Patents, trade marks, copyright and designs in India: overview
A guide to intellectual property law in India. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs: Country Q&A tool.
This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.
The legal requirements to obtain a patent are:
Involvement of an inventive step.
Fulfilling requirements of industrial applicability.
Subject matter must not be barred from patentability under sections 3 and 4 of the Patents Act 1970 (see Question 2).
The following categories of inventions are expressly excluded from protection under sections 3 and 4 of the Patents Act 1970:
Frivolous inventions and inventions contrary to natural laws.
Inventions contrary to public order or morality that cause serious prejudice to human, animal or plant life or to the environment.
Discovery of a scientific principle or formulation of an abstract theory.
Mere discovery of a new form of a known substance that does not result in enhancing the efficacy of that substance.
Mere discovery of any new property or new use of a known substance or 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.
Mere admixture of known substances.
Mere arrangement or rearrangement of known devices functioning independently of one another.
Method of medical treatment of human beings and animals.
Plants and animal varieties, seeds and essentially biological processes for production or propagation of plants and animals.
Mathematical or business methods, algorithms and computer programmes.
Literary, dramatic, musical or artistic works.
Mere scheme, rule or method of performing a mental act or method of playing a game.
Presentation of information.
Topography of integrated circuits.
Inventions relating to atomic energy.
A patent application is filed before the Patent Office headed by the Controller General of Patents, Designs and Trademarks.
Its website provides detailed guidance on the application procedure (www.ipindia.nic.in/ipr/patent/patents.htm).
Any person can file a pre-grant opposition between the publication of a patent application and before its grant.
Post-grant opposition can be filed by any person interested after the grant of a patent until the expiry of a one-year period from the date of publication of the grant.
The grounds for both pre- and post-grant opposition include:
Wrongful obtainment of the invention.
Obviousness and lack of inventive step.
Non-patentable subject matter.
Insufficiency of description.
Non-disclosure of information under section 8 of the Patents Act 1970 or providing materially false information.
Non-disclosure or providing the wrong details of the source of biological material being furnished.
Invention anticipated with regard to traditional knowledge anywhere in the world.
Anticipation by prior publication.
Anticipation by prior claiming in India.
Prior public knowledge or public use in India before the priority date.
Convention application filed after 12 months from filing the first application in the convention country.
A revocation petition can also be filed by any "person interested" or the central government any time after the grant of a patent. The grounds of revocation as listed in section 64 of the Patents Act are:
Patent wrongfully obtained.
Lack of novelty.
Lack of inventive step.
Patent was granted on the application of a person not entitled to apply.
The subject of any claim is not an invention.
Lack of utility.
The scope of the claim is not clearly or sufficiently defined or is not based on the matter disclosed in the specification.
Obtaining a patent on a false suggestion or representation.
Secret use in India.
Contravention of secrecy directions under section 35 of the Patents Act.
Leave to amend was obtained by fraud.
Non-disclosure of section 8 information/providing materially false information.
Non-disclosure/wrongful disclosure of biological material.
Anticipated by traditional knowledge.
Central government can also revoke a patent in the public interest if it is of the opinion that a patent, or the mode in which it is exercised, is mischievous to the state or generally prejudicial to the public.
The grounds under which a patent infringement action can be brought are:
If a patented product is made, used, offered for sale, sold or imported for these purposes by a third party without authorisation.
Where the subject matter of the patent is a process, when third parties use that process without authorisation, or use, offer for sale, sell or import for these purposes the product obtained directly by that process in India without authorisation.
The defences to patent infringement actions are:
All the grounds for the revocation of a patent that can be sought under section 64 of the Patents Act 1970 (see Question 4) are available as a defence in a suit for infringement.
Importation, distribution and use by the government for governmental purposes.
Using an invention merely for the purpose of experiment or research.
Section 107-A of the Patents Act 1970 envisages the Bolar Provision that allows the use of a patented invention for purposes "reasonably related to development and submission of information" (including clinical trial or tests) required under the law, for example, by public health authorities.
