JSS MAHAVIDYAPEETHA

JSS ACADEMY OF TECHNICAL EDUCATION, BENGALURU

Affiliated to Visvesvaraya Technological University, Belagavi, Karnataka, INDIA
Approved by All India Council for Technical Education, New Delhi
Accredited by NAAC with A+ Grade

Sub: Research Methodology and IPR (21RM156)

Ref: Text Book 2

Copyrights and Related Rights

‘Copyrights’ are legal rights granted by law to the original creator of the work in the fields of literature
and computer software.
The “Related Rights” encompass the author‘s work in the fields of dramatics, sound recording, film/video
recordings, paintings, architecture, etc.
Copyrights and Related Rights are one of the categories of IP and governed by the Copyright Act, 1957
of India. This Act provides rights of reproduction, communication to the masses, adaptation and
translation of the work.
An "author" in copyright is the person or group that creates something original. This could be a writer for
books, a computer programmer for software, a composer for music, a producer for films, or a photographer
for photos.
A "work" in copyright is what comes out of someone's creative effort. This includes things like books,
plays, music, art, movies, and recordings.

Classes of Copyrights
In India, following classes of Copyrights exist:

1. Literature: Books, Essays, Research articles, Oral speeches, Lectures, Compilations, Computer
programme, Software, Databases.
2. Dramatics: Screenplays, Dramas.
3. Sound Recordings: Recording of sounds regardless of the medium on which such recording is
made e.g. a Phonogram and a CD-ROM.
4. Artistic: Drawing, Painting, Logo, Map, Chart, Photographs, Work of Architecture, Engravings,
and Craftsmanship.
5. Musical: Musical notations, excluding any words or any action intended to be sung, spoken or
performed with the music. A musical work need not be written down to enjoy Copyright protection.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 6. Cinematograph Films: “Cinematograph Film” is a visual recording performed by any medium,
formed through a process and includes a sound recording. For example, Motion Pictures, TV
Programmes, Visual Recording, Sound Recording, etc.

Criteria for Copyright

To qualify for Copyright protection:

• A work must exist in physical form, with duration of its existence ranging from short to long.
• Any form of expression which can be viewed or listened, including impromptu speech notes, is
eligible.
• The work must be original, void of duplication, and expressed by the creator in their frame of
thought. This type of work is called an Original Work of Authorship (OWA).
• The original work may appear similar to existing works but should not be the same.
• In addition to originality for the work, Copyright protection also requires at least some creative
effort on the part of the author.
• There is no minimum limit for the extent of creativeness. It is a subjective matter. The minimal
level of creativity needed for Copyright protection depends on the judgment of the evaluator
(adjudicated by the Office of Registrar of Copyright).
• However, we should get it right what qualifies for copyright, for example, the below examples do
not get qualified for copyright,
o Mere changing the dimensions of a book will not be granted Copyright protection.
o Similarly, an address book of alphabetically arranged telephone numbers does not qualify
for Copyright protection

Ownership of Copyright
The Copyright laws clearly state the ownership of Copyright.

• The person who created the work is considered as the first (original) holder (owner) of the
Copyright.
• In case the author is an employee and has been contracted to do the work by a proprietor (of the
company/firm/society /organization, etc.), the owner of the Copyright shall be the proprietor.
• The government will be the primary owner of the government work in the absence of any kind of
arrangement.
• The person delivering a speech is the first owner of the Copyright.
To obtain permission to use copyrighted material, a request for the same should be made to the legal
owner (of the copyrighted material), which could be the original author, the legal heir (in case of the death
of the author), publisher, etc. The request must mention the following:

• Title, author and/or editor, and edition.

• Precise material to be used.
• The number of copies.
• The purpose of the material e.g. educational, research, etc.
• Form of distribution e.g. hard copy to classroom, posted on the internet.
• Whether the material is to be sold e.g. as part of a course pack.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Copyrights of the Author
Copyrights, protected under Section 14 of the Copyright Act, 1957, grant exclusive rights to creators in
publication, distribution, and usage.
A Copyright owner enjoys two types of rights i.e. Economic Rights (or Proprietary Rights) and Moral
Rights (or Personal Rights).
Economic Rights are associated with financial benefits accruing from the sale of copyrights. As per the
Act, Copyright owners can authorize or prohibit:

• Reproduction of the work in any form, including printed publications or sound recordings.
• Distribution of copies of the work.
• Public performance of the work.
• Broadcasting/communicating the work to the public.
• Translating the work into other languages.
• Adaptation of the work, such as converting a novel into a screenplay.
Moral Rights include “Right of Paternity” and “Right of Integrity”.
"Right of Paternity," allowing the original author to claim authorship even if copyright is licensed to
someone else. This means the author's name remains associated with the work.
The "Right of Integrity" empowers the author to prevent misuse, such as unauthorized alterations or
additions to the work that could harm the author's reputation or misrepresent the original creation.
It is pertinent to mention that for a work, there can be more than one rights holders, for instance, a musical
sound recording has many rights holders, such as the lyricist, music composer, singer, musicians and sound
recorders.

