The Salient features of the Trade Marks Act, 1999, are as

follows:

 Registration of Trade Mark for Services [Sec.

2(2)(z)]
 The new law provides for registration of trade marks
for services, in addition to goods.
 Enlargement of definition of Trade Marks [Sec.
2(2)(zb)]

 The definition of trade marks has been enlarged, so as
to include shape of goods, their packaging and
combination of colours
 Enhanced protection for well known trade marks [Sec.
2(1)(zg), read with section 9(1) and section 11]

 The new act incorporates definition of "well-known trade marks"
[Sec. 2(1)(zg)]. Further the law seeks to prevent registration of
trade marks, which are imitations of well-known marks, by
enlarging the grounds for refusal of registration under Sections 9
and 11 of the Act. The proprietor of well-known mark will be
entitled to prevent use of identical or similar trade mark in
connection with goods or services, though not similar to those
for which the mark is registered, where such use is without due
cause, would take unfair advantage of or be detrimental to the
distinctive character or reputation of the well-known trade mark
 Period of renewal modified [Sec. 25]

 The new Act 1999 has increased the period of renewal
of Trade Mark from 7 years to 10 years. Therefore every
trade mark registered will be valid for 10 years and has
to be renewed every 10 years. The old mark where
certificates have been issued will be valid for 7 years
and then the calculation has to be for 10 years and
respective fees have to be paid to the Registrar of Trade
Marks.

 Filing of Multi-class applications permitted [Sec.
18(2)]

 The new Act enables an applicant to file a single
application for registration of the same mark in
respect of goods or services falling in more than one
class. It means that the law facilitates registration of
the same mark in several classes by means of single
application. But fees payable will be in respect of each
such class of goods or services.
 New provision for registration of Collective marks
[Chapter VIII - Sec. 61-68]

 The new Act has introduced a set of provisions for
registration of 'collective mark' which belongs to a
group or association of persons, whose use is reserved
for members of the group or association of persons.
Collective marks would serve to distinguish
characteristic features of the products or services
offered by those enterprises.
 Appeals from Registrar to lie to Appellate Board,
instead of High Court [Sec. 83-100]

 Appeals from orders or decisions of Registrar which had to
be filed before the High Court having jurisdiction as
defined under the old Act, has been transferred from the
High Courts to the Intellectual Property Appellate Board,
constituted by the new Trade Marks Act, 1999. The Act
explicitly bars any court or authority from exercising
jurisdiction, powers or authority in relation to appeals [vide
section 93]. In Section 100, all cases of appeals and
rectification proceedings pending before any High Court
will be transferred to the Appellate Board from such date as
may be notified in the Official Gazette.
 Scope of infringement of Trade marks widened [Sec. 29]

 The scope of the law governing infringement of trade marks has
been enlarged to include where the infringing use is likely to
cause confusion or is likely to be taken to have an association
with the registered trade mark. In keeping with the legislative
intent to protect well known marks, the law enacts that use of an
identical or similar mark on goods or services which are not
similar will constitute infringement, where the registered trade
mark has a reputation in India and the use without due cause
will take unfair advantage of or is detrimental to the distinctive
character or repute of the registered mark. Section 29 specifies
the circumstances and types of uses which constitute
infringement of a registered trade mark.
 Enhanced punishment for trade mark offences [Sec. 103-105]

 To discourage sale of spurious goods, penalty for applying false trade mark,
trade description, etc. and for selling goods or providing services to which false
trade mark or false trade description is applied, has been enhanced. Further
enhanced punishment for second and subsequent convictions these offences
are explicitly declared as 'cognizable' Section 115(3).

 Forum for institution of infringement proceedings, etc. [Sec. 134]

 As per the old Act Suits for infringement have to be filed in District Court,
where the defendant carries on his business. The new Act has now brought it in
conformity with the Copyright Act, i.e. Suit can be filed in 'District court
having jurisdiction' which will include a district court within the local limits of
whose jurisdiction, the plaintiff actually or voluntarily resides or carries on
business or personally works for gain.
 Removal of mark on ground of non-use [Sec. 47]

 As per the old Act the mark can be removed from the register if the mark is not used for
61 months from the date of filing of Trade mark application. Due to considerable time lag
between date of application and date of registration, such a law was causing hardship to
registrants. The new Act, now explicitly provides that the period of 5 years non-use will
be reckoned from the date of actual registration and not from the application date.
Further use by not only a registered user, but also an unregistered permitted user, will
accrue to the benefit of the registered proprietor for any purpose for which 'use' is
material under the Act.

