The Trade and Merchandise Marks Act, 1958

The Trade And Merchandise Marks Act, 1958

During the British regime in India the big merchants and businessmen who had established their mark in the market in respect of certain goods under the particular brand name, style or design felt they should continue to be sold or traded under the same brand name, style or design and no other person shall be allowed to adopt that brand name, style or design.
The Government then enacted the Indian Merchandise Marks Act, 1889 and with development and changes, on 25th November 1958 The Trade And Merchandise Marks Act came into force.
WHAT IS A TRADEMARK?
· A trademark is a mark used in relation to goods for the purpose of indicating a connection between the goods and some person having the right as proprietor to use the mark
· It is a visual symbol in the form of a word, device or a label applied to articles of commerce with a view to indicate to the purchasing public that they are goods manufactured or otherwise dealt in by a particular person or a particular organisation as distinguished from similar goods manufactured or dealt in by others
FUNCTIONS OF A TRADEMARK
A trademark serves the purpose of identifying the source or the origin of goods. Trademark performs the following four functions.
· It identifies the product and it’s origin.
· It proposes to guarantee its quality.
· It advertises the product. The trademark represents the product.
· It creates an image of the product in the minds of the public particularly the consumers or the prospective consumers of such goods.
MARKS NOT REGISTERABLE
a. The use of which would be likely to deceive or cause confusion.
b. A mark the use of which would be contrary to any law for the time being in force
c. A mark comprising or containing scandalous or obscene matter
d. A mark comprising or containing any matter likely to hurt the religious susceptibilities of any class or section
e. A mark which would be disentitled to protection in court of law
f. A mark which is identical with or deceptively similar to a trademark already registered in respect of the same goods or goods of the same description
g. A word which is the accepted name of any single chemical name or chemical compound in respect of chemical substances.
h. A geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India.
i. Besides others
REGISTRATION
WHO CAN APPLY
Any person who claims to be a proprietor of a trademark and is desirous of registration of the mark can apply. The application may be made in the name of an individual, partners of a firm, a Corporation, any Government Department, a trust or joint applicants.
APPLICATION
1. After completing all specifications on the prescribed application form, an application shall be filed in the office of the trademark Registrar "within whose territorial limits the principle place of business in India of the applicant or in the case of the joint applicants the principal place of business in India of the applicant whose name is the first mentioned in the application, as having the place of business is situated.
2. Every application for registration of a trademark shall contain a representation of the mark in the place provided in the form for the purpose. Ten additional representations of the mark have to be supplied with the application.
3. Upon submission of an application for registration of a trademark, there can be four outcomes:
a. The application is accepted as it is.
b. The application is accepted subject to certain amendment.
c. The application is accepted but latter it is found to have been accepted in error.
d. The application stands rejected.
The application is thus either accepted completely or is accepted subject to amendments.
ADVERTISEMENT
1. Soon after acceptance of the application, the application is advertised in the Trademarks Journal.
2. Any person may, within three months from the date of the advertisement or readvertisement of the application for registration or within such further period not exceeding one month, give notice in writing to the Registrar of opposition to the registration. If such an opposition does not arise then the mark is deemed to be registered.
TIME PERIOD
The registration of a trademark shall be for a period of seven years, but it may be renewed from time to time.
INFRINGEMENT
Infringement of a trademark occurs if a person other than the registered proprietor in the course of trade, in relation to the same goods or services for which the mark is registered, uses the same mark or deceptively similar mark.
ESSENTIALS OF INFRINGEMENT
1) The taking of any essential feature of the mark or taking the whole of the mark a few additions and alterations would constitute infringement.
2) The infringing mark must be used in the course of trade, that is, in a regular trade wherein the proprietor of the mark is engaged.
3) The use of the infringing mark must be printed or usual representation of the mark in advertisements, Invoices or bills. Any oral use of the trademark is not infringement.
4) Any or all of the above acts would constitute infringement.
REMEDIES
The proprietor of a trademark has a right to file a suit for infringement of his right and obtain
1. Injunction- an injunction restrains the defendant from using the offending mark pending the trial of the suit or until further orders.
2. Damages in assessing the damages the important question is what is the loss sustained by the plaintiff. The loss must be the natural and direct consequence of the defendant�s acts. The object of damages is to compensate for loss or injury.
3. Accounts of profits. Where a plaintiff claims the profits made by the unauthorised use of his trademark, it is important to ascertain to what extent he trademark was used, in order to determine what proportion of the net profits realised by the infringer was attributable to its use.
NO ACTION FOR INFRINGEMENT OF UNREGISTERED TRADE MARK
No person shall be entitled to institute any proceeding to prevent, or recover damages for, the infringement of an unregistered of an unregistered
JURISDICTION
A suit for infringement of registered trademark is filed in District Court having jurisdiction or in a High Court having original jurisdiction to entertain such suits. The infringement must have taken place within the territorial jurisdiction of the Court.
LIMITATION
The period of limitation for filing the suit is three years from the date of infringement.