Copyright Infringements
As per the Copyrights Acts, 1957, the following acts are regarded as an infringement of Copyrights:

• Making copies for sale or hire or selling or letting them for hire without permission.
• Permitting any place for the performance of owned work (in public) where such performance
constitutes an infringement of Copyright.
• Distributing infringing copies for trade or to such an extent to affect the interest of the owner of
the Copyright prejudicially.
• Public exhibition of infringing copies for trade purposes.
• Importation of infringing copies.
• Translating a work without the permission of the owner.

Liability of Owner of an Auditorium/Hall

• The owner of an auditorium/hall is liable for punishment if he knowingly allows his premises to
be used for communication of illegal copyright material (songs, music, dramas, etc.) to the public.
• However, if they were unaware and had no reasonable grounds to believe that such public
communication would infringe copyright, they may be exempt from the offense.

Copyright Infringement is a Criminal Offence

➢ Under Section 63 of the Copyright Act, 1957, knowingly infringing copyright qualifies as a
criminal offense.
➢ The penalty for the first offense includes imprisonment for six months and a minimum fine of
₹50,000.
➢ For a second or subsequent conviction, the minimum punishment is one year of imprisonment and
a fine of ₹1,00,000.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 ➢ Copyright cases are handled by a dedicated Intellectual Property (IP) division, and a Copyright
Board, established in 1958 by the Central Government, is responsible for adjudicating specific
copyright claims.

Copyright Infringement is a Cognizable Offence

A police officer (rank of a sub-inspector or higher) can confiscate the infringed Copyright material without
issuing a warrant and produce the same in the court of law.

Fair Use Doctrine

Section 52 of the Copyright Act, 1957, provides for certain exceptions to the infringement of Copyright.
Limited use of Copyrighted materials for teaching and research purposes is legally permitted, under “The
Fair Use Doctrine”, which comprises of the four-part test:
➢ The character of the use - Use of the work is purely educational, non-profit and personal.
➢ Nature of the work - The use of work is factual in nature and not imaginative.
➢ Amount of the portion to be used - permission is not needed if only a small portion of Copyright
protected material is to be used. However, this parameter is debatable now.
➢ Impact of use on the value of the Copyrighted material - If a small portion of the work is copied
and is not affecting the author‘s economic and moral rights, it will be excused from the
infringement.
Detailed information on the examples of the “Fair Use Doctrine” can be accessed from the official
website (http://copyright.gov.in/ exceptions.aspx).
A few examples are listed below:
❖ If the Copyrighted work is used for personal use i.e. studies or research.
❖ Quotation mentioned in the Copyrighted work.
❖ Reporting of current events in the media, such as newspapers, magazines or radios/television.
❖ Reproduction of the work by teachers or scientific researchers.
❖ Performance is free of charge by government officials in the performance of their duties e.g.
reproduction of any work for a judicial proceeding or a report of a judicial proceeding.
❖ Use of any work prepared by the Secretariat of a Legislature.
❖ Use of the work in a certified copy made or supplied in accordance with any law for the time being
in force.
❖ Making three or less than three copies of a book (including a pamphlet, sheet of music, map, chart
or plan).
❖ Bonafide religious ceremony, including a marriage function.

Copyrights and Internet

The twenty-first century is an era of digitization. The Copyrighted data is quickly transmitted via the
internet. This method of data transmission has brought amendments to the existing Copyright laws.
One should be careful of Copyright/fair use principles when downloading material from the internet. There
is growing concern about the ability to pull Copyrighted material from the internet without permission.
Note that material may have been placed on the internet without the author‘s permission.
Posting material on the internet by the Copyright owner gives an internet user the right to use that material
for his personal use, but he cannot use the work for commercial purposes.
Electronic distribution of a Copyrighted work should mention the statement that “This work is protected
by Copyright laws and is provided for educational instruction only. Any infringing use may be subject
to disciplinary action and/or civil or criminal liability as provided by law”.