The doctrine of exhaustion or parallel importation
The remedies in patent infringement actions are:
Damages or an account of profits. For quantum of damages, the courts consider the actual injury caused to a plaintiff in terms of loss of business and goodwill, therefore ruling out any speculative, punitive or unproven damages.
Direct seizure, forfeiture or destruction of the infringing goods or materials and implements that are predominantly used for creation of the infringing goods.
Costs for attorney fees incurred in pursuing the infringement suit.
The legal requirements to obtain a trade mark are that the mark must be capable of:
Graphical representation (section 2(z)(b), Trade Marks Act 1999).
Distinguishing the products or services of one person from those of another, that is, it must be distinctive.
Overcoming objections raised on absolute or relative grounds (sections 9(2) and 11, Trade Marks Act 1999).
Being a common law country, India does not require the registration of a trade mark and the rights to an unregistered mark may be protected through the common law tort of passing off. However, registration is prima facie proof of ownership and offers the option to initiate an infringement action in addition to a common law action of passing-off in the case of misuse. Additional benefits of registration include fulfillment of the mandatory requirement of trade mark registration for notification of a mark with customs, and the right to initiate criminal actions.
A trade mark application can be filed at the Trade Marks Registry headed by the Controller General of Patents, Designs and Trademarks.
Its website provides detailed guidance regarding the application procedure (http://ipindia.nic.in/tmr_new/default.htm).
Additionally, with India's accession to the Madrid Protocol, applications designating India can also be filed through the International Bureau (before the World Intellectual Property Organisation (WIPO)). However, such applications must comply with all the rules and regulations of Indian trade mark law. Therefore, the final authority to register trade marks in India is the Indian Trade Marks Registry.
The grounds under which a regulatory authority can refuse to register a trade mark include:
Lack of distinctive character (section 9(1) (a), Trade Marks Act 1999).
Descriptiveness (section 9(1)(b), Trade Marks Act 1999).
If the mark is generic or customary to trade (section 9(1)(c), Trade Marks Act 1999).
If the mark is capable of deceiving the public or causing confusion (section 9(2)(a), Trade Marks Act 1999).
If it comprises a matter likely to hurt religious susceptibilities (section 9(2)(b), Trade Marks Act 1999).
If the mark contains scandalous or obscene matter (section 9(2)(c), Trade Marks Act 1999).
If its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950 (section 9(2)(d), Trade Marks Act 1999).
If the mark consists exclusively of the shape of goods that form the nature of the goods themselves, or if the shape of goods is necessary to obtain a technical result, or if the shape lends substantial value to the goods (section 9(3), Trade Marks Act 1999).
If the mark is similar or identical to a prior mark existing on the Trade Marks Register (section 11, Trade Marks Act 1999).
If the mark is (section 13, Trade Marks Act 1999):
a word that is the commonly used and accepted name of any single chemical element or any single chemical compound for a chemical substance or preparation; or
it is identical or deceptively similar to a word declared as an international non-proprietary name by the World Health Organisation (WHO) and notified as such by the Registrar of Trade Marks.
Opposition can be filed within a non-extendable period of four months calculated from the date that the trade mark is published in the Trade Marks Journal.
The Notice of Opposition can be filed by any person based on absolute or relative grounds (sections 9 and 11, Trade Marks Act 1999) (see Question 14).
The proprietor of a registered trade mark can bring a trade mark infringement action against:
Use of a mark that is identical or similar to the registered trade mark and for identical or similar goods for which the trade mark is registered.
Use of an identical or similar mark for disparate goods or services provided the registered trade mark has a reputation in India, and the use of the mark without any due cause takes unfair advantage of, and is detrimental to, the distinctive character of the registered mark.
Use of a registered trade mark as a part of a third party's trade or business or corporate name and for goods or services that the trade mark is registered for.
Unauthorised application of a registered mark to a material intended to be used for labelling or packaging goods, business paper or for advertising goods or services.