The Patents Act 1970

Patents under The Patents Act 1970

WHAT IS A PATENT
Patent, under the Act, is a grant from the Government to the inventor for a limited period of time, the exclusive right to make use, exercise and vend his invention. After the expiry of the duration of patent, anybody can make use of the invention.
WHAT IS AN INVENTION
Invention means any new and useful
a. art, process, method or manner of manufacture
b. machine, apparatus or other article
c. substance produced by manufacture
and includes any new and useful improvement of any of them, and alleged invention
Therefore an invention is the creation of intellect applied to capital and labour, to produce something new and useful. Such creation becomes the exclusive property of the inventor on grant of patent.
APPLICATION FOR A PATENT
An application for a patent may be made by the actual inventor of the invention, or an assignee of the right to make an application or a legal representative of either.
It is the person who first applies for a patent who is entitled to the grant. A prior inventor of the invention who applies subsequently will not get the patent as against the first applicant.
FORM OF APPLICATION
1. An application for a patent in the prescribed form along with the prescribed fee should be led in the patent office and every application shall be for one invention only.
2. Where the application is made by virtue of assignment of right to apply, proof of such right shall be filed.
3. The application shall state that the applicant is in possession of the invention and give the name of the owner claiming to be the true and first inventor and where the person so claiming is not the applicant the application shall contain a declaration that the applicant believes the person so named to be the true and first owner.
4. Every such application is to be accompanied by a provisional or complete specification.
5. Where the application is accompanied by a provisional specification, a complete specification should be filed within twelve months from the date of filing the application. If this is not done the application shall be deemed to be abandoned.
6. The complete specification should fully describe the invention and the method by which it is to be carried out. It should disclose the best method of performing the invention known to the applicant and end with a claim or claims defining the scope of the invention for which protection is claimed.
PROCEDURE ON RECEIPT OF APPLICATION
1.The application filed is referred by the Controller to the Examiner who makes an inquiry to see whether it complies with the requirements of the Act and Rules, whether there is any lawful ground of objection of the grant of the patent, and whether the invention has already been published or claimed by some other person.
2. The examiner makes a search in the patent office for specifications of prior applications and Patents to see whether the same invention has ready been published or claimed or is the subject matter of existing or expired patens.
A report is accordingly made to the Controller within 14 months form the date of reference.
3. The patent office after examination of the application will communicate to the applicant the objections, if any to the grant of a patent. If the objections are not satisfactorily met the Controller of Patents after giving an opportunity of hearing to the applicant will refuse the application.
4. If the applicant satisfactorily removes the objections the controller will accept the complete specification and advertise it in the official Gazette.
5. A request for sealing the patent can be made not later than the expiration of six months from the date of publication.
PATENTS OFFICE
The Patent head office is at Calcutta and there are branch offices at Bombay, Delhi and Madras.
RIGHTS OF A PATENTEE
The owner of the "Patent", i.e. patentee is entitled to deal with such property in the same manner as owner of any other moveable property.
a. The patentee can sell the whole or part of this property (Patent).
b. He can also grant license to other(s) to use the patented property.
c. He can also assign such property to any other(s).
Such sale, license or assignment of such patented property naturally has to be for valuable consideration, acceptable mutually.
PERIOD OF PATENT
1. In respect of process patents relating to drugs and food, the term is five years from the date of sealing the patents or seven years from the date of the patent whichever is shorter.
2. In respect of all other patents the term is fourteen years from the date of the patent. A patent is kept alive only by paying the renewal fee from time to time
USE OF PATENTED INVENTION BY THE CENTRAL GOVERNMENT
The grant of patent confers the exclusive right of use on the patentee for commercial gain but the Act recognises that the Central Government may use any invention even without the payment of royalty to the inventor.
The idea is that the invention can be put to use for general public benefit by the government in certain circumstances when the patentee would have to forego his commercial gain in the general public interest.
SOME RESTRICTED USE OF PATENTED INVENTION PERMISSIBLE UNDER THE LAW
The essence of a patent is conferring of the exclusive right on the patentee. Yet some restricted use of a patented invention by a person other than the patentee is permissible under the law. For such instance, use of a patented invention is permissible for research or experimental purposes or for imparting knowledge or instructions to pupils.
INFRINGEMENT OF THE PATENT
The right conferred by the Patent is the exclusive right to make, use, exercise, sell or distribute the invention n India. Infringement consists in the violation of any of these rights.
The act expressly provides that use by a person other than the patentee, patentee�s assignee or licensee would be an infringement of the patent and as such illegal.
REMEDY FOR INFRINGEMENT OF PATENT
An action for infringement must be instituted by way of a suit in any District Court or a High Court having jurisdiction to entertain the suit.
The plaintiff on satisfying the court about infringement of his patent would be entitled to the following relief:
1. Interlocutory injunction
2. Damages
3. Account of profits
INTELOCUTORY INJUNCTION
The Plaintiff may at the commencement of the action move for an interim injunction to restrain the defendant from committing the acts complained of until the hearing of the action or further orders. The plaintiff should make out a prima facie case and also show that the balance of convenience lies in his favour.
DAMAGES
In assessing the damages the important question is what is the loss sustained by the patentee. The loss must be the natural and direct consequence of the defendant�s acts. The object of damages is to compensate for loss or injury.
ACCOUNTS OF PROFITS
Where a patentee claims the profits made by the unauthorised use of his patent, it is important to ascertain how much of his invention was appropriated, in order to determine what proportion of the net profits realised by the infringer was attributable to its use.