Non-Copyright Work
The works not under the jurisdiction of Copyrights are as follows:

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 ➢ The ideas, concepts, and principles themselves cannot be protected under Copyright, only the form
in which they are expressed can be copyrighted.
➢ Facts, such as scientific or historical discoveries, are not copyright protected. Any fact a person
discovers in the course of research cannot be Copyright protected. For example, an author of a
book on “Buddhism” takes ten-fifteen years to gather all the necessary materials and information
for his work. At a great expense, the author travels to various museums, libraries and excavations
sites. However, after the book is published, anyone is free to use the underlying facts, provided
they express the information on their own.
➢ Copyright does not protect titles, names, slogans, short phrases, short word combinations, methods,
or factual information.
➢ Certificates are not considered as Copyrightable subject matter as there is not much scope for
creativity.
➢ Digitally created works and Copyrighted works transformed into a digital format and placed on the
internet are Copyright protected.
➢ The Copyright registration for a website, as a whole, is not possible. However, different
components/rudiments of a website can be granted Copyright registration e.g. computer
programmes/software, compilations including computer databases (‘literary works‘), photographs,
paintings, diagram, map, chart or plan (‘artistic works‘), and works consisting of music including
graphical notation of such work (‘musical works‘). However, a separate application for each
component of work has to be filed for seeking Copyright registration.
➢ A computer or mobile App qualifies for Copyright registration. An application is a complete, self-
contained computer program that is designed to perform a specific task. An App usually has
dynamic content and is designed for user interaction. It may be used directly or indirectly in a
computer or handheld electronic device.
➢ If someone takes your picture, song, or video from the internet without permission and uses it for
their own purposes, it's copyright infringement. The same applies if you use someone else's
material without permission.

Copyright Registration
➢ It is not necessary to register a work to claim Copyright.
➢ Once a work is created via any medium, the work receives automatic Copyright safety.
➢ In other words, there is no formal request to be submitted to the office of the Copyright, for
acquiring Copyright.
➢ Copyright registration does not confer any rights. It is merely a prima facie proof of an entry in
respect of the work in the Copyright register maintained by the Registrar of Copyrights.
➢ The certificate of registration serves as prima facie evidence in a court in cases of disputes relating
to ownership or creation of Copyright, financial matters, transfer of rights, etc.
➢ It is advisable that the author of the work registers for Copyright for better legal protection.
➢ In India, Copyrights matters, including Copyright registration, are administered under the
Copyright Act, 1957 and Copyrights Rule, 2013.

Application for registration of copyright Important forms pertaining to Copyrights

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Copyright filing to grant are depicted below in the flow chart:

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Judicial Powers of the Registrar of Copyrights
When hearing a suit under the Code of Civil Procedure, the Registrar of Copyrights has the authority of a
civil court in the following areas:

• Summoning and enforcing the attendance of any person and examining him on oath.
• Requiring the discovery and production of any document.
• Receiving evidence on affidavit.
• Issuing commissions for the examination of witnesses or documents.
• Requisitioning any public record or copy thereof from any court or office.
• Any other matters which may be prescribed.
A duly filled application (Form XIV) is submitted to the Copyright Office at the following address: The
Registrar of Copyright, Plot no. 32, Boudhik Sampada Bhawan, Sector 14, Dwarka, New Delhi - 110075.
The application can be submitted by post or online registration through the ‘E-filing facility‘
(www.copyright.gov.in).
Any person who is either an author of the work or assignee of the concerned work can file an application
for Copyright.
It takes around 2-3 months to get the work registered by the Copyright Office. After applying, there is a
mandatory waiting period of 30 days. If any person has any objection to the claim/s made in the application,
he can contact the office of the Registrar of Copyrights. After giving an opportunity of hearing to both the
parties, the Registrar may decide the case in favour or against the author of the work. Once the objections
(if any) are cleared, the application is evaluated by the examiners. If any doubts/queries are raised, the
applicant is given ample time (around 45 days) to clear these objections.

Fee Structure

Copyright Symbol
It is not necessary to place the Copyright symbol © with your name and ‘year created‘ near your published
or printed materials. But if you do, it‘s easier to nail someone for infringement on your Copyright if you
go to court.
The important things which may be mentioned as a Copyright mark on Copyright creation are:

• The Copyright symbol © (the letter C in a circle), or the word. ’Copyright‘, or the abbreviation
‘Copr’.
• In the case of compilations or derivative works incorporating previously published material, the
year with the date of the first publication of the compilation or derivative work should be
mentioned. The year date may be omitted for pictorial, graphic, sculptural work, greeting cards,
postcards, stationery, jewellery, dolls and toys.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 • The name or the abbreviation by which the name can be recognized of the owner of the Copyright,
or a generally known alternative designation of the owner can be mentioned.
• The elements for sound recordings generally require the same three elements, except the symbol
is ℗ (the letter P in a circle) instead.