 Assignment of unregistered trade marks [Sec. 39]

 As per the old Act an unregistered trade mark was not assignable or transmissible except
along with the good will of the business concerned, except in certain specified
circumstances. This has been abolished. Under the new Act an unregistered trade mark
can be assigned with or without the goodwill of the business concerned.
 International non-proprietary names not registrable [Sec. 13]

 International Non-proprietary names declared as such by the UHO
and notified by the Registrar or which is/are deceptively similar to such
names will not be registrable as stated in section 13.

 Association of Trade Marks [Sec. 16]

 In the matter of association of trade marks, goods and services are
associated with each other, if it is likely that those goods might be sold
or otherwise trade in, and those services might be provided by, the
same business - section 2(3).


 Acquiescence by proprietor of 'earlier trade mark' - consequence
[Sec. 33]

 If the proprietor of an 'earlier trade mark' has acquiesced for a period of
5 years, he is precluded from enforcing his right; unless it is proved that
the registration of the later mark was not in 'good faith' - section 33.

 Regd. User may institute infringement proceedings [Sec. 52]

 The right of registered user to take infringement proceedings is
recognized, subject to agreement between the parties, while an
unregistered licensee who is also a 'permitted user' has no such right -
section 52.
 Police empowered to search and seize [Sec. 115(4)]

 Police officer, not below the rank of Deputy
Superintendent of Police, is empowered to search and
seize the infringing goods etc. without warrant.
However, he is required to obtain the opinion of the
Registrar on facts relating to the trade mark and abide
by his opinion - section 115(4).

