1 Geographical Indication that cannot be enlisted.................................21
2.12.2 Duration of Protection....................................................................21
2.13 Conclusion.......................................................................................22
2.14 Case Studies.....................................................................................22
3. Patent.................................................................................................25
3.1What does a Patent do?..........................................................................25
3.2 Who Can Apply? .................................................................................25
3.3 What kind of Protection does a Patefer....................................................25
3.4 Why are Patents necessary?....................................................................25
3.5 What Role do Patents Play in Everyday Life?.........................................25
3.6 Legislation ..........................................................................................26
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3.7 Membership of International Treaties ....................................................26
3.8 Types of Patents...................................................................................26
3.9 Patentable Inventions .....................................................................27
3.10 What Is Not Patentable ................................................................27
3.12 Appropriate Office for Filing an Application .................................28
3.12 How is a Patent Granted?...............................................................28
3.13Publication & Examination of Patent Applications.............................28
3.14 Register of Patents ........................................................................30
3.15 Rights Of Patentee ........................................................................30
3.16 Infringement .................................................................................30
3.17 India Simplifies Patent Norms..........................................................31
3.18 Proposed Amendments ...................................................................32
3.19Case Studies.....................................................................................39
4.01Bibliography.....................................................................................45
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Intellectual Property Laws in India
Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article,
literary & artistic work, symbols etc. used in commerce. Intellectual property is divided into
two categories: industrial property, which includes inventions (patents), trademarks,
industrial designs, and geographic indications of source: and Copyright, Which includes
literary and artistic works such as novels, poems, plays, films and musical works etc.
According to the TRIPS Agreement, the intellectual property has been classified into-Patents,
Industrial Designs, Trade Marks, Copyright, Geographical Indications, Layout Designs of
Integrated Circuits, and Protection of Undisclosed Information/Trade Secrets. Different IP
Rights vary in the protection they provide.
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Trademarks
A trademark is a word, symbol, or even a sound, used by a person or business to identify their
goods and distinguish them from similar products offered by others. A service mark is
essentially a trademark used to distinguish services instead of goods. Otherwise, trademarks
and service marks are in all respects identical.
Trademarks serve mainly three purposes viz.
i. Encourage the production of quality products;
ii. Reduce the customer’s costs of shopping
iii. Help the customer to make decisions on purchasing products.
Trademarks help promote economic efficiency. If trademarks are not allowed to be

registered with the manufacturers it may eventually take away the incentive of
trademark owning manufacturers to make investments in quality control. There would
thus be no healthy competition among the manufacturers leading to the loss of
vitality of the economy. If we do not have a system of having trademark a
manufacturer would get nothing by improving his product’s quality. And consumers
would not be in a position to identify high or low-quality products. In such a
situation a manufacturer who reduce the price by reducing quality may pocket the
benefit of the market. The consequence would be attempts to produce inferior quality
products rather than competition to produce better- quality products.
Today the uniformity of quality of products in the marketplace is the result of the
use of trademarks rather than the inherent nature of production or the reflection of
altruistic motives of manufacturers or distributors. In a system wherein trademarks are
allowed to be infringed, all may take a free ride on the successful sellers trademark and
reputation, there would be no incentive to distinguish one’s own goods and services.
Trademarks reduce the customer’s cost and agony of acquiring information about products
and service. If a person knows by his experience or experience of others that a product is of
good quality he would go for that brand without much search. With reference to the
question of new trademarks if the customers are willing to pay for the new brand to
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establish itself through advertising then the rational potential entrant will have incentive
to enter the market and enjoy success. It is for the customers to do the needful.
1.1TRIPS Agreement on Trademark
Part II, Section 2, in Articles 15-21
Article 15.1 Trademark is defined as:
Any sign, or any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of constituting a trademark.
Such signs, in particular words including personal names, letters, numerals, figurative
elements and combinations of colours as well as any combination of such signs, shall be
eligible for registration as trademarks. Where signs are not inherently capable of
distinguishing the relevant goods or services, Members may make registrability depend on
distinctiveness acquired through use. Members may require, as a condition of registration,
that signs be visually perceptible.
1.2What Are the Types of Trademarks That Can Be Registered
Under the Indian trademark law the following are the types of trademarks that can be
registered:
 Product trademarks: are those that are affixed to identify goods.

 Service trademarks: are used to identify the services of an entity, such as the
trademark for a broadcasting service, retails outlet, etc. They are used in advertising
for services.
 Certification trademarks: are those that are capable of distinguishing the goods or
services in connection with which it is used in the course of trade and which are
certified by the proprietor with regard to their origin, material, the method of
manufacture, the quality or other specific features
 Collective trademarks: are registered in the name of groups, associations or other

organizations for the use of members of the group in their commercial activities to
indicate their membership of the group.
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1.3Selecting a trademark
The selection of a trademark can be very important in terms of your ability to obtain
registration and prevent others from using the mark. In selecting your mark, remember that
the best trademarks are words or symbols that are arbitrary or fanciful. Marks that have no
meaning in the English language, like KODAK® or EXXON®, are particularly good
trademarks because their uniqueness makes them instantly identifiable with a particular
manufacturer or service provider. If a mark is arbitrary like the above examples, the exclusive
right to use it is easily asserted against potential infringers.
Descriptive trademarks, like “car phone,” that simply describe what you are selling are
usually poor choices because they are generally available for everyone to use. The same
applies to geographically descriptive trademarks.
Some questions to ask yourself when selecting a trademark are:
 What are the associated implications of the name? Any negative connotations may not
attract consumers to your product.
 Does the name fit the product? If the name is misleading, consumers may not realize
what your product really does.
 Is the name to difficult to pronounce or remember? Either one may keep consumers
from buying your product.
 Is the name too similar to another product? If the mark is similar to another product,
consumers may confuse the two products. You could also be sued for trademark
infringement.
1.4Trademark registration requirements

In order to be granted state trademark protection, you must currently use the mark in
connection with goods or services within the state.
In order to be granted federal trademark protection, you must do one of the following:
 You must use the mark on goods that are shipped or sold, or services that are
rendered, in interstate or international commerce.
 You must apply for trademark reservation based on a bona fide intention to use the
mark in commerce within 6 months.
The trademark will not be federally registered until the mark is actually used in commerce.
There is no time limit on filing a trademark application. However, it is in your best interest to
register the trademark before someone else does. A separate application is required for each
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trademark. If you choose to make use of the Internet, the domain name, also known as URL,
of your website may be registered as a trademark. The PTO follows the same policy of
registering domain names as with other registrable trademarks or service marks. A domain
name consists of a unique address designating an Internet site; therefore, it may or may not
function as a trademark or service mark.
1.5Infringement:
Section 29 of the Trademark Act-1999 talks about various aspects related to infringement as
given in S.29(1) that a registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses in the course of trade, a
mark which is identical with, or deceptively similar to, the trade mark in relation to goods or
services in respect of which the trade mark is registered and in such manner as to render the
use of the mark likely to be taken as being used as a trade mark.
Other subsections describes that in course of the use of the trademark it is said to be
infringing the rights of other company due to use of similar or identical trademark using for
marketing of similar kind of goods and services or use of identical or deceptively similar
trademark for any other kind of goods and services. It is further given in the Sub Section (9)
of this section that the infringement can also be done by the spoken use of those words as
well as by their visual representation.
1.6 Passing Off:
The specific description of passing off is not given in the trademark act but the courts have
drawn its meaning from common law that if the infringement of trademark done in such a
manner where the mark is not only deceptively similar to the trademark of other company but
also creating confusion for the customers, which ultimately results in damage for business of
the company.
1.7 Differences between Passing Off and Infringement
They are slightly different to each other:
Statutory remedy is available for infringement whereas the action for passing off is a
common law remedy. For infringement it is necessary only to establish that the infringing
mark is identical or deceptively similar to the registered mark but in the case of a passing off
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action, the need is to prove that the marks are identical or deceptively similar which is likely
to deceive or cause confusion and damage to the business of the company.
When a trademark is registered, registration is given only with regard to a particular

