RM Unit 4

Reasearch Methodology and IPR
UNIT - 4
Syllabus :
Copyrights and Related Rights: Classes of Copyrights. Criteria for Copyright.
Ownership of Copyright. Copyrights of the Author. Copyright Infringements.
Copyright Infringement is a Criminal Offence. Copyright Infringement is a
Cognizable Offence. Fair Use Doctrine. Copyrights and Internet. Non-Copyright
Work. Copyright Registration. Judicial Powers of the Registrar of Copyrights.
Fee Structure. Copyright Symbol. Validity of Copyright. Copyright Profile of
India. Copyright and the word ‘Publish’. Transfer of Copyrights to a Publisher.
Copyrights and the Word ‘Adaptation’. Copyrights and the Word ‘Indian Work’.
Joint Authorship. Copyright Society. Copyright Board. Copyright Enforcement
Advisory Council (CEAC). International Copyright Agreements, Conventions
and Treaties. Interesting Copyrights Cases. Trademarks: Eligibility Criteria. Who
Can Apply for a Trademark. Acts and Laws. Designation of Trademark Symbols.
Classification of Trademarks. Registration of a Trademark is Not Compulsory.
Validity of Trademark. Types of Trademark Registered in India. Trademark
Registry. Process for Trademarks Registration. Prior Art Search. Famous Case
Law: Coca-Cola Company vs. Bisleri International Pvt. Ltd.
Copyrights and Related Rights
 ‘Copyrights‘ refer to the legal rights provided 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.
 The words ‘author‘ and ‘work‘ need to be understood from the perspective
of Copyrights. The term ‘author’ refers to an individual who develops the
content (of work). The author can be a writer (literary work), computer
programmer (software), composer (musical work), producer (cinema films,
sound recording), photographer (photos). The term ‘work’ is a task
undertaken in the fields of literature, dramas, music, artistic,
cinematograph film and sound recording.
1|Pag e Karthika S, A sst. P rof, SJCI T

Classes of Copyrights
In India, following classes of Copyrights exist:
 Literature: Books, Essays, Research articles, Oral speeches, Lectures,
Compilations, Computer programme, Software, Databases.
 Dramatics: Screenplays, Dramas.
 Sound Recordings: Recording of sounds regardless of the medium on which
such recording is made e.g. a Phonogram and a CD-ROM.
 Artistic: Drawing, Painting, Logo, Map, Chart, Photographs, Work of
Architecture, Engravings, and Craftsmanship.
 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.
 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 some physical (or
tangible) form. The duration of the existence of the physical form may
vary from a very short period to many years. Virtually any form of
expression which can be viewed or listened to is eligible to qualify as
Copyright.
 Even hurriedly scribbled notes for an impromptu speech are considered
copyrightable material.
 The work has to be original i.e. the author created it from independent
thinking void of duplication. This type of work is termed as an Original
Work of Authorship (OWA). It may appear similar to already 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.
 The minimal level of creativity needed for Copyright protection depends
on the judgment of the evaluator (adjudicated by the Office of Registrar of
Copyright).
 As an example, mere changing the dimensions of a book will not be granted
Copyright protection. Similarly, an address book of alphabetically arranged
telephone numbers does not qualify for Copyright protection as it involves
a straightforward alphabetical listing of phone numbers rather than a
creative selection of listings.

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 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.
Copyrights of the Author
 The Copyrights of the creator/author are legally protected under Section 14

of the Copyright Act, 1957. The content (i.e. work) created by the author
cannot be used or published by anyone without the author‘s consent.
 Copyrights provide exclusive rights to the author in the areas of
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‘. The 'Right
of Paternity‘ - even if the Copyright has been licensed to another party, the
original author of the work retains the right to claim authorship i.e. the name of
the author/s will remain even though Copyrights have been transferred to another
party e.g. a book publisher. The ‘Right of Integrity‘- the original author has the
right to prevent misuse of the work e.g. alterations/additions/ deletions in work
resulting in misrepresentation of the said work or harming the honor and
reputation of the author.
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.
If a person permits for profit any place to be used for communicating the work to
the public, where such communication establishes an infringement of the
Copyright unless he was not aware of and had no reasonable ground for believing
that such communication to the public would be an infringement of Copyright,
he will be deemed to have committed an offence under the Copyright Act.
Copyright Infringement is a Criminal Offence
 According to Section 63 of the Copyright Act, 1957, if any person