 How are rights in unregistered marks established?
 In a typical passing-off suit, the courts will generally consider the following issues:
 whether the plaintiff is a prior user of the mark;
 whether the plaintiff’s goods have acquired distinctiveness and are associated in the
minds of the general public with the plaintiff’s mark; and
 whether there is a misrepresentation by the defendant with regard to its goods and such
misrepresentation is likely to lead to confusion in the minds of consumers, with the
result that they may treat the defendant’s goods as those of the plaintiff.
 Are any special rights and protections afforded to owners of well-known and
famous marks?
 The trademark law accords extraordinary protection to trademarks that are ‘well known’
and safeguards them from infringement or passing off. The Trademarks Registry
recognises well-known trademarks in India on the basis of international, national and
cross-border reputation.
 The Trademarks Act 1999 protects well-known trademarks in two ways:
 an action against the registration of similar marks; and
 an action against the misuse of the well-known mark.
 What legal rights and protections are accorded to
registered trademarks?
 A trademark registration:
 provides prima facie evidence of ownership and validity;
 provides statutory protection in India;
 helps to deter others from using the trademark unlawfully;
and
 allows a suit for infringement to be brought.
 In contrast, in the case of an unregistered mark, a passing-
off suit can be filed. As passing off is a common law
remedy, the burden of proof is more severe on the plaintiff
than in an infringement action.
 On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
 The registrar may accept or refuse an application for registration subject to the Trademarks Act. An application can be refused
by the registrar on absolute or relative grounds.
 Absolute grounds Section 9 of the Trademarks Act provides the following absolute grounds for refusal of a trademark:
 The trademark is devoid of any distinctive character – that is, it is not capable of distinguishing the goods or services of one
party from those of another.
 The mark consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity,
intended purpose, values, geographical origin or time of production of the goods or rendering of the service or other
characteristics of the goods or services.
 The mark consists exclusively of marks or indications which have become customary in the language or established practices of
the trade.
 The mark is of such nature as to deceive the public or cause confusion.
 The mark comprises material likely to offend the religious susceptibilities of a class or section of Indian citizens.
 The mark comprises or contains scandalous or obscene matter.
 Use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950.
 The mark consists exclusively of-
 the shape of goods which results from the nature of the goods themselves;
 the shape of goods which is necessary to obtain a technical result; or
 the shape which gives substantial value to the goods.
 However, a trademark which may initially be refused on absolute grounds can be registered if it acquires a distinctive character
or secondary significance as a result of extensive and continuous use.
 Relative grounds Section 11 of the Trademarks Act provides the following for refusal of a trademark:
 A mark cannot be registered if there is a likelihood of confusion due to:
 its identity with an earlier mark for similar goods or services; or
 its similarity to an earlier mark for identical or similar goods or services
 Are collective and certification marks registrable? If so, under what conditions?
 Collective marks
 The Trademarks Act makes special provision for the registration of collective marks. A
‘collective mark’ is defined as a trademark that distinguishes the goods or services of
members of an association of persons (not a partnership within the meaning of the
Partnership Act 1932) which owns the mark from the goods or services of other parties.
 Thus, to be registrable, the collective mark must be capable of being represented
graphically and must meet other general requirements applicable to the registration of
trademarks in India.
 When examining an application, the examiner must consider whether:
 the collective mark is owned by an association of persons that is not a partnership;
 the collective mark belongs to a group and its use is reserved for members of the group;
 the association itself cannot use the collective mark, but it ensures compliance with
certain quality standards by its members who may use the collective mark; and
 the primary function of the collective mark is to indicate a trade connection with the
association or organisation which owns the mark.
 Certification marks A certification trademark is a mark
which represents certain qualities, characteristics or
standards with which the goods or services bearing the
mark must comply. A well-known example of a certification
mark is the WOOLMARK, which certifies that the goods on
which the mark is used are made of 100% wool. A
certification mark can be used by any party which complies
with the standards attached to the certification mark. For a
manufacturer of woollen sweaters to use the WOOLMARK
on its products, the owner or manufacturer of the goods
must obtain certification from the relevant certification
body, Australian Wool Innovation Limited, which owns the
WOOLMARK certification trademark.
 Well-known Trademark and Trans Border Reputation
 India recognises the concept of the "Well-known Trademark" and the
"Principle of Trans Border Reputation". A well-known Trademark in relation to
any goods or services means a mark that has become so to the substantial
segment of the public, which uses such goods or receives such services such
that the use of such a mark in relation to other goods and services is likely to be
taken as indicating a connection between the two marks.
 Trans Border Reputation concept was recognised and discussed by the Apex
Indian Court in the landmark case of N. R. Dongre v. Whirlpool (1996) 5SCC
714. The Trademark "WHIRLPOOL" was held to have acquired reputation and
goodwill in India. The Mark "WHIRLPOOL" was also held to have become
associated in the minds of the public with Whirlpool Corporation on account
of circulation of the advertisements in the magazines despite no evidence of