category of goods and hence protection can be given only to these goods and action of
infringement would be taken but in a passing off action, the defendant’s goods need not be
the same, they may be related or even different.
1.8What Are Benefits of Trademark Registration
The registration of a trade mark confers upon the owner the exclusive right to the use of the
registered trade mark and indicate so by using the symbol (R) in relation to the goods or
services in respect of which the mark is registered and seek the relief of infringement in
appropriate courts in the country. The exclusive right is however subject to any conditions
entered on the register such as limitation of area of use etc. Also, where two or more persons
have registered identical or nearly similar mark due to special circumstances such exclusive
right does not operate against each other.
1.9Amendments
The Trademarks Amendment Bill, 2009 has been passed by The Lok Sabha on 18th of
December, 2009. The bill seeks to amend The Trademarks Act,1999 by introducing
provisions such as Introduction of International Registrations through International Bureau
of World Intellectual Property Organization (WIPO), extending time for opposing the mark
to four months and inserting provisions as to the assignment of the Trade Mark.
1.10The Trade Marks (Amendment) Bill, 2009
A BILL to amend the Trade Marks Act, 1999.
1. This Act may be called the Trade Marks (Amendment) Act, 2009.
2. In section 11 of the Trade Marks Act, 1999 (hereinafter referred to as the principal
Act), in the Explanation, for clause (a), the following clause shall be substituted,
namely:—
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“(a) a registered trade mark or an application under section 18 bearing an earlier date
of filing or an international registration referred to in section 36E or convention
application referred to in section 154 which has a date of application earlier than that
of the trade mark in question, taking account, where appropriate, of the priorities
claimed in respect of the trademarks.”.
3. In section 21 of the principal Act, for sub-section (1), the following sub-section shall
be substituted, namely:—
“(1) Any person may, within four months from the date of the advertisement or re-
advertisement of an application for registration, give notice in writing in the
prescribed manner and on payment of such fee as may be prescribed, to the
Registrar, of opposition to the registration.”.
4. In section 23 of the principal Act, in sub-section (1), after the words “register the
said trade mark”, the words “within eighteen months of the filing of the application”
shall be inserted.
1.11Special provisions relating to protection of Trademarks through International

registration under the Madrid protocol 36A.
The provisions of this Chapter shall apply to international applications and international
registrations under the Madrid Protocol.36B. In this Chapter, unless the context otherwise
requires,—
1. “application”, in relation to a Contracting State or a Contracting Organisation, means

an application made by a person who is a citizen of, or is domiciled in, or has a real
and effective industrial or commercial establishment in, that Contracting State or a
State which is a member of that Contracting Organisation, as the case may be.
2. Explanation.—For the purposes of this clause, “real and effective industrial or
commercial establishment” means and includes any establishment where some bona
fide industrial or commercial activity takes place and need not necessarily be the
principal place of business;
3. “basic application” means an application for the registration of a trademark filed
under section 18 and which is used as a basis for applying for an international
registration;
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4. “basic registration” means the registration of a trade mark under section 23 and
which is used as a basis for applying for an international registration;
5. “Common Regulations” means the Regulations concerning the implementation of the
Madrid Protocol;
6. “Contracting Organisation” means a Contracting Party that is an intergovernmental
organisation;
7. “Contracting Party” means a Contracting State or Contracting Organisation party to
the Madrid Protocol;
8. “Contracting State” means a country party to the Madrid Protocol;
9. “international application” means an application for international registration or for
extension of the protection resulting from an international registration to any
Contracting Party made under the Madrid Protocol;
1.12Case Studies
1Coke Wins in Landmark Indian Trademark Case
This case is about the trademark dispute between Bisleri international and Coca-Cola for the
sale of their mango-flavoured soft drink under the trade name Maaza in India.
The Delhi High Court has asked the Indian conglomerate Bisleri International to halt the sale
of their mango-flavoured soft drink under the trade name Maaza in India, giving Coca-Cola a
victory in a trademark case. The issue has been fought for more than a year now with the
Delhi High Court allowing the interim injunction in the matter, passed in 2008, to become
absolute in favour of Coca-Cola. As reported in the Hindu Business Line, Bisleri
International accused Coca-Cola of infringing intellectual property right (IPR) agreements
dating back to 1993 and 1994.
The company challenged Coca-Cola’s move to register the Maaza trademark outside India
and sent a legal notice to the company, its affiliates and franchisees to stop the production of
Maaza. Bisleri’s contention was that Maaza was sold to Coca-Cola for distribution and sale
only within India and that the licensee (Bisleri) was the registered proprietor of the trademark
outside the country. The Coca-Cola Company however, claimed to be the absolute owner of
the formulations and knowhow in India through a transfer of knowhow agreement with Aqua
Minerals and a confidentiality agreement with Golden Agro, a sister concern of Bisleri which
was engaged in manufacturing the drink. Last year, the Delhi High Court rules in favour of
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Coca-Cola but restrained the company and its associates from using the trademark Maaza or
any other deceptively similar trademark in relation to non-alcoholic beverages, syrups and
other preparations till a final hearing.
“The court was pleased to dismiss Bisleri’s application for vacation of the ex-parte interim
injunction against use of the Maaza trademark in India including the use for purposes of
export from India as well as their application for rejection of the suit on the grounds that the
Delhi High Court lacked the requisite jurisdiction,” Anuradha Salhotra, a partner at Lall
Lahiri & Salhotra, who represented Coca-Cola, told Business Line.
The case has been keenly followed by the international business and legal community to
assess the impartiality of Indian courts in IPR matters.
2 .McCurry Restaurant (KL) Sdn Bhd v. McDonald’s Corporation [2009] 3 MLJ 774,
Malaysia Court of Appeal
Summary:
The Court of Appeal of Malaysia has overturned the Malaysian High Court’s decision to
allow McDonald’s the exclusive use of the prefix “Mc” by permitting a local Indian eatery,
McCurry Restaurant to use “Mc” in its business signage or in the conduct of its business.
The Appellate Court judges found no evidence to suggest the appellant, McCurry Restaurant,
had passed-off its business as that of McDonald’s.
The Court of Appeal relied on the following distinguishing features between McCurry
Restaurant and McDonald’s to influence the outcome of the appeal:
1. Looking at the McDonald’s getup or logo as a whole, it was clear that it consists of a
distinctive yellow M shape (“golden arches”) with the word McDonalds on a red
background and thus, can be contrasted against “Restoran McCurry” signage in white
and grey lettering against a red background coupled with a picture of a chicken giving
the thumbs up and the phrase “Malaysian Chicken Curry”.
2. McCurry Restaurant does not label its food items on the menu with the prefix “Mc” as
does McDonald’s.
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3. The respective customers are from different segments of the population: McCurry
Restaurant is frequented by adults and senior citizens while McDonald’s is patronized
mainly by children.
4. McCurry Restaurant caters only typical Indian food whereas McDonald’s serves
Western fast food.
5. The Court of Appeal held that the High Court had overlooked these material facts
when ruling in favour of McDonald’s. Thus, no inference could be drawn that
McCurry Restaurant’s signage would result in persons associating McCurry with the
trademark, McDonald’s.
Comments:
The trial judge’s decision to acknowledge dilution of the trademark “McDonald’s” was
overturned by the tide of a totality in the comparison of the get-up, the types of food, and the
target market of the two businesses to rule out possible confusion. Nevertheless, the appellate
court’s remark that the trial judge had erred in assuming that the respondent had a monopoly
in the prefix ‘Mc’ hints of a different outcome had the mark been sufficiently distinctive. In
this case, it was noted that ‘Mc’ has been associated with several sources worldwide.
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1. GEOGRAPHICAL INDICATIONS
2.1 Definition
a) Geographical indication includes any name, geographical or figurative representation

or any combination of them conveying or suggesting the geographical origin of goods
to which it applies.
b) Geographical indication is related to goods which may be agricultural, natural or
manufactured or any goods of handicraft or of industry and includes foodstuff
originating or manufactured in the territory of a country or region or locality in that
country.
c) Geographical indication essentially identifies the goods in terms of certain given or
inherent quality, reputation or other characteristic which is essentially attributable to
their geographical origin.
2.2 Unregisterable Geographical Indications
The following are not registerable as geographical indications:
(a) The use of which would be likely to deceive or cause confusion;
(b) The use of which would be contrary to any law for the time being in force;
(c) Which comprise or contain scandalous or obscene matter;
(d) Which comprise or contain any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India;
(e) Which would otherwise be disentitled to protection in a court;
(f) Which are determined to be generic names or indications of goods and are therefore, not
or ceased to be protected in their country of origin, or which have fallen into disuse in that
country;
(g) which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons that the goods originate in another territory,
region or locality, as the case may be
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2.3 Infringement of Registered Geographical Indications and Appeals
2.3.1 What is Infringement?