An advertisement is the same if it either:
takes unfair advantage of the registered trade mark;
is contrary to honest practices in industrial or commercial matters;
is detrimental to the distinctive character;
brings disrepute to the registered mark in question.
The defences to trade mark infringement actions include that the:
Registered mark is descriptive of the goods or services in dispute and no exclusive rights can be claimed in the same.
Registered mark is being used by several entities rendering it publici juris.
Impugned mark is being used to describe the kind, quality, intended purpose or any other characteristics of goods or services.
Impugned mark is in use by the defendant prior to the date of registration or use of the registered trade mark.
Concurrent registration is in favour of the defendant.
Delay or laches or acquiescence.
Registered trade mark is not being used and the proprietor has no bona fide intention to use the same in respect of goods or services for which it is registered.
The above list is illustrative and not exhaustive.
The law of copyright is governed by the Copyright Act 1957 (Copyright Act) and the Rules framed under this. As per the Copyright Act, copyright subsists in the following classes of works:
Original literary, dramatic, musical and artistic works.
Under the provisions relating to International Copyright in the Copyright Act 1957, the government has passed the International Copyright Order 1999. Therefore, a work published in a country which is a signatory to the Berne Convention for the Protection of Literary and Artistic Works or the Universal Copyright Convention 1952 can be protected under the Copyright Act, as long as it is original.
Registration is not necessary either for the subsistence or enforcement of copyright if the work has been published or registered in a convention country that is a signatory to the Berne Convention for the Protection of Literary and Artistic Works or the Universal Copyright Convention 1952. India is a signatory to both.
However, registration is prima facie evidence of an owner's rights, so registration of copyright with the Copyright Office is advised. Registered rights assist in enforcement actions such as:
Search and seizure operations.
Registering a watch notice with Customs.
Specimens of relevant forms and the procedural flowchart are provided on the Copyright Office's website (http://copyright.gov.in ( www.practicallaw.com/5-524-2911) ).
Copyright protection terms are as follows:
The term of copyright for literary, dramatic, musical and artistic works is the lifetime of the author plus 60 years. If such works are published anonymously, the term is 60 years from the work's first publication.
For literary, dramatic, musical work or an engraving for which copyright subsists at the date of the death of the author and which has not been published before that date (this includes any adaptation of the work), copyright subsists 60 years from publication.
For a photograph, cinematograph film, sound recording, a work where the government or a public undertaking is the first owner, or a work of an international organisation, the term is 60 years from publication.
A copyright infringement action can be brought if a third party:
Performs acts that are the exclusive preserve of a copyright owner and the third party commits such acts either without a licence from the owner or Registrar of Copyright or in contravention of the terms of its licence.
Permits any place to be used for the communication of the work to the public for profit where such communication constitutes an infringement of the copyright in the work.
Does any of the following with infringing copies of the work:
makes for sale or hire;
offers for sale or hire;
distributes, or exhibits in public by way of trade;
imports into India.
The following are some of the statutory defences to a copyright infringement action (section 52, Copyright Act 1957):
A fair dealing with any work, not being a computer programme for the purposes of private use including research.
Criticism or review, whether of that work or of any other work.
The reporting of current events and current affairs, including the reporting of a lecture delivered in public.
The making of copies or adaptation of a computer programme by the lawful possessor of a copy of such a computer programme in order to:
use the computer programme for the purpose for which it was supplied;
make back-up copies purely as a temporary protection against loss, destruction or damage in order only to use the computer programme for the purpose for which it was supplied.
Making copies or adaption of the computer programme from a personally legally obtained copy for non-commercial personal use.
The reproduction of any work for the purpose of a judicial proceeding or for the purpose of a report of a judicial proceeding.
The reproduction or publication of any work prepared by the Secretariat of a Legislature exclusively for the use of the members of that Legislature.
The reproduction of any work in a certified copy made or supplied in accordance with any law for the time being in force.
The reading or recitation in public of a reasonable extract from a published literary or dramatic work.