actual sale. Hence, the trademark WHIRLPOOL was held to have acquired
trans-border reputation which enjoys protection in India, irrespective of its
actual user or registration in India.
 Legal Remedies against Infringement and/or Passing off
 Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against
infringement and passing off.
 Infringement of trademark is violation of the exclusive rights granted to the registered proprietor of
the trademark to use the same. A trademark is said to be infringed by a person, who, not being a
permitted user, uses an identical/ similar/ deceptively similar mark to the registered trademark
without the authorization of the registered proprietor of the trademark. However, it is pertinent to
note that the Indian trademark law protects the vested rights of a prior user against a registered
proprietor which is based on common law principles.
 Passing off is a common law tort used to enforce unregistered trademark rights. Passing off
essentially occurs where the reputation in the trademark of party A is misappropriated by party B,
such that party B misrepresents as being the owner of the trademark or having some affiliation/nexus
with party A, thereby damaging the goodwill of party A. For an action of passing off, registration of a
trademark is irrelevant.
 Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against
violation of trademarks in India. In India, a combined civil action for infringement of trademark and
passing off can be initiated.
 Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can be
initiated against the infringers. Such enforcement mechanisms are expected to boost the protection
of marks in India and reduce infringement and contravention of trademarks.
 Relief granted by Courts in Suits for Infringement and Passing off
 The relief which a court may usually grant in a suit for infringement or
passing off includes permanent and interim injunction, damages or
account of profits, delivery of the infringing goods for destruction and
cost of the legal proceedings.
 The order of interim injunction may be passed ex parte or after notice.
The Interim reliefs in the suit may also include order for:
 Appointment of a local commissioner, which is akin to an "Anton Pillar
Order", for search, seizure and preservation of infringing goods,
account books and preparation of inventory, etc.
 Restraining the infringer from disposing of or dealing with the assets in
a manner which may adversely affect plaintiff's ability to recover
damages, costs or other pecuniary remedies which may be finally
awarded to the plaintiff.
 Offences and Penalties
 In case of a criminal action for infringement or passing off, the
offence is punishable with imprisonment for a term which shall
not be less than six months but which may extend to three years
and fine which shall not be less than INR 50,000 but may extend
to INR 200,000.
 Civil remedies in Trademark:
 # Injunction/ stay against the use of the trademark
# Damages can be claimed
# Accounts and handing over of profits
# Appointment of local commissioner by the court for custody/
sealing of infringing material / accounts
# Application under order 39 rule 1 & 2 of the CPC for grant of
temporary / ad interim ex-parte injunction
 PayPal has accused PayTM of copying its logo to grow its
own user base. The US-based e-wallet, a pioneer in digital
transactions, claims that PayTM had no other reason to use
the same two-tone colour scheme in its trademark
infringement complaint with the Indian Trademark Office.
As it comes at a time when PayTM is enjoying massive
gains from the demonetisation of large notes, the
complaint does seem rather opportunistic; however, this is
not what the courts will be analysing. And though the
colours of a logo may not mean anything to the common
observer, smaller matters have been at the centre
of trademarkinfringement cases in the past. And, as we
shall see, with very good reason.
 Eclairs: Cadbury’s or Everyone’s?
 Cadbury is very particular about intellectual property.
In some jurisdictions, it even owns the right to the use
of a shade of purple on chocolate wrappers. In India, it
had registered three trademarks containing the word
Eclairs (Chocolate Eclairs, Orange Flavoured
Chocolate Eclairs and Chocolate Eclairs Pop). All three
names were, however, not in use despite being
registered way back in 1972. ITC won the case in 2015,
after being in court over the matter for more than a
decade.
 Bata vs Bata
 In the 1980s, the shoe maker Bata wanted to stop a
company marketing foam materials from operating
under the same name. The judge asked, “How would
the customers know that Bata is not producing foam?”
The judge reasoned that it is reasonable to assume that
a customer would not ask a seller whether the product
is manufactured by the shoe maker. For this reason,
Bata won the case, despite the fact that its domain is
completely different.
 1. Yahoo!, Inc. v Akash Arora & Anr [1999 (19) PTC 201 (Del)] :-
 The first decision on the protection of IP rights on the Internet.
 In what is known till date as a Landmark judgment in cybersquatting,
the Delhi High Court held that a domain name served the same
function as a trademark and was therefore entitled to equal protection.
As the domain names of the plaintiff ‘Yahoo!’ and defendant ‘Yahoo
India!’, were nearly identical and phonetically similar, there was every
possibility that internet users would be confused and deceived into
believing that the domain names had a common source or a
connection. The court further observed that the disclaimer used by the
defendants was not sufficient because the nature of the Internet is such
that use of a similar domain name cannot be rectified by a disclaimer,
and that it did not matter that ‘yahoo’ is a dictionary word. The name
had acquired uniqueness and distinctiveness and was associated with
the plaintiff.
 4. The Coca-Cola Company Vs. Bisleri International Pvt. Ltd [Manu/DE/2698/2009] :-
 The Maaza War.
 The Delhi High Court held that if the threat of infringement exists, then this court would certainly
have jurisdiction to entertain the suit.
 It was also held that the exporting of goods from a country is to be considered as sale within the
country from where the goods are exported and the same amounts to infringement of trade mark.
 In the present matter, the defendant, Bisleri by a master agreement, had sold and assigned the trade