A registered geographical indication is infringed by a person who, not being an authorised
user thereof uses such geographical indication by any means in the designations or
presentation of goods that indicates or suggests that such goods originate in a geographical
area other than the true place of origin of such goods in a manner which misleads the persons
as to the geographical origin of such goods. Hence the infringement of registered G.I. occurs
if a person:
 Uses the G.I. on the goods or suggests that such goods originate in a geographical area
other than the true place of origin of such goods in a manner which misleads the public;
or
 Uses the G.I. in a manner that constitutes an act of unfair competition; or
 Uses another G.I. to the goods in a manner, which falsely represents to the public that the
goods originate in the territory, region or locality in respect of which such registered G.I.
relates.
2.3.2 Appeal
Appeals against an order or decision of the Registrar or the rules framed under the Act lie to
the Appellate Board, established under the Trade Mark Act, 1999. The aggrieved person may
prefer an appeal to the Appellate Board normally within three months from the date on which
the order or decision is communicated. After this period, no appeal is admitted.
2.4 Offences and Penalties
2.4.1 What Amounts to an Offence?

A person will be considered to have committed offence under the G.I. Act in the following
circumstances:
i. Falsely applying geographical indication;
ii. Falsifying a geographical indication.
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A G.I. is considered to be applied to goods when it is woven in, or impressed on, or otherwise
worked into or annexed or affixed to the goods or to any package or other thing. A person
shall be held to falsify a geographical indication if he,
i. makes that geographical indication or a deceptively similar geographical indication
without the assent of the authorised user; or
ii. falsifies any genuine geographical indication by alteration, addition, effacement, etc.
Further, a person shall be held to falsely apply a geographical indication to goods if without
the assent of the authorised user, he
i. applies such geographical indication or a deceptively similar geographical indication
to any goods or any package containing goods; or
ii. uses any package bearing a geographical indication which is identical with or
deceptively similar to the geographical indication of such authorised user for the
purpose of packing, filling or wrapping therein any goods other than the genuine
goods of the authorised user of the geographical indication.
In a prosecution for falsifying or falsely applying a geographical indication to goods, the

burden of proving the assent of the proprietor lies with the accused.
2.4.2 Penalty for Offences

The punishments for the offences committed by the accused are as under:
2.4.2.1 For applying false geographical indications:

A person who does any of the following things will be punishable with imprisonment for a
term between six months and three years and a fine between fifty thousand rupees and two
lakh rupees:
 falsifies any geographical indication; or
 falsely applies to goods any geographical indication; or
 makes, disposes of, or has in possession, any die, block, machine, plate or other
instrument for the purpose of falsifying a geographical indication, or
 applies to any goods a false indication of country, place, manufacturers name or
address; or
 tampers with an indication of origin applied to any goods.
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2.4.2.2 For selling goods to which false geographical indication is applied:

A person who sells or lets for hire, or has in possession for sale, goods or things to which any
false geographical indication is applied is punishable with imprisonment for a term, which
shall not be less than six months but may extend to three years and with fine ranging from
fifty thousand to two lakh rupees. The court may reduce the term of imprisonment or the
amount of fine below the minimum as prescribed if adequate special reasons exist.
2.4.2.3 For falsely representing a geographical indication as registered:

A person shall be punishable with imprisonment for a term, which may extend to three years,
or with fine, or with both for making any representation falsely representing a geographical
indication as registered geographical indication.
2.4.2.4 For improperly describing a place of business as connected with the

Geographical Indications Registry:
If any person uses on his place of business, or on any document issued by him, or otherwise,
words which would reasonably lead to the false belief that his place of business is, or is
officially connected with, the Geographical Indications Registry, he shall be punishable with
imprisonment for a term which may extend to two years, or with fine, or with both.
2.4.2.5 For falsification of entries in the register:

A person who makes or causes to be made a false entry in the Register of the Geographical
Indications shall be punishable with imprisonment for a term, which may extend to two years,
or with fine, or with both.
2.6 Procedure for registration
 Application
 Examination
 Acceptance and publication
 Opposition, if any
 Registration
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2.7 TRIPS Agreement on GI
 Part II, Section 3, in Articles 22-24

 Article 22.1., GI is defined as:
For the purpose of this Agreement, indications which identify a goods as originating in the
territory of a Member (of the WTO), or a region or locality in that territory, where a given
quality, reputation or other characteristics of the goods is essentially attributable to its
geographical origin
 TRIPS Agreement also provides additional protection for GI that identifies wines and
spirits.
2.7.1 Provisions of TRIPS
In 1994, when negotiations on the WTO Agreement on Trade-Related Aspects of Intellectual

Property Rights ("TRIPS") were concluded, basic obligations on WTO member governments
relating to GIs in the TRIPS agreement:
Article 22 of the TRIPS Agreement says that all governments must provide legal
opportunities in their own laws for the owner of a GI registered in that country to prevent the
use of marks that mislead the public as to the geographical origin of the good. This includes
prevention of use of a geographical name which although literally true "falsely represents"
that the product comes from somewhere else.
Article 23 of the TRIPS Agreement says that all governments must provide the owners of GI
the right, under their laws, to prevent the use of a geographical indication identifying wines
not originating in the place indicated by the geographical indication. This applies even where
the public is not being misled, where there is no unfair competition and where the true origin
of the good is indicated or the geographical indication is accompanied by expressions such as
"kind", "type", "style", "imitation" or the like. Similar protection must be given to
geographical indications identifying spirits.
Article 22 of TRIPS also says that governments may refuse to register a trademark or may
invalidate an existing trademark (if their legislation permits or at the request of another
government) if it misleads the public as to the true origin of a good. Article 23 says
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governments may refuse to register or may invalidate a trademark that conflicts with a wine
or spirits GI whether the trademark misleads or not.
Article 24 of TRIPS provides a number of exceptions to the protection of geographical

indications that are particularly relevant for geographical indications for wines and spirits
(Article 23). For example, Members are not obliged to bring a geographical indication under
protection where it has become a generic term for describing the product in question.
Measures to implement these provisions should not prejudice prior trademark rights that have
been acquired in good faith; and, under certain circumstances — including long-established
use — continued use of a geographical indication for wines or spirits may be allowed on a
scale and nature as before.
In the Doha Development Round of WTO negotiations, launched in December 2001, WTO
member governments are negotiating on the creation of a 'multilateral register' of
geographical indications.
Some governments participating in the negotiations (especially the European Communities)

wish to go further and negotiate the inclusion of GIs on products other than wines and spirits
under Article 23 of TRIPS. These governments argue that extending Article 23 will increase
the protection of these marks in international trade. This is a controversial proposal, however,
that is opposed by other governments including the United States who question the need to
extend the stronger protection of Article 23 to other products. They are concerned that Article
23 protection is greater than required, in most cases, to deliver the consumer benefit that is
the fundamental objective of GIs laws.
2.8 Protection Benefits on GI
Giving the Protection of Law on GI products
 GI can be used as Product Marketing Strategy in both domestic and foreign trade
 Adding More Value for the potential GI product and improve the ability of economics
region
 Improving the Reputation of GI product in the global trade world
 Equal Treatment on GI and promotion of GI abroad
 GI as an Action For Unfair Competition, or Misrepresentation In Trade, or Misleading
And Deceptive Conduct
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2.9 GI Interest
 Social
 Know-how of farmers recognize
 Rural employment created / stabilized
 Local commodity chain strengthened
 Environmental
 GI linked to sustainable approach of territory
 Project technical support focus on quality management, farmers organization
(harvesting, drying, varieties, …), promotion of name on the market
 Economical
 increased added value for farmers and processors
 guaranteed quality for consumers
 market opportunities (GI=10% in EU)
2.10 Geographical Indication Registration
 The application for registration of a Geographical Indication must be filed with the
Geographical Indications Office of the Intellectual Property Department, Ministry of
Commerce.
 Natural or legal persons authorized to apply for a registration of a Geographical
Indication are the following:
 Group of producers, organizations representing producers or operators that may have
an interest in the Geographical Indication
 The representatives of local public administrations located in the geographical area of
the good that could benefit from the Geographical Indication.
2.11 Geographical Indication Office
The Geographical Indications Office is mainly responsible for:
 receiving and examining applications forms

 receiving oppositions and counterstatements
 registering Geographical Indications
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 mediating Geographical Indications disputes

 managing the Geographical Indications Register
 publishing the Geographical Indications Official Gazette.
2.12 Geographical Indication Commission
Is a special body having function and duties to perform substantive examinations concerning
the proposal for the book of requirement and to give consideration and recommendation to
the Geographical Indication Office.
Members of Geographical Indications Commission:
 representatives of the Ministry of Commerce, in charge of Intellectual Property Rights

 representatives of the Ministry of Agriculture, Forestry and Fishery
 representatives of the Ministry of Industry, Mines and Energy
 representatives of authorities in charge of inspecting the quality of goods
(CAMCONTROL) representatives of Chambers of Commerce
 When a Geographical Indication is registered by the Geographical Indications
Office of the Intellectual Property Department, Ministry of Commerce, in
accordance with the provisions thereof, producers who comply with the book of
requirements are entitled to a right of use of this Geographical Indication.
2.12.1 Geographical Indication that cannot be enlisted
 An indication that has become generic and therefore is not protected in its country of
origin.
 An “indication that has become generic” means that the indication of a good is
identical to the usual name used in everyday language as a common noun designating
a type of good covered by Article 2.
 An indication likely to conflict with the name of a plant variety or animal breed
2.12.2 Duration of Protection
 Where registered, a Geographical Indication cannot become generic or fall into the
public domain.
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2.13 Conclusion
 GI is a valuable promoting tool in the global economy