The reproduction of any work by a teacher or a pupil:
in the course of instruction;
as part of the questions to be answered in an examination;
in answers to such questions;
The performance, in the course of the activities of an educational institution, of a literary, dramatic or musical work by the staff and student of the institution, or of a cinematograph film or a sound recording if the audience is limited to:
such staff and students;
the parents and guardians of the students and persons directly connected with the activities of the institution.
The performance of a literary, dramatic or musical work by an amateur club or society if the performance is:
given to a non-paying audience;
for the benefit of a religious institution;
The reproduction in a newspaper, magazine or other periodical of an article on current economic, political, social or religious topics, unless the author of such article has expressly reserved to himself the right of such reproduction.
The relevant conditions are the design should (section 2(d) and section 4, Designs Act 2000):
Be new and original.
Be appealing to the eye.
Not be previously published in any country.
Be significantly distinguishable from known designs or a combination of known designs.
Be capable of being applied to an article (two dimensional or three dimensional) that in turn is capable of being manufactured and sold independently.
Not include any mode or principle of construction or anything that is in substance a mere mechanical device.
Not comprise scandalous or obscene matter or be contrary to public order or morality.
The Designs Office, which is headed by the Controller General of Patents, Designs and Trade Marks is the relevant authority.
Its website provides detailed guidance regarding the application procedure (www.ipindia.nic.in).
Registration of a design gives exclusive rights to the proprietor to apply a design to articles in the class in which the design is registered. An action for infringement can be initiated if its right is interfered with in anyway.
If a design that is capable of being registered under the Designs Act is not registered, copyright subsists in the same way as under the Copyright Act 1957 (section 15, Copyright Act 1957). However, such protection ceases to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process, by the owner of the copyright, or his licensee. Therefore, a registered proprietor of the design is entitled to better protection of his intellectual property.
There are no provisions for opposing registered designs, however, a cancellation action can be brought at any time during the term of registration (section 19, Designs Act 2000). Grounds of cancellation include:
Prior registration of the design in India.
Its publication in India or abroad prior to the date of registration.
Lack of novelty or originality.
That it does not qualify for registration under the Designs Act 2000.
That it does not qualify as a design within the meaning of section 2(d) of the Designs Act 2000.
Piracy (infringement) arises if a third party uses or adopts any registered design or fraudulent or obvious imitation of the design and (section 22, Designs Act 2000):
Without the licence or written consent of the registered proprietor.
For the purposes of sale, whether the article has been made in India or is imported.
The remedies in actions for unauthorised use of confidential information include:
Temporary and permanent injunction.
Delivery-up of the infringing work.
Award of damages or rendition of accounts.
In addition to the civil remedies stated above, if the confidential information existed in a tangible form and has been stolen, a complaint of theft under Section 378 of the Indian Penal Code 1860 can be lodged with the Police.
Controller General of Patents Designs and Trade Marks
Main areas of responsibility. Patents, trade marks and designs.
Guidance on application procedure.
http://ipindia.nic.in/tmr_new/default.htm (trade marks).
Main areas of responsibility. Copyright
Guidance on application procedure. This website provides information on the application procedures.
Ashwin Julka, Managing Partner
Remfry & Sagar
Professional qualifications. LLB, University of Delhi, 1991
Areas of practice. Practice area covers the broad spectrum of intellectual property with a special emphasis on trade mark laws and patent policy.
Non-professional qualifications. BA (Hons.) Economics, University of Delhi, 1988
Languages. English, Hindi
Member of INTA, APAA, ITMA, AIPPI, FICPI and PTMG.
Member of the Legal Practice Resources Committee, INTA.
Member of the BRICS IP Forum (BIPF) formed by Remfry & Sagar with its partners, Daniel Advogados (Brazil), Gorodissky & Partners (Russia), CCPIT Patent and Trade Mark Law Office (China) and Adams & Adams (South Africa).
Member of the Indo French Chamber of Commerce and the Indo German Chamber of Commerce.