knowingly infringes the Copyright, he qualifies for the criminal offence.
 The punishment awarded for the infringement (of Copyright) is
imprisonment for six months with the minimum fine of ₹ 50,000/-.
 In case of a second and subsequent conviction, the minimum punishment

is imprisonment for one year and a fine of ₹ 1,00,000.
 There is a dedicated IP division to deal with Copyright cases. Also, there is
a Copyright Board constituted by the Central Government in 1958 to
adjudicate certain claims about Copyright.
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
‘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 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.
 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”.
 As per Section 2(o) of the Copyright Act, 1957, ‘Literary Work‘ includes
computer programmes, tables and compilations, including computer
databases. It is mandatory to supply. ‘Source Code‘ and ‘Object Code‘
along with the application for registration of Copyright.
Non-Copyright Work
The works not under the jurisdiction of Copyrights are as follows:

 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.
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 swipes your picture/song/video from the internet and uses it for their
purposes, it is a Copyright infringement. By the way - the same is true if you nick
some else‘s material for your purposes.
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.
 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.
Below mentioned are prominent forms for copyright registration



Judicial Powers of the Registrar of Copyrights
The Registrar of Copyrights has the powers of a civil court when trying a suit
under the Code of Civil Procedure in respect of the following matters:
 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. The
application can be submitted by post or online registration through the ‘E-filing
10 | P a g e Karthika S, A sst. P rof, SJCI T

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.
Usually, 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. The elements
included in Copyright filing to grant are depicted below in the flow chart:

Fee Structure
For each work, a separate application form needs to be submitted, along with the
requisite fee. The fee is not reimbursable in case the application for registration
is rejected.

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.
 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

A comparative five years (2015-20) study revealed a gradual increase in the
number Copyright applications in the first four years of the study, with a
maximum number of applications (21,905) recorded in the 2019-20 period (Fig.
2.7). The number of applications examined was maximum (34,388) in 2017-18.
However, it tapered down to 22,658 in 2018-19 and 19,460 in 2019- 20. A similar
trend was observed in the number of Copyright registrations, with a peak (19,997)
observed in 2017-18.

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
nondisclosure 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
 The original authors of the Copyrighted work may not have the
wherewithal to widely publicise their work.
 Usually, they transfer their rights to publishers for financial benefits, which
could be a one-time lump sum amount or royalties or a combination of the
two.
 However, transferring Copyrights unconditionally to the publishers (or
anybody else) may have some repercussions for the owner of the
Copyright. A publisher may prevent author/s from displaying their articles
on the institute‘s websites

 The new owner of Copyright may not even allow the author to revise his
work. In other instances, a publisher might print an insufficient number of
hard copies and also does not show interest in uploading the soft copy of
the work on the internet.
 Hence, one must be careful in signing an agreement with the publishers.
The author may not transfer all the legal rights bestowed upon him as an
author.
 An agreement may be signed permitting only the print and sale of hard
copies by the publishers while retaining digital rights for the said work. An
author may also put a time limit for the printing and sale of the
books/articles, etc.
 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.
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
Many a time, authors and other owners of Copyrights are either unable or lose
track of all the uses of their work, including the collection of royalties,
infringement issues, etc. To overcome these hurdles, Copyright Societies have
cropped up. As per Section 33 of the Copyright Act, 1957, a Copyright Society is
a registered collective administration society formed by authors and other owners
of the Copyright.
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.
A Copyright Society can be formed by a group of seven or more copyright

holders. The term of registration of a Copyright Society is for five years. The
registered Copyright Societies in India are:
 Society for Copyright Regulation of Indian Producers for Film and Television
(SCRIPT) (for cinematograph and television films).
 The Indian Performing Right Society Limited (IPRSL), (for musical works).
 Phonographic Performance Limited (PPL (for sound recordings).
Copyright Board
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
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.
In India, Copyrights of foreign authors, whose countries are members of the

Berne Convention for the Protection of Literary and Artistic Works (1888),
Universal Copyright Convention (1952) and the TRIPS Agreement (1995) are
protected through the International Copyright Order.
Interesting Copyrights Cases
David vs. Macaques, Indonesia, 2011 - In 2011, a UK-based photographer

David Slater put his camera on a tripod in the wildlife sanctuary to click the
photograph of Macaques monkeys. The Macaques were very curious about the
equipment and they found the flashlight fascinating. One monkey clicked a selfie
photograph which became very famous and legally controversial on the matter of
Copyright. Theoretically, the monkey is the holder of Copyright as he clicked the
photo. Practically, David Slater was the claimant of the Copyright. The dispute
entered judicial quarters between People for the Ethical Treatment of Animals
(PETA) and David Slater. Now, the settlement has been concluded. The
photographer i.e. David Slater withholds the Copyright of the picture for having
a substantial contribution, but he would pay 25% of the royalty share to the
wildlife sanctuary where the monkey lives
‘Happy birthday to you’ case law - According to the Guinness World Records,
1998, it is the most recognized song in the English language. The melody of
‘Happy Birthday to You‘ originates from the song ‘Good Morning to All‘, which
has traditionally been attributed to American Sisters, namely Patty Smith Hill and
Mildred J. Hill, in 1893. The sisters composed the melody of ‘Good Morning to
All‘ to make it more interesting for the children. In 1935, Summy Company
registered the Copyright on the Piano Setting on the Song. In 1999
Warner/Chappell acquired the company and started taking royalty for the happy
birthday song and earned a huge amount. After mediation by the Federal court,
Warner Music, through its publishing subsidiary Warner/Chappell, agreed to pay
the settlement to a class of ‘thousands of people and entities‘ who had paid

licensing fees to use the song since 1949 because only the melody was registered
and not the lyrics. Now the song is in the public domain.
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 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).
Trademark
In simple language, 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
Trademark rules are governed by Trademarks Rules, 2002. 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.
Designation of Trademark Symbols

TM Represents that the Trademark is unregistered. This mark can be used for
promoting the goods of the company.
SM 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.
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. 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.
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.

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. The businesses located in a particular state can only use the services of
the assigned Trademark Registration Office. In the case of foreign applicants,
jurisdiction is based on the location of the office of the applicant‘s agent or
attorney
Process for Trademarks Registration
To seek Trademark registration, the proprietor of the Trademark has to fill an

application. The proprietor may choose to hire an agent to fill and submit the
application on his behalf. Before applying, the applicant needs to conduct a prior
art search to ensure the registration criteria.

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. The requisite
search can be carried out using various web portals, such as:
 Public search for Trademarks by CGPDTM

 WIPO‘s Global Brand Database
 Trademark Electronic Search System (TESS)
 MARKARIA Trademark Search Engine
 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 same
can be tracked online.
 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.
One should keep in mind that while filing an application for the registration of a
Trademark, an English translation of the non English words has to be provided.
If the applicant wishes to claim the priority from an earlier-filed application, he
has to provide details like application number, filing date, country and
goods/services of that application.
Famous Case Law:
Coca-Cola Company vs. Bisleri International Pvt. Ltd.

’MAAZA‘, a popular mango fruit drink in India, is a registered Trademark of an
Indian company, Bisleri International Pvt. Ltd. The company transferred the
rights (formulation, IPR and goodwill, etc.) to a beverage company, Coca-Cola,
for the Indian Territory. However, in 2008, the Bisleri Company applied for

registration of Trademark ‘Maaza‘ in Turkey and started exporting the product

with the mark ‘MAAZA‘. This was unacceptable to the Coca-Cola Company and
thus filed a petition for permanent injunction and damages for passing-off and
infringement of the Trademark. It was argued on behalf of Plaintiff (Coca-Cola
Company) that as the mark ‘Maaza‘ concerning the Indian market was assigned
to Coca-Cola, and manufacture of the product with such mark, whether for sale
in India or for export, would be considered as an infringement. After hearing both
the parties, the court finally granted an interim injunction against the defendant
(Bisleri) from using the Trademark MAAZA in India as well as for the export
market, which was held to be an infringement of Trademark.

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Reasearch Methodology and IPR

Copyrights and Related Rights

1|Pag e Karthika S, A sst. P rof, SJCI T

Criteria for Copyright

2|Pag e Karthika S, A sst. P rof, SJCI T

The Copyright laws clearly state the ownership of Copyright.

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

Copyrights of the Author

 The Copyrights of the creator/author are legally protected under Section 14

3|Pag e Karthika S, A sst. P rof, SJCI T

 Adaptation of the work, such as converting a novel into a screenplay.

Liability of Owner of an Auditorium/Hall

The owner of an auditorium/hall is liable for punishment if he knowingly allows

Copyright Infringement is a Criminal Offence

 According to Section 63 of the Copyright Act, 1957, if any person

 In case of a second and subsequent conviction, the minimum punishment

Copyright Infringement is a Cognizable Offence

A police officer (rank of a sub-inspector or higher) can confiscate the infringed

Fair Use Doctrine

‘The Fair Use Doctrine‘, which comprises of the four-part test:

5|Pag e Karthika S, A sst. P rof, SJCI T

 Bonafide religious ceremony, including a marriage function.

Copyrights and Internet

 The twenty-first century is an era of digitization. The Copyrighted data is

The works not under the jurisdiction of Copyrights are as follows:

6|Pag e Karthika S, A sst. P rof, SJCI T

notation of such work (‗musical works‘). However, a separate application for

 It is not necessary to register a work to claim Copyright. Once a work is

7|Pag e Karthika S, A sst. P rof, SJCI T

8|Pag e Karthika S, A sst. P rof, SJCI T

9|Pag e Karthika S, A sst. P rof, SJCI T

Judicial Powers of the Registrar of Copyrights

10 | P a g e Karthika S, A sst. P rof, SJCI T

facility‘ (www.copyright.gov.in). Any person who is either an author of the work

11 | P a g e Karthika S, A sst. P rof, SJCI T

12 | P a g e Karthika S, A sst. P rof, SJCI T

Copyright Profile of India

13 | P a g e Karthika S, A sst. P rof, SJCI T

Copyright and the word ‘Publish’

A work is considered published when it is in the public domain on an unrestricted

Transfer of Copyrights to a Publisher

14 | P a g e Karthika S, A sst. P rof, SJCI T

Copyrights and the Word ‘Adaptation’

In the world of Copyright, the word ‗Adaptation‘ signifies the creation of a

Copyrights and the Word ‘Indian Work’

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

15 | P a g e Karthika S, A sst. P rof, SJCI T

‘Work of Joint Authorship‘ means a work produced by the collaboration of two

Society can perform the following functions:

A Copyright Society can be formed by a group of seven or more copyright

The Copyright Board is a regulatory body constituted by the government, to

16 | P a g e Karthika S, A sst. P rof, SJCI T

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

Copyright Enforcement Advisory Council (CEAC)

In 1991, the Government set up a CEAC to review the progress of enforcement

International Copyright Agreements, Conventions and Treaties

To secure protection to Indian works in foreign countries, the author needs to

17 | P a g e Karthika S, A sst. P rof, SJCI T

 Multilateral Convention for the Avoidance of Double Taxation of Copyright