mark MAAZA including formulation rights, know-how, intellectual property rights, goodwill etc for
India only with respect to a mango fruit drink known as MAAZA to Coca-Cola.
 In 2008, the defendant filed an application for registration of the trade mark MAAZA in Turkey
started exporting fruit drink under the trade mark MAAZA. The defendant sent a legal notice
repudiating the agreement between the plaintiff and the defendant, leading to the present case. The
plaintiff, the Coca Cola Company also claimed permanent injunction and damages for infringement
of trade mark and passing off.
 It was held by the court that the intention to use the trade mark besides direct or indirect use of the
trade mark was sufficient to give jurisdiction to the court to decide on the issue. The court finally
granted an interim injunction against the defendant (Bisleri) from using the trade mark MAAZA in
India as well as for export market, which was held to be infringement of trade mark.
 Apple Corps vs. Apple Inc.
 Who has the right to trademark the word “apple,” the Beatles or Apple Inc.?
The Beatles came first, with their music company Apple Corps, and then eight
years later Steve Jobs introduced Apple Inc. to the world. The two mega-
corporations have battled it out in court over the years.
 After the first round, Apple Inc. agreed to pay Apple Corps a cash settlement
and to stay out of the music business. But with the advent of iTunes, the legal
wrangling between the two giants heated up again. They reached an apparent
settlement after Apple Inc. agreed to purchase Apple Corps’ trademark rights
and then license them back to the music company.
 As it stands now, if your company has anything to do with either music or
computers you’d best stay far away from the word “apple.” Try another fruit. Or
better yet, get a legal services company to handle your trademark research,
application, and maintenance to avoid any legal hassles.
 THE FOURTH SCHEDULE
 Classification of goods– Name of the classes
 (Parts of an article or apparatus are, in general, classified with the actual article or
apparatus, except where
 such parts constitute articles included in other classes).
 Class 1. Chemical used in industry, science, photography, agriculture,
horticulture and forestry;
 unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing
 compositions; tempering and soldering preparations; chemical substances for preserving
 foodstuffs; tanning substances; adhesive used in industry
 Class 2. Paints, varnishes, lacquers; preservatives against rust and against
deterioration of wood;
 colorants; mordents; raw natural resins; metals in foil and powder form for painters;
 decorators; printers and artists
 Class 3. Bleaching preparations and other substances for laundry use; cleaning;
polishing;
 scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair
 lotions, dentifrices
 Class 4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions;
 fuels(including motor spirit) and illuminants; candles, wicks
 Class 5. Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for
 medical use, food for babies; plasters, materials for dressings; materials for stopping
 teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides
 Class 6. Common metals and their alloys; metal building materials;
 transportable buildings of metal; materials of metal for railway tracks; non-electric cables
 and wires of common metal; ironmongery, small items of metal hardware; pipes and
 tubes of metal; safes; goods of common metal not included in other classes; ores
 Class 7. Machines and machine tools; motors and engines (except for land vehicles); machine
 coupling and transmission components (except for land vehicles); agricultural
 implements other than hand-operated; incubators for eggs
 Class 8. Hand tools and implements (hand-operated); cutlery; side arms; razors
 Class 9. Scientific, nautical, surveying, electric, photographic, cinematographic, optical,
 weighing, measuring, signalling, checking (supervision), life saving and teaching
 apparatus and instruments; apparatus for recording, transmission or reproduction of
 sound or images; magnetic data carriers, recording discs; automatic vending machines
 and mechanisms for coin-operated apparatus; cash registers, calculating machines, data
 processing equipment and computers; fire extinguishing apparatus
 Class 10. Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes
 and teeth; orthopaedic articles; suture materials
 Class 11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying
 ventilating, water supply and sanitary purposes
 Class 12. Vehicles; apparatus for locomotion by land, air or water
 Class 13. Firearms; ammunition and projectiles; explosives; fire works
 42
 Class 14. Precious metals and their alloys and goods in precious metals or coated therewith, not
 included in other classes; jewellery, precious stones; horological and other chronometric
 instruments
 Class 15. Musical instruments
 Class 16. Paper, cardboard and goods made from these materials, not included in other classes;
 printed matter; bookbinding material; photographs; stationery; adhesives for stationery or
 household purposes; artists’ materials; paint brushes; typewriters and office requisites
 (except furniture); instructional and teaching material (except apparatus); plastic
 materials for packaging (not included in other classes); playing cards; printers' type;
 printing blocks
 Class 17. Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not
 included in other classes; plastics in extruded form for use in manufacture; packing,
 stopping and insulating materials; flexible pipes, not of metal
 Class 18. Leather and imitations of leather, and goods made of these materials and not included in
 other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and
 walking sticks; whips, harness and saddlery
 Class 19. Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch
 and bitumen; non-metallic transportable buildings; monuments, not of metal.
 Class 20. Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork,
 reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl,
 meerschaum and substitutes for all these materials, or of plastics
 Class 21. Household or kitchen utensils and containers(not of precious metal or coated therewith);
 combs and sponges; brushes(except paints brushes); brush making materials; articles for
 cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in
 building); glassware, porcelain and earthenware not included in other classes
 Class 22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other
 classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile
 materials
 Class 23. Yarns and threads, for textile use
 Class 24. Textiles and textile goods, not included in other classes; bed and table covers.
 Class 25. Clothing, footwear, headgear
 Class 26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles;
 artificial flowers
 Class 27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing
 floors; wall hangings(non-textile)
 Class 28. Games and playthings, gymnastic and sporting articles not included in other classes;
 decorations for Christmas trees
 Class 29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and
 vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
 43
 Class 30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations
 made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking
 powder; salt, mustard; vinegar, sauces, (condiments); spices; ice
 Class 31. Agricultural, horticultural and forestry products and grains not included in other classes;
 live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for
 animals, malt
 Class 32. Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit
 juices; syrups and other preparations for making beverages
 Class 33. Alcoholic beverages(except beers)
 Class 34. Tobacco, smokers’ articles, matches
 Trademark Search
 Before beginning the trademark registration process, the entrepreneur or a trademark professional must conduct a
trademark search of the trademark database. A trademark search will provide information about identical or similar
trademark that has already been filed with the trademark registry. A trademark search can be conducted by visiting the
Trademark Registrar Website. A guide on “How to do a trademark search” and “Interpreting Trademark Status” is
available in the IndiaFilings Learning Center.
 Trademark Filing
 Once a trademark search is completed, the application for trademark registration can be filed with the Trademark
Registrar. The application for registration of trademark must be made in the prescribed manner and filed along with
the fee for trademark registration. Trademark application can be filed at one of the five Trademark Registrar Office
having jurisdiction over the State or online. Trademark applications can be filed online by IndiaFilings.com or a
trademark agent or lawyer.
 A trademark registration application must contain the following information:
 Logo or the Trademark
 Name and address of the trademark owner
 Classification or Trademark Class
 Trademark used since date
 Description of the goods or services
 Trademark Application Allotment
 Once the Trademark registration application is filed with the Trademark Registrar, a trademark application allotment
number is provided within one or two working days. The trademark application can also then be tracked online
through the Online Trademark Search facility. Typically, on obtaining trademark application allotment number, the
owner of the trademark can affix the TM symbol next to the logo.
 Vienna Codification
 The Vienna Classification or Vienna Codification, established by the Vienna Agreement (1973), is an international classification of the
figurative elements of marks. Once the trademark registration application is filed, the Trademark Registrar will apply the Vienna
Classification to the trademark based on the figurative elements of marks. While this work is in progress, the trademark application status
usually reflects as “Sent for Vienna Codification”.
 Trademark Examination
 Once Vienna Codification is completed, the trademark registration application will be allotted to a Trademark Officer in the Trademark
Registrar Office. The Trademark Officer would then review the trademark application for correctness and issue a trademark examination
report. The Trademark Officer has the ability to accept the trademark registration application and allow for trademark journal publication or
object the trademark registration application.
 If the trademark registration application is objected by the Trademark Officer, the trademark applicant has the right to appear before the
Trademark Officer and address the objections. If the Trademark Officer is satisfied with the justifications of the trademark applicant, the
trademark would be allowed for trademark journal publication. In case the Trademark Officer is not satisfied with the justifications, the
trademark applicant has the right to appeal the decision of the Trademark Officer before the Intellectual Property Appellate Board.
 Trademark Journal Publication
 Once the trademark registration application is accepted by the Trademark Registrar, the proposed trademark is published in the Trademark
Journal. The trademark journal is published weekly and contains all the trademarks that have been accepted by the Trademark Registrar.
Once the trademark is published in the trademark journal, the public have an opportunity to object the trademark registration, if they
believe they will be damaged by that registration. If there are no objections filed within 90 days of that publication, the mark will typically be
registered within 12 weeks – months time.
 If the trademark registration application is opposed by a third-party, hearing will be called for by the Trademark Hearing Officer. Both the
trademark applicant and the opposing party have the chance to appear at the hearing and provide justifications for registration or rejection
of the trademark application. Based on the hearings and the evidence presented, the Trademark Hearing Officer will determine if the
trademark registration application should be accepted or rejected. The decision of the Trademark Hearing Officer can also be challenged by
escalating to the Intellectual Property Appellate Board.
 Trademark Registration
 Once there are no objections or oppositions for the trademark registration application, the trademark manuscript and trademark registration
certificate will be prepared and sent to the trademark application. Once the trademark registration certificate is issued, the trademark is
considered to be a registered trademark of the owner, granting the trademark owner exclusive use of the mark. The ® symbol can now be
placed next to the logo or trademark.
Copyright