The Copyright Act 1957

The Copyright Act 1957

The object of copyright law is to encourage authors, composers, artists and designers to create original works by rewarding them with the exclusive right for a limited period to exploit the work for monetary gain.
It protects the writer or creator of the original work from the unauthorized reproduction or exploitation of his materials.
There is no copyright in ideas. Copyright subsists only in the material form in which the ideas are expressed. Works protected by copyright are:
1) Original, Literary, dramatic, musical and artistic works;
2) Cinematographic film; and
3) Records
LITERARY, DRAMATIC, MUSICAL AND ARTISTIC WORKS
Literary work- Copyright subsists in original literary works and relates to the expression of thought, but the expression need not be original or novel.
· The work must not be copied from another work but must originate from the author.
· Two authors independently producing an identical work will be entitled for copyright in their respective works.
· The emphasis is more on the labor, skill judgment and capital expended in producing the work. It includes tables, compilations and computer programs.
Dramatic work- Copyright subsists in original dramatic work and its adaptation.
· It includes any piece or recitation, choreographic work
· Entertainment in dumb show
· The scenic arrangement or acting form of which is fixed in writing otherwise
· But does not include a cinematograph film.
Musical work- Copyright subsists in original musical work and
· Includes any combination of melody and harmony, either of them reduced to writing or otherwise graphically produced or reproduced.
· An original adaptation of a musical work is also entitled to copyright.
· There is no copyright in a song. A song has its words written by one man and it�s music by another; is words have a literary copyright, and so has its music. These two copyrights are entirely different and cannot be merged.
· In cases where the word and music are written by the same person, or where they are owned by the same person, he would own the copyright in the song.
Artistic work means �
· A painting,
· A sculpture,
· A drawing including a diagram, map, chart or plan,
· An engraving or a photograph, whether or not any such work possesses artistic quality;
· An architectural work of art; and any other work of artistic craftsmanship.
· The work need not possess any artistic quality but he author must have bestowed skill, judgement and effort upon the work.
· A poster used in advertisement is an artistic work. But advertisement slogans consisting of a few words only are not copyright matter.
In case of literary, dramatic or musical work, A copyright gives the right to do and authorize the doing of any of the following acts, namely-
i. to reproduce the work in any material form;
ii. to publish the work;
iii. to perform the work in public;
iv. to produce ,reproduce ,perform or publish any translation of the work;
v. to make any cinematographic film or a record in respect of work;
vi. to communicate the work by broadcast or to communicate to the public by loud-speaker or any other similar instrument the broadcast of the work;
vii. to make any adaptation of work;
viii. to do in relation to a translation or an adaptation of the work any of the acts specified in relation to the work in clause (i ) to (iv).
In the case of the artistic work, a copyright gives the right to do or authorize the doing of any of the following acts, namely-
i. to reproduce the work in any material form;
ii. to publish the work;
iii. to include the work in any cinematography film;
iv. to make any adaptation of work;
v. to do in relation to an adaptation of the work any of the acts specified in relation to the work in clauses (i) to (iii).
CINEMATOGRAPH FILM
Cinematograph film includes the sound track, if any. It also includes any work produced by any process analogous to cinematography. A video film is considered to be a work produced by a process analogous to cinematography. A movie may be taken of a live performance like sport events, dramatic or musical performance.
In the case of cinematography film, copyright means the right to do or authorize the doing of any of the following acts, namely-
i. to make copy of the film;
ii. to cause the film, in so far as it consists of visual images, to be seen in public and, in so far as it consists of sounds, to be heard in public;
iii. to make any record embodying the recording in the part of the sound track associated with the film by utilizing such sound track;
iv. to communicate the film by broadcast.
RECORDS
Record means
· Any disc, tape, perforated roll or other device in which sounds are embodied so as to be capable of being reproduced therefrom.
· The sound tract in a cinematography film is not a record unless it is separately recorded in a disc tape or other device.
· Where the record is made directly from a live performance the owner of the disc or tape in which the recording is made will be the owner of the copyright.