Validity of Copyright
In general, the validity of Copyright is for 60 years. This period starts either from the year after the death
of the author (in case of literature, dramatic, musical and artistic works) or from the date of publication of
the work (in case of cinematograph films, sound recordings, photographs, posthumous publications, works
of government and works of international organisations).

Copyright Profile of India

(https://ipindia.gov.in/annual-reports-ipo.htm)

Copyright and the word ‘Publish’

A work is considered published when it is in the public domain on an unrestricted basis. For example, a
person writes an article called ‘Life in Himalayas‘ and distributes it to a few individuals and/or
societies/organizations with a restriction not to disclose the contents of the article. ‘Life in Himalayas‘ has
not been ―published in the Copyright sense.
If the author removes the condition of non-disclosure or posts of this article on the internet (i.e. public
domain), it would be considered as published.
It is to be noted that both published and unpublished works can be registered under Copyright.

Transfer of Copyrights to a Publisher

Copyright Creators often lack the financial means to promote their copyrighted work and typically sell
rights to publishers for compensation, which can be a lump sum or royalties. Unconditional transfer of
copyrights to publishers may have drawbacks for the owner. Publishers might restrict the display of an
author's work on certain platforms, limit revisions, print inadequate hard copies, and refuse to upload soft
copies online. Careful consideration is necessary when transferring rights to publishers to avoid potential
negative consequences for the copyright owner.
Hence, one must be careful in signing an agreement with the publishers. When entering agreements with
publishers, authors should exercise caution to avoid relinquishing all their legal rights. They can sign
agreements allowing print and hard copy sales by the publishers while retaining digital rights. Authors may
also set time limits for the printing and sale of their works.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

In the pre-digital era, authors relied solely on publishers for disseminating their work. With the internet era,
this dependency has significantly decreased, enabling authors to bypass traditional publishers and directly
share their work with the public. However, authors already under publishing contracts may not have the
same freedom to independently release their content.
Even though the author has completely and exclusively licensed out his work, the Copyright Act has a
provision under ‘termination of transfer’ to reclaim his Copyright. Under this provision, certain Copyright
agreements can be terminated after 35 years of the agreement. This statutory termination right applies even
though it is not incorporated in the agreement. It is strongly advised that authors must apply their mind
while signing the Copyright agreement.

Copyrights and the Word ‘Adaptation’

In the world of Copyright, the word ‘Adaptation‘ signifies the creation of a similar work based upon
contemporary work.
The Copyright Act defines the following actions as adaptations:
a) Transformation of a dramatic work into a non-dramatic work.
b) Changing a literary or artistic work into a drama.
c) Re-arrangement of a literary or dramatic work.
d) Depiction through pictures of a literary or dramatic work.
e) The making of a cinematograph film of a literary or dramatic or musical work.

Copyrights and the Word ‘Indian Work’

‘Indian work‘ means a literary, dramatic or musical work provided

• The author of the work is an Indian citizen.

• The work is first published in India.
• In the case of an unpublished work, at the time of the making of the work, the author of the work
was a citizen of India.

Joint Authorship
‘Work of Joint Authorship‘ means a work produced by the collaboration of two or more authors in which
the contribution of one author is not distinct from the contribution of the other author or authors.

Copyright Society
Authors and copyright owners often face challenges in tracking the various uses of their work, such as
collecting royalties and addressing infringement issues.
To address these issues, Copyright Societies have emerged. These are registered collective administration
societies formed by authors and copyright owners, as defined in Section 33 of the Copyright Act, 1957.
The purpose is to streamline the management of copyrights and facilitate proper compensation for the use
of creative works. A Copyright Society can be formed by a group of seven or more copyright holders.
Society can perform the following functions:

• Keep track of all the rights and infringements related to their clients.
• Issue licences in respect of the rights administered by the society.
• Collect fees in pursuance of such licences.
• Distribute such fees among owners of Copyright after making deductions for the administrative
expenses.

Copyright Board

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

The Copyright Board is a regulatory body constituted by the government, to perform judicial functions as
per the Copyright Act of India. The Board comprises of a Chairman and members (2-14) to arbitrate on
Copyright cases. The Chairman of the Board is of the level of a judge of a High Court.
As per the Act, the Board has the power to:

• Hear appeals against the orders of the Registrar of Copyrights.