 GI improves the reputation for local products on international trade
 GI is a part of the national patrimony of each country that should be protected
2.14. Case Studies
1.Tirupati Laddu
The famous prasadam (holy food) offered to lakhs of devotee at Lord Venkateswara temple
in Andhra Pradesh has been awarded the status of Geographical Indications (GI) by the
Chennai registry office. Now "Tirupati laddu" which is also known as "Srivari laddu" stands
on the same legal pedestal as that of Darjeeling tea, Madhubani paintings, Goa feni,
Champagne, etc. The GI certificate for "Tirupati Laddu" has been granted to the Tirumala-
Tirupati Devasthanam trust which is primarily engaged in the administration and
management of Venkateswara temple. Under this certificate the right to market the product is
tied to that particular territory and manufactured good must be prepared, processed or
Manufactured in that territory. But at the same time categorizing Tirupati as IP commodity
has led to whole range of debate among the masses regarding commercialization of divine
affairs". Moreover a scientist from National Institute for Interdisciplinary Science and
Technology, Kerala has also moved a letter to the Chief Justice of India opposing the grant of
"GI status to Tirupati laddu". Scientist has further said that he was concerned at the potential
devastation to the country "that is likely to happen if private appropriation of religious
symbols is allowed. The main problem concerning the "Tirupati laddu" was in relation to its
classification as equivalent to manufactured goods or commercially significant commodities.
He argued Tirupati Laddu does not deserve a "goods" status, as it is not sold in the market.
Hence it is not appropriate to register 'Tirupati laddu' as a "goods" under Geographical
Indication of Goods (Registration and Protection) Act, 1999.
2. Tequila of Mexico
According to Anda (1995) the most accepted definition for tequila is: “A typical Mexican
alcoholic beverage obtained through fermentation, distillation and rectification of must by
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sugar extraction of the hearts of blue agave (Agave tequilana Weber) which is allowed to mix
up with a maximum of 49% with other kinds of sugar.” (Macias Macias, 2001).
Uniqueness of Mexican Tequila

Under the Norma Official Mexicana NOM 006 SCFI of 1993 two different types of tequila
can be distinguished. The Tequila mixto 49-51 with a proportion of 51% blue agave sugar
and 49% of other sugar and the tequila 100%. They are distinguishable by their etiquette that
indicates the latter one with “tequila” and the former one with “tequila 100%” (Macias
Macias, 2001). However, the agave sugar share of Tequila mixto is the current end of
distillery companies’ impact on national law. Due to their pressure driven by agave shortage
and increasing demand the proportion of agave sugar was reduced from formerly 100 to 70%
in 1964 and to 49% in 1970 (van der Meulen et al., 2007). In 2000, a proposal by tequila
companies to reduce agave sugar content to 30% was not accepted by the government in
order to protect the reputation of the product and avoid conflicts with farmers (van der
Meulen et al., 2007).
Tequila is classified in four types:

 White Tequila,
 Young or Gold Tequila,
 Rested Tequila and
 Aged Tequila (Linck, 2007).
An important point of Tequila as denominacion de origin is, that the raw material does not
need to originate from the designated geographical area. The uniqueness of the GI product
consists only of the distillation process (Linck, 2007). However, the area of protection of
tequila by the national law is the entire restrict Jalisco, 29 communities of Michoacan, 6
communities of Guanajuato and 7 of Nayarit and 10 of the restrict Tamaulipas.
GIs in national law

The tequila sector in Mexico is one of the oldest GI systems outside of Europe, and has been
protected as a national “denominacion de origin” since 1974 where it was published in the
Federal Registrar. In 1993 the Consejo Regulador del Tequila, A.C. (CRT) was created,
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which is (with the help of the laboratorio de la Càmara Regional de la Industria Tequilera) the
governmental certification authority for tequila (van der Meulen et al., 2007).
In 2006 the norm of production of Tequila was modified and a new category of tequila was
added: extra-anejo, which has matured for a minimum of three years. The new norm also
allowed for the production of flavored tequilas. The Mexican GIs are owned by the Mexican
state and are included in the jurisdiction of the Mexican Institute of Industrial Property
(IMPI) which was primarily established to protect and regulate patents and trademarks. Even
if a norm for production of GI products is established by the Mexican government12 no
formal structure or system of checks exists. The norm is agreed upon by different parties,
including the government, tequila companies, CRT, IMPI and the Distilled Spirits Council of
the United States. The requirements relate to production, bottling, labelling and selling of
tequila, as well as specifications and procedures for the authorized firms and organizations
(van der Meulen et al., 2007).
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3. Patent
A patent is an exclusive right granted for an invention, which is a product or a process that
provides, in general, a new way of doing something, or offers a new technical solution to a
problem. In order to be patentable, the invention must fulfill certain conditions.
3.1What does a Patent do?
A patent provides protection for the invention to the owner of the patent. The protection is
granted for a limited period, generally 20 years.
3.2 Who Can Apply?
Application may be made, either alone or jointly with another, by the inventor, assignee, legal
representative of deceased inventor or assignee. The inventor is entitled to be mentioned in
the patent if he applies to do so. Application may be made jointly by two or more
corporations as assignees.
3.3 What kind of Protection does a Patent offer?
Patent protection means that the invention cannot be commercially made, used, distributed or
sold without the patent owner's consent. These patent rights are usually enforced in a court,
which, in most systems, holds the authority to stop patent infringement. Conversely, a court
can also declare a patent invalid upon a successful challenge by a third party.
3.4 Why are Patents necessary?
Patents provide incentives to individuals by offering them recognition for their creativity and
material reward for their marketable inventions. These incentives encourage innovation,
which assures that the quality of human life is continuously enhanced.
3.5 What Role do Patents Play in Everyday Life?
Patented inventions have, in fact, pervaded every aspect of human life, from electric lighting
(patents held by Edison and Swan) and plastic (patents held by Baekeland), to ballpoint pens
(patents held by Biro) and microprocessors (patents held by Intel, for example).
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All patent owners are obliged, in return for patent protection, to publicly disclose information
on their invention in order to enrich the total body of technical knowledge in the world. Such
an ever-increasing body of public knowledge promotes further creativity and innovation in
others. In this way, patents provide not only protection for the owner but valuable
information and inspiration for future generations of researchers and inventors.
3.6 Legislation
The Patent system in India is governed by the Patents Act, 1970 (No 39 of 1970) & The
Patents Rules 1972, effective from April 20,1972. Subsequently The Patents Act, 1970 is
amended effective from January 1, 1995 & The Patents Rules, 1972 is amended effective
from June 2, 1999.
3.7 Membership of International Treaties
India is member of the following treaties governing patents:
 Convention establishing World Intellectual Property Organization (WIPO)

 Trips Agreement under the World Trade Organization.
 Paris Convention for the protection of Industrial Property with effect from Dec. 7,
1998.
 Patent Cooperation Treaty (PCT) with effective from Dec. 7, 1998.
3.8 Types of Patents
a) Ordinary Application
b) Application for Patent of Addition (granted for Improvement or Modification of the

already patented invention, for an unexpired term of the main patent).
c) Divisional Application (in case of plurality of inventions disclosed in the main

application).
d) Convention application , claiming priority date on the basis of filing in Convention