 Indian copyright law is at parity with the international

standards as contained in TRIPS. The (Indian) Copyright
Act, 1957, pursuant to the amendments in 1999, 2002 and
2012, fully reflects the Berne Convention for Protection of
Literary and Artistic Works, 1886 and the Universal
Copyrights Convention, to which India is a party. India is
also a party to the Geneva Convention for the Protection of
Rights of Producers of Phonograms and is an active
member of the World Intellectual Property Organization
(WIPO) and United Nations Educational, Scientific and
Cultural Organization (UNESCO).

Classes of work for which Copyright protection is applicable

 Copyright subsists throughout India in the following classes of works:

 Original literary,
 dramatic,
 musical work (consists of music and also graphic notation of such
works but excludes any words or action intended to be sung, spoken or
performed with music)
 artistic works (painting, sculpture, drawing, engraving, photograph,
architecture or any other work of artistic craftsmanship (whether or not
any such work poses artistic work)
 Cinematograph films (work of visual recording on any medium
produced through a process from which a moving image may be
produced by any means and includes a sound recording accompanying
such visual recording); and
 Sound recordings (recording of sounds from which sounds may be
produced regardless of the medium on which such recording is made
or the method by which the sounds are produced).
Protection to Authors
 Copyright protects the rights of authors, i.e., creators of intellectual property in the form
of literary, musical, dramatic and artistic works and cinematograph films and sound
recordings.
 The following rights are protected:
 reproduce the work
 issue copies of the work to the public
 perform the work in public
 communicate the work to the public.
 make cinematograph film or sound recording in respect of the work
 make any translation of the work
 make any adaptation of the work ( conversion of dramatic work into non dramatic work,
literary work into dramatic work, re-arrangement of literary or dramatic work, depiction
in comic form or through pictures of a literary or dramatic work, transcription of musical
work or any act involving rearrangement or alteration of an existing work and the making
of a cinematograph film of literary or dramatic or musical work)
 In addition to all the rights applicable to a literary work, owner of the copyright in a
computer programme enjoys the rights to sell or give on hire or offer for sale or hire,
regardless of whether such a copy has been sold or given on hire on earlier occasion.
Owners of copyrights

 The following are the owners of the copyrights:

 In musical sound recordings: lyricist, composer, singer, musician
and the person or company who produced the sound recording
 In works by journalists during their employment: in the absence of
any agreement to the contrary, the proprietor
 In works produced for valuable consideration at the instance of
another person: in the absence of any agreement to the contrary, the
person at whose instance the work is produced
 Assignment of Copyright
 The owner of the copyright in an existing work or the prospective
owner of the copyright in a future work may assign to any person the
copyright either wholly or partially and either generally or subject to
limitations and either for the whole term of the copyright or any part
thereof. The assignment mention the rights, duration, the territorial
limits of the assignment and the royalty payable thereon and should be
in writing signed by the assignor or by his duly authorised agent.
 If the assignment of Copyright does not contain
any provision mentioned below
 Where the assignee does not exercise the rights
assigned to him within a period of one year from the
date of assignment
 If the period of assignment is not stated
 If the territorial extent of assignment of the rights is
not specified
 Then the following provisions prescribed by the
Act will prevail
 Shall lapse after the expiry of the said period unless
otherwise specified in the assignment
 it shall be deemed to be five years from the date of
assignment.
 it shall be presumed to extend within the whole of
India.
 Term of the protection of Copyright
 The general rule is that copyright lasts for 60 years. In the case of original literary, dramatic, musical
and artistic works the 60-year period is counted from the year following the death of the author. In
the case of cinematograph films, sound recordings, photographs, posthumous publications,
anonymous and pseudonymous publications, works of government and works of international
organisations, the 60-year period is counted from the date of publication.
 Exceptions to the use Copyright
 In order to protect the interests of users, some exemptions have been prescribed in respect of specific
uses of works enjoying copyright. Some of the exemptions are the uses of the work:
 for the purpose of research or private study,
 for criticism or review,
 for reporting current events,
 in connection with judicial proceeding,
 performance by an amateur club or society if the performance is given to a non-paying audience, and
 the making of sound recordings of literary, dramatic or musical works under certain conditions.
 for the purpose of education and religious ceremonies
 Application for registration of copyright
 The procedure for registration is as follows:
 Application for registration is to be made in Form IV as
prescribed in the first schedule to the Rules accompanied
by the requisite fees prescribed in the second schedule to
the Rules ;
 Separate applications should be made for registration of
each work;
 The applications should be signed by the applicant or the
advocate in whose favor a Vakalatnama or Power of
Attorney has been executed, and the same has to be
annexed to the application form.
 Infringement of Copyright
 Copyright in a work is considered as infringed only if a substantial part is made use of
unauthorizedly. What is ‘substantial’ varies from case to case. More often than not, it is a
matter of quality rather than quantity.
 For example, if a lyricist copy a very catching phrase from another lyricist’s song, there is
likely to be infringement even if that phrase is very short.
 The following are some of the commonly known acts involving infringement of
copyright:
 Making infringing copies for sale or hire or selling or letting them for hire;
 Permitting any place for the performance of works in public where such performance
constitutes infringement of copyright;
 Distributing infringing copies for the purpose of trade or to such an extent so as to affect
prejudicially the interest of the owner of copyright ;
 Public exhibition of infringing copies by way of trade; and
 Importation of infringing copies into India.
 A copyright owner can take legal action against any person who infringes the copyright
and is entitled to remedies by way of injunctions, damages and accounts.
 Penalty for infringement and the status of the
infringing copies
 The minimum punishment for infringement of copyright is
imprisonment for six months with the minimum fine of Rs.
50,000/-. In the case of a second and subsequent
conviction the minimum punishment is imprisonment for
one year and fine of Rs. one lakh.
 All infringing copies of any work in which copyright
subsists and all plates used or intended to be used for the
production of such infringing copies shall be deemed to be
the property of the owner of the copyright.
 Introduction:
 The Patents Act 1970, along with the Patents Rules 1972, came into
force on 20th April 1972, replacing the Indian Patents and Designs Act
1911. The Patents Act was largely based on the recommendations of the
Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar.
One of the recommendations was the allowance of only process patents
with regard to inventions relating to drugs, medicines, food and
chemicals.
 Later, India became signatory to many international arrangements with
an objective of strengthening its patent law and coming in league with
the modern world. One of the significant steps towards achieving this
objective was becoming the member of the Trade Related Intellectual
Property Rights (TRIPS) system.
 Significantly, India also became signatory of the Paris Convention and
the Patent Cooperation Treaty on 7thDecember 1998 and thereafter
signed the Budapest Treaty on 17th December 2001.