• Hear applications for rectification of entries in the Register of Copyrights.
• Adjudicate upon disputes on the assignment of Copyrights.
• Grant compulsory licences to publish or republish works (in certain circumstances).
• Grant compulsory licence to produce and publish a translation of a literary or dramatic work in any
language after seven years from the first publication of the work.
• Hear and decide disputes as to whether a work has been published or about the date of publication
or the term of Copyright of a work in another country.
• Fix rates of royalties in respect of sound recordings under the cover-version provision.
• Fix the resale share right in original copies of a painting, a sculpture or a drawing and original
manuscripts of a literary or dramatic or musical work.

Copyright Enforcement Advisory Council (CEAC)

In 1991, the Government set up a CEAC to review the progress of enforcement of the Copyright Act
periodically and advise the Government regarding measures for improving the enforcement of the Act. The
term of the CEAC is three years. The CEAC is reconstituted periodically after the expiry of the term.

International Copyright Agreements, Conventions and Treaties

Copyright laws are territorial by nature i.e. Laws are valid only in the country in which they have been
created. To secure protection to Indian works in foreign countries, the author needs to apply separately to
each country or through dedicated international 'Conventions on Copyright and Neighbouring (related)
Rights‘, provided a country is a member of such Conventions.
India is a member of the following Conventions:

• Berne Convention for the Protection of Literary and Artistic Works, 1886.
• Universal Copyright Convention, 1952.
• Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organizations, 1961.
• Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties, 1979.
• Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1995.
India safeguards foreign authors' copyrights through the International Copyright Order, ensuring
compliance with the Berne Convention, Universal Copyright Convention, and TRIPS Agreement.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Interesting Copyrights Cases
1. David vs. Macaques, Indonesia, 2011

• In 2011, UK photographer David Slater set up his camera in an Indonesian wildlife sanctuary to
capture images of Macaques monkeys.
• The monkeys, curious about the camera, interacted with it, and one monkey took a selfie.
• A legal dispute arose over the copyright of the photograph, with People for the Ethical Treatment
of Animals (PETA) challenging Slater's claim.
• The settlement concluded that Slater retains the copyright due to his substantial contribution, but
he agreed to pay 25% of the royalty share to the wildlife sanctuary where the monkey resides.
• This resolution balances the photographer's rights with a contribution to the conservation efforts of
the sanctuary.

2. ‘Happy birthday to you’ case law

• According to the Guinness World Records, 1998, "Happy Birthday to You" is recognized
as the most well-known English song.
• The melody of ‘Happy Birthday to You‘ originates from the song ‘Good Morning to All‘,
created by sisters Patty Smith Hill and Mildred J. Hill. in 1893.
• In 1935, Clayton F. Summy Company (“Summy”) obtained legal protection for the specific
arrangement or musical interpretation of the ‘Happy Birthday to You‘ song when played
on the piano working with the Hill Sisters.
• In 1988, Warner/Chappell Music purchased the company owning the copyright for US
$25 million, with the value of “Happy Birthday” estimated at US $5 million.
• “Happy Birthday to You” had reportedly been generating some $2 million in royalties per
year for Warner/Chappell Music.
• It turns out that the Hill sisters never actually asserted claims to the lyrics, but rather just
the melody. Thus, while Warner/Chappell, the company that acquired the rights from
Summy in 1988, has been asserting rights to the song and drawing royalty revenue, this
has been based upon an invalid copyright.
• Although Summy and Warner/Chappell believed they were entitled to both the lyrics and
the melody, the court found no evidence that the lyrics were included in the original 1935
transfer. Since Summy never acquired the rights to the Happy Birthday lyrics, neither did
Warner/Chappell.
• All the money that Warner/Chappell has made since 1988 demanding licensing royalties
has been gravy for the company!
• People used to have to pay royalties to the copyright holder to be able to sing happy
birthday in a commercial setting, but as of September 2015 a judge ruled against the
copyright held by Warner/Chappell Music. Since then, you have been able to sing happy
birthday legally without paying for it.
3. Amitabh Bachchan to lose Copyrights over his father’s works in 2063
Father of renowned actor Mr. Amitabh Bachchan, (late) Shree Harivansh Rai Bachchan was a noted poet
and Hindi writer. His most famous work was Madhushaala (1935). He was the recipient of the Sahitya
Akademi award and the Padma Bhushan. He also did Hindi translations of Shakespeare‘s Macbeth and

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Othello. He passed away on 18th January 2003, at the age of 95. As per the Copyright Act, 1957, the rights
over his work will be completed in the year 2063 (‘rights remain with the author for his lifetime plus 60
years’).