Countries.
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e) National Phase Application under PCT.
3.9 Patentable Inventions
An invention means any new and useful art, process, method or manner of manufacture;
machine, apparatus or other article; or substance produced by manufacture, and includes any
new and useful improvement of any of them, and an alleged invention.
3.10 What Is Not Patentable
(1) An invention that is frivolous or that claims anything obviously contrary to well-
established natural laws;
(2) An invention the primary or intended use of which would be contrary to law or morality
or injurious to public health;
(3) The mere discovery of a scientific principle or the formulation of an abstract theory;
(4) The mere discovery of any new property or new use for a known substance or of the mere
use of a known process, machine or apparatus unless such known process results in a new
product or employs at least one new reactant;
(5) A substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance;
(6) The mere arrangement or rearrangement or duplication of known devices, each

functioning independently of one another in a known way;
(7) A method or process of testing applicable during the process of manufacture for rendering
the machine, apparatus or other equipment more efficient, or for the improvement or
restoration of the existing machine, apparatus or other equipment, or for the improvement or
control of manufacture;
(8) A method of agriculture or horticulture;
(9) Inventions relating to atomic energy.
In the case of inventions relating to substances prepared or produced by chemical processes

(including alloys, optical glass, semiconductors and inter-metallic compounds) & substances
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intended for use or capable of being used as food. No patent will be granted in respect of
claims for the substances themselves, but claims for the methods or processes of manufacture
will be patented.
3.11 Appropriate Office for Filing an Application
Application is required to be filed according to the territorial limits where the applicant or the
first mentioned applicant in case of joint applicants for a patent normally resides or has
domicile or has a place of business or the place from where the invention actually
originated .If the applicant for the patent or party in a proceeding having no business, place or
domicile in India., the appropriate office will be according to the address of service in India
given by the applicant or party in a proceeding.
3.12 How is a Patent Granted?
The first step in securing a patent is the filing of a patent application. The patent application
generally contains the title of the invention, as well as an indication of its technical field; it
must include the background and a description of the invention, in clear language and enough
detail that an individual with an average understanding of the field could use or reproduce the
invention. Such descriptions are usually accompanied by visual materials such as drawings,
plans, or diagrams to better describe the invention. The application also contains various
"claims", that is, information which determines the extent of protection granted by the patent.
3.13 Publication & Examination of Patent Applications
3.13.1 Publication:
All the applications for patent, except the applications prejudicial to the defence of India or
abandoned due to non-filing of complete specification within12 months after filing the
provisional or withdrawn within 15 months of filing the application, are published in the
Patent Office Journal just after 18 months from the date of filing of the application or the date
of priority whichever is earlier. The publication includes the particulars of the date of the
application, application number, name and address of the applicant along with the abstract.
The applications for patent are not open for public inspection before publication. After the
date of publication of the application, as stated above, the complete specification along with
provisional and drawing, if any, abstract, application on any form or on plain paper and any
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correspondence between the office and applicant may be inspected at the appropriate office
by making a written request to the Controller in the prescribed manner and on the payment of
prescribed fee.. Early Request for Publication:
The applicant may also file a request for early publication in Form-9 with a prescribed fee of
Rs 2500/- or Rs 10,000/- for natural person and other than natural person respectively. The
above application is published ordinarily within one month from the date of the request on
Form-9. The applicant shall have provisional Rights from the date of publication.
3.13.2 Request for examination
No application for patent will be examined if no request is made by the applicant or by any
other interested person in Form-18 with prescribed fee of Rs.2,500/- or Rs.10,000/- for
natural person and other than natural person respectively, within a period of 48 months from
the date of priority of the application or from the date of filing of the application ,whichever
is earlier. Where no request for examination of the application for patent has been filed within
the prescribed period, the aforesaid application will be treated as withdrawn and, thereafter,
application cannot be revived.
3.13.3 Examination
Application for patent, where request has been made by the applicant or by any other
interested person, will be taken up for examination, according to the serial number of the
requests received on Form 18. A First Examination Report (FER) stating the
objections/requirements is communicated to the applicant or his agent according to the
address for service ordinarily within six (06) months from the date of request for examination
or date of publication whichever is later. Application or complete specification should be
amended in order to meet the objections/requirements within a period of 12 months from the
date of First Examination Report (FER). No further extension of time is available in this
regard. If all the objections are not complied with within the period of 12 months, the
application shall be deemed to have been abandoned. When all the requirements are met the
patent is granted, after 6 months from the date of publication, the letter patent is issued,entry
is made in the register of patents and it is notified in the Patent Office, Journal .
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3.13.4 Opposition
Notice of opposition must be filed within four months of notification in the Gazette.
Extension of one month is available, but must be applied for before expiry of initial four
month period.
3.13.5 Grant or Sealing of Patent
If the application is not opposed or the opposition is decided in favour of the applicant or is
not refused the patent is granted or sealed on payment of sealing fee within 6 months from
the date of advertisement. However, it is extendable by three months.
3.14 Register of Patents
The Register of Patents will be kept in the Patent Office and its branch offices. Register of
Patents can be inspected or extract from it can be obtained on payment of prescribed fee.
Register of Patents contains full details of the Patent which include Patent number, the names
and addresses of the patentee; notification of assignment etc.; renewals, particulars in respect
of proprietorship of patent etc.
3.15 Rights Of Patentee
A patent grant gives the patentee the exclusive right to make or use the patented article or use
the patented process. He can prevent all others from making or using the patented process. A
patentee has also the right to assign the patent, grant licenses under, or otherwise deal with it
for any consideration. These rights created by statute are circumscribed by various conditions
and limitations.
3.16 Infringement
Infringement can consist of taking away essential features of the patented invention; utilizing
claimed features; copying patented substances; mechanical equivalence; taking part of the
invention. while the patent is in force. Use by the government or for government purposes is
not infringement. Such use must be paid for on terms to be agreed upon before or after use.
Accidental or temporary use, use for research, use on foreign vessels, do not constitute
infringement.
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3.17 India Simplifies Patent Norms
India notified the Patents (Amendment) Rules 2006, bringing in changes to provide
transparency, decentralization of the functioning of patent offices and simplify the procedures
making them user-friendly. As per the changes notified under the Patents (Amendment)
Rules, 2006, patent applications are now to be mandatory published within one month after
expiry of the statutory period of 18 months. In case of request for an early publication, the
application is to be published within one month from the date of request. This step will
introduce an element of certainty regarding the date of publication, which was hitherto not
available. Further, with a view to enforcing transparency and ensuring time bound disposal of
patent applications, definitive time frames have been prescribed for various activities by the
patent offices. A patent application now has to be referred to an examiner within one month
of a request for its examination and the controller will be required to take a decision within
one month of its submission, it said, adding that the first examination report must be issued in
six months of the date of request for examination of a patent.
3.17.1 The Patent (Second) Amendment Bill
The Patent (Second Amendment) Bill 2000 has been proposed by the Government to bridge
the conflict between the TRIPS and the Patent Act, 1970. Thus, it will be wise to deal with
the important amendments proposed by Bill of 2000. Further the need for any further
amendment will also be discussed herein. The discussion will be restricted to those
amendments, which have relevance to TRIPS.
The proposed amendment provides for changes in the –
 scope of patentable inventions