In the case of a record, copyright gives the right to do or authorize the doing of any of the following acts by utilizing the record, namely-
i. to make any other record embodying the same recording ;
ii. to cause the recording embodied in the record to be heard in the public;
iii. to communicate the recording embodied in the record by broadcast;
HOW TO OBTAIN COPYRIGHT
In order to secure copyright protection what is required is that the author must have bestowed upon the work sufficient judgment, skill and labor or capital. It is immaterial whether the work is wise or foolish, accurate or inaccurate or whether it has or has not any literary merit.
In order to qualify for copyrights the works apart from being original, should satisfy the following conditions (except in he case of foreign works)
1. The work is first published in India.
2. Where the work is first published outside India the author, at the date of publication must be a citizen of India. If the publication was made after the authors� death the author must have been at the time of his death a citizen of India.
3. In case of unpublished work the author is at the date of making the work a citizen of India or domiciled in India.
4. In case of the architectural work of art, the work is located in India.
REGISTERATION OF COPYRIGHT
The steps for Registration:
1. Application in triplicate with prescribed fees.
2. Applicant to serve notice of his application to every person who has any interest in the subject matter.
3. If the Registrar receives any objection he may after holding such inquiry as he deems fit, enter such particulars of work in the register of copyright, which he considers proper.
4. Registrar then sends copies of the entries made in the register to the parties concerned
TERM OF COPYRIGHT
The term of copyright varies according to the nature of the work and whether the author is a natural person or a legal person e.g. a Corporation, Government Institution, etc., or whether the work is anonymous or pseudonymous.
1. In the case of literary, dramatic, musical or artistic work (other than a photograph) when published during the lifetime of the author, copyright subsists during the lifetime of the author plus fifty years. This is a universally accepted term.
2. Where the work is of joint authorship the fifty years period will start after the death of the author who dies last.
3. In the case of anonymous or pseudonymous works the terms of copyright is until fifty years from the year of publication. If the identity of the author is disclosed before the expiry of the fifty years period the term will extend to fifty years after the death of the author.
4. In the case of posthumous publications the term will be fifty years from the year of publication.
5. The period of copyright for a photograph is fifty years from the year of its publication.
6. For cinematography film and record also the term is fifty years of publication.
7. Where the first owner of copyright is the government or a public undertaking the term of copyright is fifty years from the year of publication.
8. Copyright works of International Organization also have a term of fifty years from the year of publication.
Thus it may be seen that in the case of literary, dramatic, musical or artistic works where the author is a natural person the term is lifetime plus fifty years. In all other cases the term if fifty years from the years of publication.
WHO IS THE FIRST OWNER OF COPYRIGHT
The author of the work is the first owner.
· In case the author is employed by newspaper, magazine etc under a contract of service, the proprietor will be the first owner in the absence of an agreement to the contrary in the case of a literary, dramatic or artistic work.
· Where a photograph is taken, or a painting or portrait drawn for a valuable consideration at the instance of person, such person is the first owner.
· Where any address or speech is delivered in public, the person delivering is the first owner and where it is delivered on behalf of another person such other person is the first owner.
· In case of Government work, Government shall be the first owner.
· In case of work made or published by or under any public undertaking, it shall be the first owner.
INFRINGEMENT
Copyright in a work is deemed to be infringed:
a. When any person without a license from the owner of the copyright, or the Registrar of Copyright (in certain situations) or in contravention of the conditions of a license,
i. does anything the exclusive right to do which belongs to the copyright owner, or
ii. knowingly permits for profit any place to be used for the performance of the work in public which continues an infringement of the work, or
b. When any person, makes for sale or hire, or sells or lets for hire, or offers for sale or hire, or exhibits in public for trade or import (except two copies other than cinematography film or record for personal use) any infringing copies of the week.
In general it is the commercial exploitation of the work in any form by a person without authority that constitutes infringement.