Trademarks ( )
A Trademark (or Trade Mark) is a unique symbol which is capable of identifying as well as
differentiating products or services of one organization from those of others.
The word ‘Mark‘ stands for a sign, design, phrase, slogan, symbol, name, numeral, devise, or a combination
of these.
Essentially, the Trademark is anything that identifies a brand to a common consumer.

Eligibility Criteria
For goods/services to be legally classified as Trademark, they need to pass the following conditions:
➢ Distinctiveness - The goods and services for which the protection is sought should possess enough
uniqueness to identify it as a Trademark. It must be capable of identifying the source of goods or
services in the target market.
➢ Descriptiveness - The Trademark should not be describing the description of the concerned goods
or services. Descriptive marks are unlikely to be protected under Trademark law. However,
descriptive words may be registered if they acquire ―secondary meaning‖, such as the brand name
‘Apple‘ is used by a USA based multinational company that manufactures electronic gadgets.
➢ Similarity to the prior marks - The mark should be unique and should not be having similarity
to the existing marks.

Who Can Apply for a Trademark

Any person who is a proprietor of the Trademark is eligible to apply for registration of Trademark. The
mark can be filed collectively by two or more applicants and for that purpose, support documents need to
be submitted.
An organization or association can file for the collective mark and the same can be used by its members.
The most appropriate example for this mark is the ‘Reliance‘ symbol, which indicates all products falling
under the organization

Acts and Laws

In India, Trademarks are governed under The Trademarks Act, 1999. The Acts and Rules have been
amended from time to time. The latest amendments were done in 2010 and 2017 for Trademarks Acts and
Trademarks, respectively. The administration of matters pertaining to Trademarks is carried out by the
Office of CGDPDTM, GoI.
(The latest amendment is - Item 30 to the Schedule of Jan Vishwas, as I will refer to it here, effects changes
to the Trade Marks Act, 1999)

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Designation of Trademark Symbols
Represents that the Trademark is unregistered. This mark can be used for promoting the
goods of the company.
Represents that the Trademark is unregistered. This mark can be used for promoting brand
services.
R Represents a registered Trademark/Service. The applicant of the registered Trademark is
its legal owner.

Classification of Trademarks
Goods and Services under Trademarks are classified as per the ‘Nice Agreement‘ (1957) administered by
WIPO.
A total of 149 countries (84 state parties who are signatory to the Agreement and 65 additional states who
are following this classification for the Trademarks) and others (African Intellectual Property Organization,
African Regional IP Organization and Trademark Office of European Union) are using the same Trademark
classification.
Trademark classification comprises of 45 classes, out of which 34 are for goods and 11 are for services.
Class 1 is for Chemicals for use in industry, science and photography, agriculture, horticulture and forestry;
Unprocessed artificial resins, unprocessed plastics; Fire extinguishing and fire prevention compositions;
Tempering and soldering preparations; Substances for tanning animal skins and hides; Adhesives for use
in industry; Putties and other paste fillers; Compost, manures, fertilizers; Biological preparations for use in
industry and science.
Class 45 is for legal services; Security services for the physical protection of tangible property and
individuals; Personal and social services rendered by others to meet the individuals‘ needs.
The Vienna codification established under the Vienna Agreement (1973) is an international
classification of the figurative elements of marks.
The classification is used to divide all figurative elements into categories (from 1 to 29), divisions (from 1
to 19) and sections (from 1 to 30).
For example, the representation of "a little girl eating" belongs to Category 2 (Human beings), Division 5
(Children), Main Section 3 (Girls).
If auxiliary sections are used, the figurative element can be identified additionally with the Auxiliary
Section 18 (Children drinking or eating, Code A 2.5.18).
The codification of this example will be then indicated as 2.5.3, 18 (main and auxiliary sections).