 grant of new rights
 extension of the term of protection
 provision for reversal of burden of proof in case of process patent infringement
 condition for compulsory licenses.
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3.18 Proposed Amendments
3.18.1 Amendment of Section 2 of the Patents Act
The Patent (Second) Amendment Bill has proposed changes in Section 2 of the Patents Act
by inserting some new provisions as well as deleting some earlier provisions. One of the
noteworthy changes proposed is the modification in the definition of the term ‘invention’.
Clause 3 (f) of the Patent Amendment Bill has redefined the term ‘Invention’. This clause
presently reads -“An invention means a new product or process involving an inventive step
and capable of inventive step”.
Here the phrase “product or process” has proposed a radical change in the Patent Act. This
proposed change tries to bring in conformity with the Patent Act with the Article 27.1 of
TRIPS. Article 27.1 of the TRIPS provides that subject to certain exceptions the product as
well as process patents to be inventions. Keeping the subject matter of patent in mind further
changes has been incorporated in Chapter II of the Act.
The Patent (Second) Amendment Bill vide clause (4) seeks to amend provisions of Section 3
of the Act. Of the proposed amendments in Section 3, the most important is that brought
about in Section 3 (g) of the Patents Act. Clause (g) of Section 3 excludes from patentability
“a method or process of testing applicable during the process of manufacture for rendering
the machines, apparatus or other equipment more efficient or for the improvement or control
of manufacture”. The above-mentioned provision is proposed to be omitted by Clause 4 (c) of
the Amendment Bill. This change has been proposed to bring the Act of 1970 in conformity
with Article 27.1 of TRIPS, which makes it obligatory/mandatory for the members to provide
for product and process patent.
The Patent (Second) Amendment Bill proposes certain charges in Section 10. These are
basically pertaining to contents of specifications. However, the most noteworthy of these is
the insertion of a new sub-section 4(A) in Section 10 of the Patents Act. This sub section has
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been inserted by Clause 8 (b) of the Patent Amendment Bill. This particular section is of
interest as it deals with international application designating India. It reads - “In case of an
International Application designating India -
1. The title, description, drawings, abstracts and claims filed with the application shall taken
as the complete specification for the purpose of this Act and
2. The filing date of the application processed by the Patent Office as designated office or
elected office shall be the international filing date accorded under the “Patent Co-Operation
Treaty”.
3.18.4 Amendment of Section 45of the Patents Act
Clause 21 of The Amendment Bill proposes to amend Section 45 of The Patents Act(which
relates to date of patent) to make the date of patent as date of filing of the application,
according to Article 33 of TRIPS(which requires that the term of protection should be
counted from the date of filing) instead of date of filing of complete specification (as required
by The Patents Act, as it stands now). This clause of The Amendment Bill also proposes to
delete the proviso relating to the provisions of `Patents and Designs Act, 1911', which have
no relevance now.
3.18.5 Amendment of Section 47 of The Patents Act
This section is of paramount importance as this section deals with the limited exception
clause. However this limited exception is only with regard to the product patent and not
process patent. Sections 47(1) and 47(2) of The Patents Act say that the grant of a patent
under this Act shall be subject to the condition that- "(1) any machine, apparatus or other
article, in respect of which the patent is granted or any article made by using a process in
respect of which the patent is granted, may be imported or made by or on behalf of the
Government for the purpose merely of its own use; (2) any process in respect of which the
patent is granted may be used by or on behalf of the Government for the purpose merely of its
own use;"
Although these two sub-sections apparently seem to violate the exclusive rights of making
(only for product patent), using, offering for sale, selling or importing conferred on the owner
of a patent, either product or process, these (Section 47(1) and 47(2) of The Patents Act) may
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be permissible under Article30 of TRIPS, which provides for limited exceptions to the rights
conferred. Article 30 (of TRIPS) reads as follows:
"Members may provide limited exceptions to the exclusive rights conferred by a patent,
provided that such exceptions do not unreasonably conflict with a normal exploitation of the
patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking
account of the legitimate interests of the third parties".
Since Article30 does not clearly mention what can be regarded as "limited exception” and
what cannot, the scope of this provision is not well defined. It seems to depend on how one
interprets this. However, this provision is not unique of TRIPS. Because almost all patent
laws make some allowance for some limited exceptions for some purposes such as use for
research, experimental or teaching purposes, use for private non-commercial purposes,
preparation of medicinal mixtures individually or by pharmacies according to prescription
development activities relating to the obtaining of marketing approvals for generic drugs,
protection of prior user's rights, use on ships, aircraft or other vehicles temporarily in foreign
jurisdiction, etc. Given that Section 47(1) and 47(2) of The Patents Act allow use of patented
product/process for the purpose of Government use only, it seems that such exceptions will
be permissible under Article 30 of TRIPS.
Section 47(3) of The Patents Act says that- "any machine, apparatus or other article in respect
of which the patent is granted may be made or used, by any person, for the purpose merely of
experiment or research including the importing of instructions to pupils." This provision is
consistent with Article 28 of TRIPS only if it is regarded as a part of the "limited exceptions”
permitted under Article 30 of TRIPS.
Section47 (4) of The Patents Act says that- "in the case of a patent in respect of any medicine
or drug, the medicine or drug may be imported by the Government for the purpose merely of
its own use or for distribution in any dispensary, hospital or other medical institution
maintained by or on behalf of the Government or any other dispensary, hospital or other
medical institution which the Central Government may, having regard to the public service
that such dispensary, hospital or medical institution renders, specify in this behalf by
notification in the Official Gazette".
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Such Government use and use for distribution in health centers can be regarded as "limited
exceptions" permitted under Article 30 of TRIPS and/or seem to be permissible under Article
8 of TRIPS which says that Members may, in formulating or amending their laws and
regulations, adopt measures necessary to protect public health and nutrition. To the extent
that medicines and drugs are distributed on a non-profit basis, such distribution does not seem
to be incompatible with TRIPS, given the allowances put forward in Article 30 and Article 8
of TRIPS.
3.18.6 Amendment to Section 48 of the Patents Act
The Patents Act, 1970 confers on the patentee of a product patent, the exclusive right to
“make, use, exercise, sell or distribute” the patented products. Article 28.1 of TRIPS
empowers the patentee of a product patent to prevent third parties, not having the owner’s
consent, not only from the acts of making, using, offering for sale, and selling but also from
importing the products for these purposes. This gap has been bridged by the proposed sub-
section 48 (a). As far as a process patent is concerned, the 1970 Act confers on the patentee
the exclusive right only to use or exercise the process in India.
3.18.7 Amendment to Section 53 of the Patents Act
Clause 24 of the Patent Amendment Bill seeks to bridge the gap between Section 53 of the
Act of 1970 and Article 70.2 of TRIPS, which requires a flat pattern term of 20 years.
3.18.8 Amendment to Section 64 of the Patent Act
Section 64 of the Patents Act deals with the revocation of patents. Clause 28 of the Bill
proposes to delete certain provisions while it incorporates two new grounds for revocation of
patents -
i) “that the complete specification does not disclose or wrongly mention the source of
geographical origin of biological material used for invention”.
ii) “that the invention so far as claimed in any claim of the complete specification was
anticipated having regard to the knowledge, oral or otherwise, available within any local or
indigenous community in any country.
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Clause 35 of The Amendment Bill proposes to amend Section 84 of The Patents Act, which
relates to grant of compulsory license on patents. By this clause, additional ground for non-
working of patented invention in India has been included in the grounds for grant of
compulsory license. Incorporating the proposed amendment, Section 84(1) of The Patents
Act reads as follows:
"At any time after the expiration of three years from the date of the sealing of a patent, any
person interested may make an application to the controller alleging that the patented
invention has not been worked in India or that the reasonable requirements of the public with
respect to the patented invention have not been satisfied or that the patented invention is not
available to the public at a reasonable price and praying for the grant of a compulsory license
to work the patented invention".
Here it should be mentioned that Article31 of TRIPS, which deals with compulsory license,
does not provide, any ground on which such license can be granted. It only provides a
roadmap to be followed while granting compulsory license. Since the TRIPS Agreement is
silent regarding grounds for compulsory license, Members, in drafting their law or in
applying provisions on compulsory license, are free to use any ground for invoking
compulsory license, provided that is in conformity with other provisions of the TRIPS
Agreement. Article 78and Article 89of TRIPS do illustrate some of the grounds, which a
Member country may legitimately adopt for providing compulsory license.
relates to matters to be taken into account in granting compulsory licenses. According to
Article 31 of TRIPS, this clause makes it a point that in determining whether or not to grant
compulsory license, the Controller shall take into account whether the applicant has made
efforts to obtain a license from the patentee on reasonable commercial terms and conditions
and whether such efforts have not been successful within a reasonable period as the
Controller may deem fit (Article 31(b) of TRIPS), except in case of a national emergency or
other circumstances of extreme urgency or in case of public non-commercial use
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( Article31(b) of TRIPS ) or on establishment of a ground of anti-competitive practices

adopted by the patentee (Article 31(k) of TRIPS ).
Deletion of Sections 86,87 and 88 of The Patents Act - Clause 37 proposes to delete sections
86, 87 and 88 of The Patents Act which relate to license of right as these provisions are not in
conformity with provisions under Article 31(a) of TRIPS Agreement which lays down that
use of patent without authorization of the patentee to be considered only on individual merit.
Clause 42 of The Amendment Bill proposes amendment of Section 93 of The Patents Act,
which relates to the power of Controller in granting compulsory license. Section 93(3) (of
The Patents Act) empowers the Controller to grant compulsory license of exclusive nature is
proposed to be deleted as it contravenes provisions under Article 31(d) of TRIPS.
relates to terms and conditions of compulsory license, with the aim of including certain
provisions, which are part of India's obligations under Article 31 of the TRIPS Agreement but
are not part of The Patents Act, 1970, as it stands now. It proposes to include some more
clauses after clause (iii) in subsection 1 which require that while settling the terms and
conditions of a compulsory license under Section 84 of The Patents Act, the Controller (apart
from the provisions already existing under Section 95(1)) should also endeavor to secure”
that the license granted is a non-exclusive license"(according to Article 31(d) of TRIPS),"that
the right of the licensee is non-assignable"(according to Article 31(e) of TRIPS), "that the
license is granted for the balance term of the patent unless a shorter term is consistent with
public interest"(according to Article 31of TRIPS), that the license is granted with a
predominant purpose of supplying in the Indian market (according to Article 31(f) of TRIPS).
It further mentions that license granted for semi-conductor technologies is for public non-
commercial use (according to Article 31(c) of TRIPS) and in the case of establishment of
anti-competitive practices adopted by the patentee, license granted could be for exporting the
goods manufactured (according to Article 31(k) of TRIPS).
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Insertion of new Section 95A to The Patents Act - In accordance with Article 31(g) of
TRIPS, Clause 44 of The Amendment Bill proposes to incorporate (by inserting a new
section (95A)) in The Patents Act a new provision for termination of compulsory license
when the circumstances on which compulsory license is granted does not exist and also
unlikely to recur. However, it is clearly stated that the holder of compulsory license will have
every right to object to such termination. This condition is legislative measures providing for
the grant of compulsory licenses to prevent the abuses which allows members to ensure
adequate protection of the legitimate interests of the holders of compulsory licenses.
which relates to licensing of related patents. It imposes a restriction on the license granted by
the Controller as to be non-assignable. This provision is proposed in accordance with
Article31 (l) of TRIPS.
which relates to special provision for compulsory license on notification by Central
Government. It is proposed to retain the applicability of the provision only for particular
patents and not for "class of patents"(which can currently be done) as Article 31(a) of TRIPS
requires that grant of each compulsory license should be considered on its individual merit.
This Clause further proposes that the Central Government should be allowed to issue such
notifications for the grant of compulsory license not for the sake of "public interest" as can
currently be done) but only under "circumstances of national emergency or circumstances of
extreme urgency" or for "public non-commercial use”. This is because Article 31(b) of
TRIPS states that only under the latter three circumstances a compulsory license can be
granted irrespective of whether a prior approach to the patentee has been made by the
applicant (for compulsory license) for grant of license on reasonable terms and conditions.
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3.19Case Studies
3.19.1 Novartis Patent Claim
Introduction
In November 2003, The Controller General of Patents & Trademarks of India granted
exclusive marketing right (EMR) of Glivec, the blood cancer drug to Novartis A.G., a
multinational based in Switzerland. EMR was granted for a period of 5 years in expectation
of the product patent regime that was due to be enacted in India by January 1, 2005. The
EMR , which is the first such granted in the country, gave Novartis the right to be the only
company that can produce and market the drug in India. Novartis began enforcing the EMR
for Glivec by asking for an injunction against generic manufacturers of the drug in the
Madras High Court.
In January 2004, the court granted Novartis an injunction, restraining companies such as
Cipla, Ranbaxy and Sun from manufacturing, selling, distributing or exporting the drug. The
injunction was later made absolute by a single Judge of the High Court.
Once the generic manufacturers stopped producing Glivec, the price of the drug jumped from
approximately Rs.10, 000 for a month's requirement to around Rs.1, 20,000.
Indian drug companies went in appeal, which was heard by a Division Bench of the Madras
High Court. They contended that Novartis had obtained a patent in the U.S. and Canada in
respect of 'pyramadine derivatives and processes for preparation thereof'. They argued that no
patent was filed in India for imatinib mesylate. The EMR has been fiercely challenged in
courts by generic producers of the drug on the grounds that the compound being a derivative
of a molecule known prior to 1995 did not satisfy the novelty criterion in the Patents Act.
Novartis said that the EMR was conferred for a period of five years, or until an order was
passed on the patent claim in India, whichever was earlier. Novartis in 1997 applied for grant
of patent for the drug glivec in the patent office in Chennai.
In 2005, the patent act was amended. The Amendment Act 2005 granting product patent,
provides that EMRs would either be replaced by patents (if granted) or cancelled (if patents
were rejected).
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By way of opposition, Cipla Limited along with other generic producers filed their
representation under the Patents Act, 1970 sec. 25(1) as amended by Patents (Amendment)
Act, 2005 and the Patents Rules, 2003, r. 55 as amended by Patents (Amendment) Rules,
2005. The following two issues will be argued.
Whether the product applied for patents qualified to be an invention as the product was
anticipated by prior publication and obviousness
Whether the Patent Specification brought out any improvement in the efficacy of the beta
crystals over the known substance as required by Sec.3(d) of the Patents Act, 1970 as
amended by Patents (Amendment) Act, 2005
The Assistant Controller held imatinib mesylate is already known from prior publications
because the claims 6 to 23 of the US Patent claim a pharmaceutically acceptable salt of the
base compound and the patent term extension certificate, specifically mentions imatinib
mesylate as the product. Further the US Patent discloses methanesulphonic acid as one of the
salt forming groups and the patent specification clearly states that the required acid addition
salts are obtained in a customary manner. Also that imatinib mesylate normally exist in the
beta crystals form, which is thermodynamically most stable product and thus the invention is
obvious and anticipated by prior publication; hence not an invention under the Patents Act.
The Controller agreed with the contention of the opponent that a difference of 30% on
comparing the relative bioavailability of the freebase with that of the beta crystal form of
imatinib mesylate which could be due to difference in their solubility in water, did not bring
out any improvement in the efficacy of the beta crystals over the known substance and thus
could not be patnetable under Sec. 3(d) of the Patents Act. Mr.V.Rengaswamy, Asst.
Controller of Patents & Designs, the learned judge in the present case refused to proceed with
the application for Patent.
Aggrieved by the decision of the Indian Patent Office in Chennai, Novartis has filed a Writ
Petition before the Chennai High Court in Jan 2006 challenging the constitutional validity of
Section 3 (d) of The Patents Act and also for quashing of the order of the Patent Office for its
refusal to grant product patent. It asked the court to declare s3(d) as being non compliant with
TRIPS and arbitrary and in violation of Ar14 of the constitution.
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On Aug 7 2007 the Madras HC dismissed the petition filed by the Swiss pharma. The court
held that s3 (d) of the Patents Act as amended in 2005 along with its explanation is valid.
This decision has stymied Novartis move to challenge the rejection of patent application by
the patent office.
The appeal against the rejection of patent has to be decided by the IPAB. The court
transferred the case to IPAB after the government announced the setting up of IPAB and
declared the transfer of all pending IP related appeals to it The IPAB has appointed former
Patent Controller General S Chandresekaran to hear the appeal. Novartis filed a petition in
the IPAB to appoint new member in place of S Chandresekaran on the ground that he was
responsible for the patent application rejection. IPAN dismissed the petition.
On Aug 1 2007 Novartis filed an appeal in the Madras HC challenging IPAB s decision.
The appeal is pending for hearing in the HC. Also the appeal against decision of patent office
rejecting the patent for Glivec is pending. The decision of the Madras HC is a landmark
decision after the amendment act of 2005. The decision makes the appeal for rejection of
patent weak; thus drugs being available at economic rates throughout the county.
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3.19.2 BAJAJ VS TVS
The Digital Twin Spark Plug Ignition [DTS-i] technology debate between the two wheeler
manufacturing giants Bajaj Auto and TVS Motors continues. The patent war has now reached
the Supreme Court with Bajaj seeking a restrain on the manufacturing and selling of TVS’
two-wheeler ‘Flame’. Bajaj has sought a revocation of the Madras High Court order allowing
TVS to go ahead with receiving bookings for and selling its new motorcycle.
The insurmountable to-ing and fro-ing has been in motion since September of 2007 when
Bajaj alleged that TVS had infringed on its DTSi patent used in most Bajaj motorcycles. On
December 19 2007, a single Bench of the High Court in an interim order restrained TVS from
taking new orders for its new motorcycle, however the Bench did allow for bikes that were
already booked to be delivered. TVS, on the next day, approached the court and the interim
order was dismissed. Bajaj has opposed this position and the divisional Bench of the Supreme
Court has said that it cannot make any decision on Bajaj’s recent request without also hearing
from TVS. The date of the hearing will be on January 18.
This argument stems from the fact that Bajaj claims it holds the patent for the digital twin
spark ignition (DTSi) technology, which uses two spark plugs for better fuel-efficiency and
lower emissions, and that the “Flame’s” technology specifications actually infringe on its
patent. TVS on the other hand, contends that its CC-VTi technology does not infringe on
Bajaj’s patent because Bajaj’s patent is not for a ‘twin spark plug’ but for two spark plugs in
a two-valve internal combustion engine with a detachable fixed sleeve. TVS’s internal
combustion engine has three valves.
According to TVS, DTSi is actually a commonly used engine technology and should not be
patented as the twin spark technology is a known ‘prior art’. It has stressed that the creation
of the new three valve engine powered by controlled combustion variable timing intelligent
technology [CC-VTi] in collaboration with AVL of Austria leaves no scope for imitation. But
on the other hand it should not be forgotten that the Chinese manufacturer Taian Chiran
Machinery Co. Ltd. and its Sri Lankan distributor were ordered by the Sri Lankan High Court
to withdraw their copy of the Bajaj Pulsar with DTSi technology from the market; and so
Bajaj may be banking on this.
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For the moment the Supreme Court has become the focus of attention. The Chief Justice
heading the bench has ruled that it cannot pass any order without hearing TVS Motors. Audi
Alteram Partum, an important principle of Natural Justice meaning ‘No man can be
condemned unheard’ is an important aspect of legal proceedings which seems to hold forte.
This certainly reflects on the order of the single bench, Madras High Court restraining TVS
from booking, distributing and selling its motorcycle ‘Flame’ and its suspension the next day
by a division bench ruling requirement of a counter-affidavit to be filed by TVS Motors and
detailed hearing of the matter before passing of injunction order, if any.
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3.20 CONCLUSION
God gifted a wonderful thing called Brain to Man and Mother Nature endowed him with the
abundant physical and biological resources on the earth. Man started creating his own world
by application of his brain or mind and by utilization of these natural resources. Man has also
been bestowed with imagination and creativity. With his imagination and creativity, he has
been producing various articles or products for his needs, comfort and convenience. In the
earlier era, the creations and inventions by him fell in a public domain. These were the
common properties. Anybody could use and copy these creations and inventions without any
restriction, reservation or payment. However, with the passage of time, the importance and
value of these creations was realized. The commercial aspect started playing a significant roll
in these creations. By end of Twentieth Century, the things created and invented by the
human mind were recognized as an intellectual property of the owner .The owner's right over
these properties was accepted and is known as an Intellectual Property Right (commonly
called I.P.R.). A new set of laws called Intellectual Property Right Laws, were enacted to
protect these property rights. These I.P.R. laws provided a protection to the owners under
different categories and names like Patents, Industrial designs, Copyrights, Trade- Marks etc.
A common man comes across intellectual properties from dawn to dusk. The goods having a
very wide spectrum and associated with food, shelter and clothes; the things of necessity,
comfort and luxury. From waking up from a Gautier bed, using a comfortable Sleepwell
mattress and pillows, having a cup of Taj Mahal Tea, then wearing a Nike track suite and
shoes for a morning walk, he deals with these properties. A Modern Bread or Mother Dairy
Milk or a cup of Nescafe at the breakfast, going in a Zen car to the office, using a Compaq
computer and coming back in a car. In the evening, watching Sony Television and fixing
alarm in his/ her Swatch watch to wake-up in the morning, he uses the products which are
intellectual properties of some one. These properties have been covered under a patent or a
copy right or a trade mark. Since a common man's life is very closely linked with articles and
products which are protected by law under intellectual rights. The copying, imitation,
adaptation, and un-authorised reproduction of these things, without the permission of the
owner, may amount to a serious offence. Therefore, the knowledge about intellectual
property right is must for a common man.
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Intellectual property plays an important role in an increasingly broad range of areas, ranging
from the Internet to health care to nearly all aspects of science and technology and literature
and the arts. Understanding the role of intellectual property in these areas many of them still
emerging often requires significant new research and study. To promote informed discussion
of the intellectual property, education and awareness in this field is important.
Today, possession of land, labour and capital are just not enough for a country to succeed.
Creativity and innovation are the new drivers of the world economy. The policies adopted by
a country shall determine the nations well being and further as to how it is developing the
trapped intellectual capital. An effective intellectual property system is the foundation of such
a strategy. Within knowledge-based, innovation-driven economies, the intellectual property
system is a dynamic tool for wealth creation providing an incentive for enterprises and
individuals to create and innovate; a fertile setting for the development of, and trade in,
intellectual assets; and a stable environment for domestic and foreign investment.
The IPR issue has both faces – on one side it protects the right of intellectuals and eventually
promotes the new inventions, while on the other side it promotes monopoly of the company
also. You must be aware that we pay heavy price for even lifesaving drugs although it costs
far less than actual price. We alone do not live on this planet but along with developed
countries like US, UK, Canada, etc and many other underdeveloped countries like those in
Africa. Further, I must emphasize that we are a trend follower rather than a trendsetter – we
accept willingly or unwillingly whatsoever developed nations ask for. Initially India resisted
to not become a part of IPR regulated market but gave up keeping in mind that we may also
grow up and stand in same queue of developed countries.

As we know, India has a vast cultivated land and pool of diversified intellectuals. Using these
resources, we might also boost our currency and economy by promoting IPR issues among
intellects. Some successful attempt made by India like patented ‘turmeric’ uses and ‘basmati
rice’ illustrates that the IPR protection area can turn into an expensive theater in commercial
market. We might, however, begin to wonder how we can generate more useful ‘intellectual
property’ so that the task of protecting it becomes worthwhile.
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4 Bibliography
www.uspto.gov/web/offices/pac/doc/general/whatis.htm
[http://www.commonlii.org/in/legis/num_act/giogapa1999575/
http://www.iprlawindia.org/login_form
http://www.dnaindia.com/india/report_tirupati-laddoo-getsgeographicalcopyright_
http://www.thehindu.com/2009/10/09/stories/2009100960352200.htm )
http://www.legalservicesindia.com/articles/impip.htm
http://en.wikipedia.org/wiki/Intellectual_property_rights
http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm
http://www.wto.org/english/docs_e/legal_e/27-trips_04b_e.htm
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INTELLECTUAL PROPERTY RIGHTS

AKSHAY MORE :09-741

[Type text] Page 1

1.1 TRIPS Agreement on Trademark.........................................................6

1.2What Are the Types of Trademarks That Can Be Registered................6

1.4Trademark registration requirements................................................7

1.6 Passing Off:..................................................................................8

1.7 Differences between Passing Off and Infringement...........................8

1.8What Are Benefits of Trademark Registration.....................................9

1.10The Trade Marks (Amendment) Bill, 2009.......................................9

1.11Special provisions relating to protection of Trademarks through International

2.2Unregisterable Geographical Indications...........................................14

2.3Infringement of Registered Geographical Indications and Appeals.......15

2.3.1 What is Infringement...................................................................15

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2.4.2.2 For selling goods to which false geographical indication is applied....17

2.4.2.4 For improperly describing a place of business as connected with the

2.4.2.5 For falsification of entries in the register:.......................................17

2.6 Procedure for registration...................................................................17

2.7 TRIPS Agreement on GI...................................................................18

2.7.1 Provisions of TRIPS.......................................................................18

2.8 Protection Benefits on GI...................................................................19

2.10 Geographical Indication Registration..................................................20

2.11 Geographical Indication Office..........................................................20

2.12 Geographical Indication Commission..................................................21

2.12.1 Geographical Indication that cannot be enlisted.................................21

2.12.2 Duration of Protection....................................................................21

3.1What does a Patent do?..........................................................................25

3.2 Who Can Apply? .................................................................................25

3.3 What kind of Protection does a Patefer....................................................25

3.4 Why are Patents necessary?....................................................................25

3.5 What Role do Patents Play in Everyday Life?.........................................25

3.6 Legislation ..........................................................................................26

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3.7 Membership of International Treaties ....................................................26

3.8 Types of Patents...................................................................................26

3.9 Patentable Inventions .....................................................................27

3.10 What Is Not Patentable ................................................................27

3.12 Appropriate Office for Filing an Application .................................28

3.12 How is a Patent Granted?...............................................................28

3.13Publication & Examination of Patent Applications.............................28

3.14 Register of Patents ........................................................................30

3.15 Rights Of Patentee ........................................................................30

3.16 Infringement .................................................................................30

3.17 India Simplifies Patent Norms..........................................................31

3.18 Proposed Amendments ...................................................................32

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Intellectual Property Laws in India

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i. Encourage the production of quality products;

ii. Reduce the customer’s costs of shopping

iii. Help the customer to make decisions on purchasing products.

Trademarks help promote economic efficiency. If trademarks are not allowed to be

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1.1TRIPS Agreement on Trademark

Part II, Section 2, in Articles 15-21

Article 15.1 Trademark is defined as:

1.2What Are the Types of Trademarks That Can Be Registered

 Product trademarks: are those that are affixed to identify goods.

 Collective trademarks: are registered in the name of groups, associations or other

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