ACTS NOT CONSTITUTING INFRINGEMENT
The Copyright Act provides certain exceptions to infringement. The object of these provisions is to enable the encouragement of private study and research and promotion of education. They provide defenses in an action for infringement.
The exceptions come under the following categories:
1. reproduction for use in judicial proceedings and for use of members of the legislature,
2. publication of short passages, restricted reproduction or performance for educational purposes,
3. making of records under license from Copyright Board on payment of royalty,
4. playing of records or performance by a club or society for the benefit of the members of religious institutions,
5. reproduction of an article on current economic, political, social or religious matters in newspapers, magazines etc,
6. reproduction of a few copies for use in libraries or for research or private study,
7. matters published in official gazettes including Act of Parliament (subject to certain conditions ) or its translation,
8. making of a drawing, engraving or photograph of an architectural work of art, or a sculpture kept in a public place,
9. use of artistic work in a cinematography film,
10. use of an artistic work (author not the owner of copyright) by the author of any mould, cast, sketch, plan, model, etc., made by him for the work,
11. making of an object in three dimension of an artistic work in two dimensions subject to certain condition, and
12. Reconstruction of a building in accordance with architectural drawings.
13. Fair dealing without commercial benefits.
Copyright law does not prevent a person from taking what is useful from an original work and create a new work with additions and improvements. Under the guise of a copyright the owner of a copyright cannot ask the court to close all the venues of research and scholarship and all frontiers of human knowledge.
REMEDIES AGAINST INFRINGEMENT
There are three kinds of remedies against infringement of copyright, namely:
1. Civil remedies
Injunction damages or account of profit, delivery of infringing copy and damages for conversion.
2. Criminal remedies
Imprisonment of the accused or imposition of fine or both. Seizure of infringing copies.
3. Administrative remedies
Administrative remedies consist of moving the Registrar of copyrights to ban the import of infringing copies into India when the infringement is by way of such importation and the delivery of the confiscated infringing copies to the owner of the copyright and seeking the delivery.

JURISDICTION OF COURTS
A suit or other civil proceedings relating to infringement of copyright is filed in the District Court or High Court within whose jurisdiction the plaintiff resides or carries on business or where the cause of action arose irrespective of the place of residence or place of business of the defendant

LIMITATION
The period of limitation for filing the suit is three years from the date of infringement.
Patents, designs, copyrights and trademark are industrial property as they are used in some form of industry or business. They are also aptly termed intellectual property since they are the products of pure intellectual effort. Attempts have been made from time to time to expand the boundaries of Intellectual property and to convert a protective law into a source of monopoly.
COMPARITIVE ANALYSIS OF PATENT, COPYRIGHT AND TRADEMARK

PATENT
COPYRIGHT
TRADEMARK
Right Protected
Right conferred in respect of a new invention to manufacture the product patented or use the process patented.
Right conferred in respect of original, literary, dramatic, musical and artistic works, cinematograph film and records.
Right conferred to use a particular mark, which may be a symbol, word, device applied to articles of commerce to indicate the distinctiveness of goods.
Time Period
14 years and in case of food and drugs 5 or 7 years.
Life time plus 50 years for literary, dramatic, musical and artistic works. 50 years from year of publication for records.
7 years and may be renewed from time to time.
Who Can Register
Actual inventor or an assignee of the right to make an application or legal representative of either.
The author or publisher of, or owner of or other person interested in the copyright in any work.
Proprietor of the trademark and application may be made in the name of an individual, partners of a Firm, Corporation, Government department or Trust.
Commercial Use
Assigning rights or licensing them to industrialists for a lump sum payment or royalty basis.
By assigning or licensing the right to others on a royalty or lump sum basis.
Licensing the right by registration of the licensee as a registered user.
Remedy For Infringe-ment
Injunction, Damages, Accounts of profits.
Civil, Criminal, Administrative.
Injunction, Damages, Accounts of profits