Registration of a Trademark is Not Compulsory

Although, registration of a Trademark is not compulsory, registration provides certain advantages to the
proprietor of the Trademark, such as:
➢ Legal Protection – prevents the exploitation of the Registering Trademark by other
companies/organizations/individuals, without proper authorization by the legal owner/s of the
Trademark. In case of legal suits, a registered Trademark can serve as a potent evidence of the
lawful proprietorship of the Trademark.
➢ Exclusive Right - grants the Trademark owner full rights to use it in any lawful manner to promote
his business.
➢ Brand Recognition - products/ services are identified by their logo, which helps create brand value
over time. A strong brand is a huge pull for new customers and an anchor for existing customers.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 Registering a Trademark early and using it will create goodwill and generate more business for the
brand owner.
➢ Asset Creation - registered Trademark is an intangible property of the organization. It can be used
for enhancing the business of the company as well as drawing new clients and retaining old one by
the account of brand identification.
It is pertinent to mention that no legal course of action can be taken against the unlawful use of an
unregistered Trademark. For unregistered marks (sometimes known as ‘Common Law Trademarks‘, which
are defined as the law rights which generally do not require formal registration for enforcement) action can
be brought against any person for the passing off goods or services as the goods or services provided by
another person. In such cases, the unregistered Trademarks have to prove the establishment of goodwill or
reputation connected with the goods or service.

Validity of Trademark
In India, a registered Trademark is valid for 10 years. The period can be extended every 10 years,
perpetually. As per the Indian Trademarks Act, the renewal request is to be filed in the form ‘TM-R‘ within
one year before the expiry of the last registration of the mark.

Types of Trademark Registered in India

Trademark can be a word that must be able to speak, spell and remember. It is highly recommended that
one should choose the Trademark like invented word, created words, and unique geographical name. One
should refrain from Trademarks like common geographical name, common personal name and the praising
words which describe the quality of goods, such as best, perfect, super, etc. To ensure all these
characteristics in a Trademark, it is suggested to conduct a market survey to ensure if a similar mark is used
in the market.
Following are some examples of the registerable Trademarks:
➢ Any name including personal or surname of the applicant or predecessor in business or the
signature of the person e.g. the Trademark ’BAJAJ‘ is named after industrialist Mr. Jamnalal Bajaj.
➢ A word having no relevance to the product/services e.g. Trademark ‘INDIA GATE‘ is being used
for food grains and allied products.
➢ Letters or numerals or any combination thereof e.g. ‘YAHOO‘ is the abbreviation of the phrase
‘Yet Another Hierarchical Officious Oracle‘. It has now become a worldwide famous Trademark.

Some of the famous examples of Trademarks.

Note: Trademark Registry will object to yet to be registered Trademark if it is similar in looks or sound to the ones already registered
e.g. a keyword like Ford can have the following terms that are similar sounding: Foard, Phord, Fordd, Forrd. In case one wishes to carry
out a search (identical as well as similarity), one may use the free government portal http://ipindiaservices.
gov.in/tmrpublicsearch/frmmain.aspx

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Trademark Registry
In India, the operations of Trademarks are carried out from five cities i.e. Delhi, Mumbai, Ahmadabad,
Kolkata, and Chennai. Each city has been assigned a bunch of states
Territorial jurisdiction of Trademark registration offices.

Process for Trademarks Registration

Prior Art Search: Prior Art Search - Prior to applying for Trademark registration, it is always prudent to
check whether the intended Trademark is already registered or not. Also, it is ascertained whether the
intended Trademark is not similar to the ones already registered. Search can be done by:
➢ Public search for Trademarks by CGPDTM
➢ WIPO‘s Global Brand Database
➢ Trademark Electronic Search System (TESS).
➢ MARKARIA Trademark Search Engine.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 ➢ VAKIL Search
Once the ‘prior art search‘ is over and the applicant is convinced about the distinctiveness of the Trademark,
he can proceed to fill the application form for registration (TM-A). The application is filed at the
Trademarks Office subject to the jurisdiction of the applicant.
The steps involved in the registration process are as follows:

• After the prior art search has been conducted, the applicant can apply for the registration on his
own or with the help of a certified agent.
• The application is assigned an application number within a few days.
• The application is scrutinized by a professional examiner. If everything is in order, the particulars
of the application are published in the official Trademark journal. Otherwise, he will send the
objections to the applicant for rectification. Based on the satisfactory response, the examiner would
recommend the revised application to be published in the journal. If the application is rejected, the
applicant may approach the Intellectual Property Division to challenge the rejection of an application
by the examiner.
• Once the Trademark is published in the official journal, the public has an opportunity to file an
objection, if any, within 90 days.
• After hearing both the parties, the officer decides whether to proceed further for the grant of
Trademark or disallow the grant of Trademark.
• In case of unfavourable outcome, the applicant has the right to contest the decision in front of the
IPAB.
• Once the application has successfully completed all formalities, a Trademark registration certificate
is issued in the name of the applicant.

Important Queries/Facts About Trademarks

Can any correction be made in the application or register
Yes, The rectifications are possible, but the applicant has to ensure that the corrections made in the
Trademark do not alter its identity significantly.
Can a registered Trademark be removed from the register
Yes, it can be removed if,
✓ Trademark was registered without any bona fide intention of using it.
✓ If the Trademark is not being used for a continuous period of 5 years from the registration date or
3 months prior to filing the application for registration.
✓ Registered Trademark was disallowed but inadvertently existed in the official register.
✓ Trademark Registrar has the power to terminate a registered Trademark on a suo moto basis.
Is the sound or smell registrable as a Trademark
sound or smell is registrable as a mark, as long as it is distinct and can be reproduced graphically. The
Trademark, ‘4711 cologne‘ has been registered as a chemical formula. The sound can be registered as a
Trademark, provided it can be recorded in MP3 format and depicted graphically.
Can a registered user restrain the third party from using an identical or similar mark which is not
registered
There is no clear cut answer for such situations. It depends on the circumstances of the matter. But
ordinarily, a registered user cannot restrain the third party from using identical or similar marks if the third
party has been continuously using the mark concerning the same goods or services from a date prior to the
date of use of the registered mark or date of registration.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Seeking Trademark Protection in a Foreign Country
To file the Trademark in a foreign country, there are two options available for the applicant. He can either
file the Trademark application with the Trademark Office of the country in which he wishes to seek
protection, or he can use WIPO‘s Madrid System through which the registration can be filed in multiple
countries by claiming priority of one of the signatory countries. This priority has to be claimed within six
months of the first filing. The applicant can file a single application for seeking protection in any number
of countries that are members of WIPO by paying a single set of fee.

Trademarks Statistics (India)

Trademarks profile (India) for the period 2010-20

During this period, an increase of 95%, 65% and 154% was observed in the parameters of trademarks filed,
examined and registered, respectively. Overall, a gradual increase was seen in the number of TM filed, but
a zig-zag curve was observed for the TM examined for the period 2010-16. The highest number of TM
applications (5,32,230) were examined in 2016-17 followed by dip (nearly two folds) in the following year
(2017-18). The following two years (2018-20) showed some recovery, with 3,38,551 applications examined
in 2019-20. In case of TM registration, first, five years (2010-15) showed a downward trend. But, a
significant leap of nearly four-folds was observed in the next year i.e. 2016-17. The maximum number of
TM (3,16,798) were registered in the year 2018-19.

International Treaties and Conventions

There is a provision to file an international application for the Trademarks to seek protection in other
Convention countries. The rules and regulations to file international applications in Convention countries
are concluded under the following treaties and agreements administered by WIPO.

• The Madrid Agreement for International Registration of Marks (1891)

• The Nice Agreement for International Classification of Goods and Services (1957).
• The Trademark Law Treaty (TLT) (1994)
• Vienna Agreement (1973) for the Classification of Figurative Marks.

Famous Case Law: Coca-Cola Company vs. Bisleri International Pvt. Ltd.

In a legal dispute between Coca-Cola Company and Bisleri International Pvt. Ltd. over the trademark
"MAAZA," the following key points emerged:

1. Trademark Ownership Transfer: The Indian company, Bisleri International Pvt. Ltd., initially
owned the registered trademark "MAAZA," a popular mango fruit drink in India. The company
transferred the rights, including the formulation, intellectual property rights (IPR), and goodwill,
to Coca-Cola for the Indian territory.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 2. Trademark Application in Turkey: Despite the transfer of rights to Coca-Cola, Bisleri
International Pvt. Ltd. applied for the registration of the trademark "Maaza" in Turkey in 2008
and began exporting the product with this mark.
3. Legal Action by Coca-Cola: Coca-Cola, aggrieved by this move, filed a petition seeking a
permanent injunction and damages. The claim asserted infringement and passing-off of the
trademark. The argument was that since the "Maaza" mark for the Indian market was assigned to
Coca-Cola, any use of the mark, whether for domestic sales or export, would constitute
infringement.
4. Court Decision: After considering the arguments from both parties, the court granted an interim
injunction against Bisleri International Pvt. Ltd. This injunction prohibited the defendant from
using the trademark "MAAZA" in both the Indian market and for export. The court deemed such
usage to be an infringement of the trademark owned by Coca-Cola.

In summary, the court sided with Coca-Cola, issuing a temporary ban on the use of the "MAAZA"
trademark by Bisleri International Pvt. Ltd. in both domestic and export markets, based on the rights
acquired by Coca-Cola through the transfer.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru