Intellectual Property Rights Law – I
Intellectual Property Rights (IPR) are legal rights granted to creators and inventors over their creations and inventions for a limited period of time. This paper covers the foundational concepts of IPR — its nature, international framework (TRIPs, Paris Convention), and three of the major branches of IPR law: Trade Marks, Geographical Indications, and Industrial Designs. Students are introduced to the Indian statutory regime under the Trade Marks Act 1999, the GI Act 1999, and the Designs Act 2000, together with key judicial decisions from Indian and English courts.
- General Principles of IPR
- International Instruments – TRIPs, Paris Convention
- Trade Marks Law (TM Act, 1999)
- Geographical Indications Law (GI Act, 1999)
- Industrial Designs Law (Designs Act, 2000)
📋 Table of Contents
- Introduction to Intellectual Property Rights
- International Legal Instruments
- Trade Marks Law
- Key Definitions under TM Act, 1999
- Use of Trade Mark – S.2(2)(b)&(c)
- Domain Names as Trade Marks
- Registration: Procedure and Grounds of Refusal
- Absolute Grounds for Refusal – S.9
- Relative Grounds for Refusal – S.11
- Prior and Vested Rights – Ss. 12, 33, 34, 35
- Passing Off, Infringement and Exceptions
- Trade Mark Dilution – S.11(1), S.29(4), S.29(8)
- Exhaustion of IPR – Art. 6 TRIPs, S.29(6)
- Licensing of Trade Marks – Ss.48–53
- Geographical Indications Law
- Industrial Designs Law
- Important Case Laws Summary
- Important Questions for Exam
- Quick Revision Summary
1. Introduction to Intellectual Property Rights
1.1 Nature and Concept of IPR
Intellectual Property Rights (IPR) are exclusive legal rights granted by the State to creators, inventors, and owners of intangible assets — such as inventions, creative works, signs, and designs — enabling them to control use, prevent unauthorised exploitation, and profit from their creativity for a specified period.
Intellectual property, unlike physical property, is intangible. It resides in the mind and is expressed through creations such as inventions, artistic works, brand names, and geographical names. The law grants exclusive rights not as natural rights but as a carefully calibrated policy instrument — rewarding creators while eventually ensuring the work enters the public domain for broader societal benefit.
IPR is divided into two main branches under WIPO: (1) Industrial Property (patents, trade marks, GIs, industrial designs, trade secrets) and (2) Copyright and Related Rights (literary, artistic works, films, broadcasts, performances).
The justification for IPR rests on several theories: the Labour theory (Locke — one deserves fruits of one’s labour), the Personality theory (Hegel — creative works are extensions of one’s personality), and the Utilitarian theory (IPR incentivises innovation for the greater good of society by ensuring a return on investment in creativity).
Why IPR matters in the modern context:
- Globalisation has made cross-border IP protection essential.
- Technology-driven industries (pharma, software, media) are IP-intensive.
- India’s WTO membership obligates adherence to TRIPs minimum standards.
- Counterfeiting and piracy cause massive economic losses.
- GIs protect community-based traditional products and cultural heritage.
1.2 Types of Intellectual Property
| Type of IP | Governing Law (India) | Duration | Key Right |
|---|---|---|---|
| Trade Mark | Trade Marks Act, 1999 | 10 years (renewable) | Exclusive use; prevent confusion |
| Patent | Patents Act, 1970 | 20 years (non-renewable) | Exclude others from making/using |
| Copyright | Copyright Act, 1957 | 60 years post-author’s death | Reproduction, distribution, performance |
| Geographical Indication | GI Act, 1999 | 10 years (renewable) | Community right; prevent misuse |
| Industrial Design | Designs Act, 2000 | 10+5 years | Visual appearance; prevent piracy |
| Trade Secret | No specific statute (common law/contract) | Perpetual (as long as secret) | Maintain confidentiality |
| Plant Varieties | Protection of Plant Varieties & Farmers’ Rights Act, 2001 | 15–18 years | Breeders’ and farmers’ rights |
1.3 Abuse of Intellectual Property
IPR confers a monopoly, and monopoly power can be abused. Abuse of IPR occurs when an IP holder uses their exclusive rights in a manner that goes beyond the scope of protection intended by law and harms competition or public interest. Examples include: refusing to license essential patents on fair terms, using IP rights to maintain cartel arrangements, engaging in “evergreening” of patents in pharma, or asserting IP rights to block parallel imports unreasonably.
Art. 8 TRIPs allows member states to take measures to prevent the abuse of IPR and practices that unreasonably restrain trade or adversely affect international technology transfer. This is the TRIPs safeguard clause often cited in pharma patent disputes.
1.4 Enforcement of IPR under TRIPs (Art. 9–39)
Part III of TRIPs (Articles 41–61) mandates effective enforcement procedures. Key principles include:
- Art. 41: Procedures must allow effective action against infringement, including expeditious remedies.
- Art. 42: Availability of civil judicial procedures for rights holders.
- Art. 44: Courts must have authority to issue injunctions.
- Art. 45: Adequate damages to compensate for injury.
- Art. 50: Provisional/interim relief (injunctions) available.
- Art. 61: Criminal procedures and penalties — at least for wilful trademark counterfeiting and copyright piracy at commercial scale.
2. International Legal Instruments
2.1 Paris Convention, 1883
The Paris Convention for the Protection of Industrial Property (1883) is the foundational international treaty on industrial property (patents, trade marks, GIs, industrial designs). India is a member. It is administered by WIPO.
The Paris Convention established three core principles that continue to underpin modern international IP law:
1. National Treatment (Art. 2)
Nationals of any member country shall enjoy in all other member countries the same protection that those countries accord their own nationals, without any formality. This prevents discrimination against foreign IP owners.
2. Right of Priority (Art. 4)
An applicant who files a patent or trade mark application in one member country has a priority period (12 months for patents, 6 months for trade marks) to file in other member countries, and the later filing dates back to the first filing. This protects applicants from losing rights due to disclosures during the filing period.
3. Independence of Patents / Minimum Standards
Each member country’s IPR are independent of each other — a patent granted in France is legally separate from one for the same invention in India. The Convention also mandates minimum standards of protection that all members must provide.
A Pune-based pharmaceutical company invents a new drug molecule and files a patent in India on 1 January 2024. Under the Paris Convention’s right of priority, it may file patent applications in the USA, Germany, and Japan by 1 January 2025 (12-month priority period), claiming the Indian filing date as its priority date, even if publication occurred between those dates.
2.2 TRIPs Agreement (Trade-Related Aspects of Intellectual Property Rights)
TRIPs (1994) is an international legal agreement among all WTO member nations (India became a WTO member in 1995). It sets minimum standards for regulation of many forms of intellectual property by national governments. It is the most comprehensive multilateral IP agreement.
Key Principles of TRIPs:
- National Treatment (Art. 3): Each WTO member must give citizens of other members no less favourable treatment than it gives its own citizens regarding IP protection.
- Most Favoured Nation Treatment (Art. 4): Any advantage given to nationals of one WTO member must be given to nationals of all other WTO members immediately and unconditionally.
- Minimum Standards: TRIPs establishes floors — members may provide more extensive protection but cannot go below TRIPs minimums.
- Doha Declaration (2001): Clarifies that TRIPs must be interpreted flexibly to protect public health; developing countries may grant compulsory licences for generic medicine production.
| Basis | Paris Convention | TRIPs Agreement |
|---|---|---|
| Year | 1883 | 1994 |
| Administered by | WIPO | WTO |
| Coverage | Industrial Property only | All IP (including copyright) |
| Enforcement | No binding enforcement | WTO dispute settlement mechanism |
| Developing countries | No special provisions | Transition periods for developing countries |
| MFN principle | Not present | Expressly present (Art. 4) |
2.3 Madrid Agreement and Protocol
The Madrid System (Madrid Agreement 1891 + Madrid Protocol 1989) enables the international registration of trade marks through a single application filed with WIPO. An applicant who has a “basic” application or registration in their home country can apply for protection in up to 130+ countries through a single application in one language, paying one set of fees. India acceded to the Madrid Protocol in 2013.
India is a party to the Madrid Protocol (not the Agreement). The Trade Marks (Amendment) Act, 2010 amended the Trade Marks Act, 1999 to include provisions for the Madrid Protocol (Ss.36A to 36G inserted). In an exam, always specify “Protocol” not “Agreement.”
3. Trade Marks Law
Governing Legislation: The Trade Marks Act, 1999 (in force from 15 September 2003), replacing the Trade and Merchandise Marks Act, 1958. Also see the Trade Marks Rules, 2017.
3.1 Key Definitions under the Trade Marks Act, 1999
“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
“Trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.
“Service” means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.
A trade mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
A trade mark serves four essential economic functions: (i) identifies the origin/source of goods; (ii) guarantees quality; (iii) represents goodwill/advertising; and (iv) distinguishes one trader’s goods from another’s. Indian law protects both registered marks (statutory protection under TM Act) and unregistered marks (common law protection through passing off action).
Distinction: Registered vs Unregistered Trade Marks
| Basis | Registered Trade Mark | Unregistered Trade Mark |
|---|---|---|
| Protection | Statutory (TM Act, 1999) | Common law (passing off) |
| Symbol | ® (Registered) | ™ (Trade Mark, unregistered) |
| Remedy for infringement | Civil suit + criminal action | Passing off action only |
| Proof required | Registration certificate sufficient | Must prove reputation and goodwill |
| Territorial scope | All-India (national registration) | Area of actual reputation/use |
| Duration | 10 years, renewable indefinitely | As long as goodwill subsists |
3.2 Use of Trade Mark – S.2(2)(b) & (c), S.29(6)
Under S.2(2)(b), a person uses a mark “in relation to goods” if he uses it upon, or in any physical or in any other relation whatsoever, to such goods. Section 29(6) defines infringement by use in advertisements in a way that takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark.
Facts: Whirlpool used its mark in India through advertisements in TIME magazine before registering in India. Dongre registered “Whirlpool” in India and sought to restrain Whirlpool Corporation from using it.
Issue: Can a foreign company claim rights over a trade mark in India based on advertisement without actual sale of goods in India?
Held: The Supreme Court held that Whirlpool Corporation had acquired trans-border reputation through advertisement in India even without actual sales. Mere advertisement creates reputation. Dongre could not take advantage of Whirlpool’s mark.
3.3 Domain Names as Trade Marks
Facts: Satyam Infoway registered domain names “sify.com” and “sifynet.com” under its brand “Sify.” Sifynet Solutions later registered “sifynet.com” and “sifymall.com.” Satyam sued for passing off.
Issue: Whether domain names can be protected as trade marks and whether passing off action lies for domain names.
Held: The Supreme Court held that domain names do serve as trade marks and are entitled to protection. Domain names are more than mere addresses — they identify the source/origin of services. Passing off action lies for domain name disputes.
3.4 Registration of Trade Marks – Procedure and Grounds of Refusal
Registration Procedure (Ss.18–23):
- Application (S.18): Filed before the Trade Marks Registry (Mumbai/Delhi/Chennai/Kolkata/Ahmedabad) in the prescribed form with prescribed fees, along with a representation of the mark, list of goods/services, and class number (NICE classification).
- Examination (S.18(4)): Registrar examines the application and may raise objections (absolute or relative grounds).
- Show Cause (S.18(4)(b)): Applicant may be called for a hearing if objections are not resolved.
- Advertisement (S.20): If accepted, the mark is advertised in the Trade Marks Journal.
- Opposition (S.21): Any person may oppose within 4 months of advertisement.
- Registration (S.23): If no opposition (or opposition fails), the Registrar registers the mark and issues a certificate.
3.5 Absolute Grounds for Refusal – S.9
A trade mark shall not be registered if it:
(a) is devoid of distinctive character;
(b) consists exclusively of marks/indications which may serve to designate the kind, quality, quantity, intended purpose, values, geographical origin, time of production of goods/services, or other characteristics;
(c) consists exclusively of marks/indications which have become customary in the current language or in established practices of the trade.
Proviso: A mark shall not be refused registration under (a), (b), or (c) if it has, before the date of application for registration, acquired a distinctive character as a result of its use, or is a well-known trade mark.
A mark shall not be registered if it is of such nature as to deceive the public or cause confusion, or contains/comprises any matter likely to hurt religious susceptibilities, or is scandalous or obscene, or contains prohibited emblems (S.9(2)(d): armorial bearings, flags, state emblems – see S.13).
Key Concept: Distinctiveness
Distinctiveness is the ability of a mark to identify the commercial origin of goods/services and to distinguish them from those of competitors. Marks can be classified on the spectrum of distinctiveness:
| Category | Description | Registrability | Example |
|---|---|---|---|
| Fanciful/Coined | Invented words with no dictionary meaning | Highly registrable | KODAK, XEROX |
| Arbitrary | Real word with no relation to goods | Registrable | APPLE (computers), AMAZON |
| Suggestive | Suggests a quality but requires imagination | Registrable | WHIRLPOOL (washing machines) |
| Descriptive | Directly describes the product | Not ordinarily registrable (S.9(1)(b)); registrable only if acquired distinctiveness | SWEET for biscuits |
| Generic | Common name of goods/services | Never registrable | SOAP for soap |
Facts: The applicant sought to register the word “RASOI” (meaning kitchen/cooking) as a trade mark for hydrogenated groundnut oil.
Issue: Whether “RASOI” has a direct reference to the character or quality of the goods and is therefore not registrable under S.6(1)(d) of the then Trade Marks Act, 1940.
Held: The Court held that “Rasoi” directly refers to the character of the goods (hydrogenated groundnut oil being used for cooking purposes). The word cannot be monopolised by a single trader as it is a common word indicating use/character of the goods.
Facts: Imperial Tobacco sought to register the mark “SIMLA” (a geographical name — hill station) for cigarettes.
Issue: Whether a geographical name can be registered as a trade mark.
Held: A geographical name cannot ordinarily be registered as a trade mark because it is needed by other traders dealing in goods from that area, and registration would give an unfair monopoly over a common term. The mark was refused.
Facts: Geep applied to register “JANTA” (meaning “public/people” in Hindi) as a trade mark for flashlights.
Issue: Whether a laudatory or common word in Hindi (“Janta”) is registrable as a trade mark.
Held: The Delhi High Court held that “Janta” is a common word in everyday use and is a laudatory word indicating goods for the public. It is not capable of being a distinctive trade mark. Registration was refused.
3.6 Relative Grounds for Refusal – S.11
A trade mark shall not be registered if, because of its identity with an earlier trade mark and identity of goods/services covered by it, or its similarity with an earlier trade mark and identity or similarity of goods or services covered by such mark, there exists a likelihood of confusion on the part of the public, including a likelihood of association with the earlier trade mark.
A trade mark which is identical or similar to an earlier trade mark and is to be registered for goods/services which are not similar shall not be registered if the earlier trade mark is a well-known trade mark and use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
Factors for determining Well-Known Trade Marks (S.11(6)–S.11(9)):
- Knowledge/recognition of the mark in the relevant segment of the public
- Duration, extent and geographical area of any use of the mark
- Duration, extent and geographical area of any promotion of the mark
- Duration and geographical area of any registration of or any application for registration of the mark
- Record of successful enforcement of rights in the mark
Facts: Both parties were manufacturers of snuff and used similar trade marks. The question was whether the later mark was likely to cause confusion with the earlier registered mark.
Issue: What test is to be applied for determining similarity of marks and likelihood of confusion?
Held: The Supreme Court held that the test for similarity of marks is “the overall impression” — marks must be compared as a whole, not dissected. The court must consider the visual, phonetic, and conceptual similarity of the marks as they would appear to an ordinary consumer of average intelligence.
Facts: Carrefour (a world-famous French retail brand) had not yet opened stores in India but had a well-known trade mark globally. V. Subburaman registered “Carrefour” in India and sought to prevent Carrefour from using its own name.
Issue: Can a foreign well-known mark be protected in India even without physical presence/use in India?
Held: The Madras HC held that the concept of trans-border reputation extends to well-known marks. The Indian registration by Subburaman was in bad faith. TRIPs Art. 16(2) requires protection of well-known marks irrespective of whether they are registered in India. The court granted injunction in favour of Carrefour.
3.7 Prior and Vested Rights (Ss.12, 33, 34, 35)
- S.12 — Honest Concurrent User: In case of honest and concurrent use of the same mark by two or more persons, the Registrar may permit registration of both, subject to such conditions as he thinks just.
- S.33 — Acquiescence: If the owner of an earlier trade mark has, with knowledge, acquiesced in the use of a later registered trade mark for 5 years, he cannot apply for a declaration of invalidity of the later mark, unless the later mark was applied for in bad faith.
- S.34 — Prior User (Vested Rights): Nothing prevents any person from continuing to use a trade mark which is identical to or deceptively similar to a registered mark if such person or his predecessor in business had used it before the use of the registered mark.
- S.35 — Right of Use of Own Name: No registration shall interfere with the bona fide use of one’s name/place of business, or of the name of predecessor in business, as a description of goods/services.
S.34 (prior user) is one of the most powerful defences in trade mark infringement cases. It protects a prior user’s right to continue using their mark even if someone else registers it later, provided the prior user can prove earlier use. In India, use-based rights (common law) co-exist with registration-based rights.
3.8 Passing Off, Infringement and Exceptions to Infringement
Infringement (S.29):
A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is:
(i) identical with the registered trade mark for same goods/services (S.29(1));
(ii) identical with the registered trade mark and is used for similar goods/services or similar mark for identical goods — where there is likelihood of confusion (S.29(2));
(iii) identical/similar mark for non-similar goods if the registered mark is well known and use takes unfair advantage or is detrimental to the distinctive character/repute (S.29(4));
(iv) use of a registered mark in comparative advertising that is not in accordance with honest practices (S.29(8)).
Passing Off:
Passing off is a common law tort protecting the goodwill of a business against misrepresentation by a competitor. It protects unregistered marks, get-up (trade dress), and other indicia of business identity. The tort has three elements (the “Classic Trinity” from Reckitt & Colman v. Borden): (1) Goodwill/Reputation, (2) Misrepresentation, (3) Damage.
| Basis | Infringement Action (S.29) | Passing Off Action |
|---|---|---|
| Applicable to | Registered marks only | Registered and unregistered marks |
| Plaintiff must prove | Registration + use of identical/similar mark | Goodwill + misrepresentation + damage |
| Basis of action | Statutory right | Common law right (tort) |
| Defences | S.30 exceptions (bona fide use, etc.) | No proprietary right in goodwill |
| Geographical scope | All of India (registration territory) | Area of actual reputation |
| Trans-border reputation | Recognised for well-known marks | Recognised by courts |
Facts: Parle Products used a distinctive biscuit wrapper and alleged that J.P. & Co.’s wrapper was so similar as to cause confusion. Parle sought passing off.
Issue: What is the test for deciding similarity in cases of get-up/trade dress?
Held: The test is not whether a careful and minute examination of the marks by an expert would reveal the difference, but whether an ordinary customer buying in the market could be confused. The court must look at the “overall look” rather than individual elements.
Facts: After the split of the Cadila group, both successor companies used “Cadila” as part of their name. One sued the other for passing off in pharmaceutical products.
Issue: What standard of care should be applied in passing off cases involving pharmaceutical (medicinal) products?
Held: The Supreme Court laid down that in medicinal products, the standard of care must be higher. Even a small difference in the marks may not be sufficient to avoid confusion because in pharmacies, orders are often placed by sound alone and mistakes can endanger health. Courts must be more vigilant in such cases.
Facts: Allergan (US company) used the mark “OCUFLOX” for eye drops in USA. Milmet used “OCUFLOX” in India before Allergan set up business there. Allergan had prior international use but no prior use in India.
Issue: Whether a foreign company with prior global use but no actual India use can succeed in a passing off action in India?
Held: The Supreme Court held that in today’s globalised world and for pharmaceutical products, if a company is first in the world to use a mark, and another company subsequently adopts the same mark in India, a passing off action can lie. Global first use matters for pharmaceutical products because Indian consumers are part of the global information market.
Facts: Kapil Wadhwa imported genuine Samsung products from South Korea and sold them in India. Samsung sued for trade mark infringement, claiming parallel imports were unauthorised.
Issue: Whether the principle of international exhaustion applies under the Trade Marks Act, 1999, permitting parallel imports of genuine goods.
Held: The Delhi HC held that India follows the principle of international exhaustion of trade mark rights (S.29(6) read with Art. 6 TRIPs). Once a trade-marked product is put on the market anywhere in the world by the proprietor or with their consent, their trade mark rights are exhausted. Parallel imports of genuine goods do not infringe trade mark rights.
Exceptions to Infringement – S.30:
The following do NOT constitute infringement:
- Use of one’s own name or address in bona fide manner
- Use of descriptive indications about kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods/rendering of services
- Use of trade mark to indicate the intended purpose of a product (especially accessories/spare parts)
- Parallel imports — use of mark in relation to goods put on the Indian market under that mark by or with the consent of the proprietor (national exhaustion); also see international exhaustion debate
Facts: Murugan Enterprises sold pressure cooker gaskets/washers that fit Hawkins cookers. They used the word “Hawkins” on their packaging to indicate compatibility (“Fits Hawkins Cookers”).
Issue: Does such use of a registered trade mark to indicate spare part compatibility constitute infringement?
Held: The Delhi HC held that S.30(2)(d) of the Trade Marks Act permits use of a registered mark to indicate the intended purpose of a product (spare part/accessory), provided the use is in accordance with honest practices in industrial or commercial matters. Such descriptive/referential use is not infringement.
3.9 Trade Mark Dilution (S.11(1), S.29(4), S.29(8))
Dilution is the weakening of the distinctive character or repute of a famous mark, even without confusion or competition. There are two forms:
- Blurring: Diminishment of the capacity of a famous mark to identify and distinguish goods/services. (e.g., using “KODAK” for bicycle parts)
- Tarnishment: Association of a mark with inferior or unsavoury goods/services damaging its reputation. (e.g., using a luxury brand name for inferior counterfeit goods)
Facts: Philip Morris used its “Marlboro” trade dress (red and white colour combination) which ITC claimed was similar to its “Wills” cigarette packaging. ITC argued dilution and passing off.
Issue: What is the test for trade dress protection and dilution under Indian law?
Held: The Delhi HC discussed trade dress protection, the concepts of blurring and tarnishment, and the need for a famous/distinctive mark before dilution can be claimed. Protection extends to the overall “look and feel” (trade dress) including combination of colours, shapes, and layout.
Facts: Coca-Cola’s advertisement campaign allegedly disparaged Pepsi’s product by showing comparative advertising that denigrated Pepsi. Pepsi sued under S.29(8) (disparagement in advertisement).
Issue: What is the line between permissible comparative advertising and unlawful disparagement of a competitor’s trade mark?
Held: The Division Bench held that comparative advertising is permissible if it is true, fair, and not misleading. However, advertising that disparages (denigrates) a competitor’s specific trade mark amounts to infringement under S.29(8). The court must balance free speech with trade mark protection.
3.10 Exhaustion of IPR – Art. 6 TRIPs, S.29(6)
The exhaustion doctrine states that once an IP owner places goods in commerce with their consent, their IP rights in those goods are “exhausted” — they cannot use IP law to control the further sale or distribution of those specific goods. Three models exist:
- National Exhaustion: Rights exhausted only when goods are placed on the market in the same country.
- Regional Exhaustion: Rights exhausted within a region (e.g., EU).
- International Exhaustion: Rights exhausted worldwide — parallel imports always permitted.
Art. 6 of TRIPs expressly leaves the choice of exhaustion doctrine to member nations. India, as interpreted by the Delhi HC in Kapil Wadhwa, appears to follow international exhaustion.
3.11 Licensing of Trade Marks – Ss.48–53
A person other than the registered proprietor may use a trade mark if the use is on behalf of the registered proprietor or by a “registered user” (licensee). A registered user may use the mark as permitted by the registered proprietor.
Key aspects of trade mark licensing under the 1999 Act:
- Quality Control: Unlike the 1958 Act, the 1999 Act does not require government approval for licensing agreements. However, the licensor must maintain actual quality control over licensed goods/services, otherwise the mark may become naked and lose distinctiveness.
- Paradox of Quality Control: If a licensor fails to exercise quality control, the mark becomes deceptive (public associates it with the licensor’s quality but gets licensee’s uncontrolled quality) — potentially making it cancellable.
- Supremacy of Licensing Agreement: Courts give primacy to the terms of the licensing agreement between parties.
- Registered User (S.49): A licensee may be entered as a “registered user” on the Register, giving them standing to take infringement action in some circumstances.
Facts: Gujarat Bottling was a franchisee bottler of Coca-Cola. After termination of the franchise agreement, Gujarat Bottling continued bottling a competing brand. Coca-Cola sought injunction restraining breach of the trade mark licensing agreement’s negative covenant.
Issue: Can a court enforce negative covenants in a trade mark franchise/license agreement?
Held: The Supreme Court held that negative covenants in franchise/licensing agreements are enforceable and courts may grant injunctions to restrain breach. The balance of convenience was in favour of Coca-Cola as the trade mark owner.
4. Geographical Indications Law
Governing Legislation: The Geographical Indications of Goods (Registration and Protection) Act, 1999 (in force from 15 September 2003) read with the GI Rules, 2002.
4.1 Key Definitions – GI Act, 1999
An indication which identifies such goods as agricultural goods, natural goods, manufactured goods, or handicraft goods or foodstuffs as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods, one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.
Any person who is a dealer, exporter, manufacturer or trader of goods, or a person who produces, exploits or cultivates any natural or agricultural produce, or who exploits any natural resource or traditional knowledge associated with goods that are the subject matter of a geographical indication.
Types of Geographical Indications:
- Indication of Source: Simply indicates where goods come from, without implying any specific quality. (e.g., “Made in India”)
- Geographical Indication (Sensu Stricto): Identifies goods as originating from a specific territory where quality/reputation is attributable to that origin. (e.g., Darjeeling Tea, Mysore Silk)
- Appellation of Origin: A stricter form — all qualities of the product must be attributable to the geographic area. (e.g., Champagne, Cognac in French law)
“Darjeeling Tea” is a registered GI (first GI registered in India, 2004). The distinctive muscatel flavour of Darjeeling tea is attributable to the unique agroclimatic conditions of the Darjeeling hills. Tea grown elsewhere cannot be labelled “Darjeeling Tea” even if the variety of plant is the same.
“Basmati Rice” is a GI for aromatic long-grain rice grown in the foothills of the Himalayas (specific regions of India and Pakistan). The distinctive aroma and elongation upon cooking are geographic characteristics. Rice grown in California cannot legally be sold as “Basmati” in countries respecting this GI.
Community Right — Nature of GI Protection:
A GI is fundamentally different from a trade mark. A trade mark is owned by an individual or company. A GI is a community right — it belongs to all producers in the defined geographical area who meet the specified quality standards. No single producer can “own” a GI. The GI Act thus protects the collective interest of an entire region or community of producers.
4.2 Registration Procedure – Ss.3–19
Who can apply (S.11):
- Any association of persons, or producers, or any organisation or authority established by or under law, representing the interests of the producers of the goods concerned.
Grounds for Refusal of Registration (S.9):
- Likely to cause deception or confusion among the public
- Contrary to public order or morality
- Consists exclusively of a sign or indication that has become customary in the current language or in established practices of the trade
- A false indication of source (likely to mislead)
- Relates to wines or spirits — and the GI identifies wines not originating in the place indicated by the GI (S.9 — TRIPs Art. 23)
Duration and Renewal (Ss.18–19):
A registered GI is protected for 10 years and may be renewed from time to time for further periods of 10 years. Unlike trade marks, there is no limit on the number of renewals.
4.3 Infringement, Penalties and Remedies – Ss.20–23
Infringement of a GI (S.22) occurs when a person uses a false GI, or uses a GI in relation to goods not originating from the registered area, or uses a GI in a manner that amounts to an act of unfair competition. Penalties under Chapter VIII (Ss.37–54) include imprisonment and fines.
4.4 Conflict of GIs with Trade Marks – Ss.25–26
Where a GI and a trade mark conflict:
- S.25: No trade mark shall be registered if its registration would conflict with an earlier registered GI.
- S.26: A trade mark registered in good faith before the GI is applied for, or where rights were acquired through use before registration of the GI, is not affected by the GI registration.
5. Industrial Designs Law
Governing Legislation: The Designs Act, 2000 (replacing the Designs Act, 1911), read with the Designs Rules, 2001.
5.1 Subject Matter of Protection – S.2(d)
“Design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
Essential Elements for a Protectable Design:
- It must relate to features of shape, configuration, pattern, ornament or composition of lines or colours.
- It must be applied to an article.
- It must be applied by an industrial process.
- It must appeal to the eye — purely aesthetic, not functional.
- It must be new or original — S.2(g): means not previously published in India or elsewhere.
- It must not be excluded — a functional design (mere mechanical device), a trade mark, or an artistic work is not registrable as a design.
A design protects the aesthetic features of an industrial product. An artistic work under copyright law protects original creative expression. The overlap (e.g., a painting printed on a fabric) is handled by S.15 of the Copyright Act, 1957 — once a design is registered, copyright in the artistic work used for that design is lost. If an artistic work is applied industrially to more than 50 articles, copyright ceases and only design protection is available.
5.2 Registration of Designs – Ss.3–9
Registration is made at the Design Wing of the Patent Office (Kolkata). Unlike trade marks, there is NO provision for opposition to design registration in the Designs Act, 2000. Any challenge to registration is by way of cancellation under S.19.
Grounds for Cancellation of Design (S.19):
Any person may petition to cancel a registered design on the following grounds:
- The design was previously registered in India
- The design was published in India before the date of registration
- The design is not new or original
- The design is not registrable under the Act
- The design is not a design as defined under the Act
5.3 Copyright in Design and Duration – S.11
When a design is registered, the registered proprietor has copyright in the design (i.e., the exclusive right to apply the design to articles in the class in which it is registered) for an initial period of 10 years from registration. This may be extended for a further period of 5 years on payment of the prescribed fee — a total maximum of 15 years.
5.4 Piracy of Registered Design – S.22
During the existence of copyright in any design it shall not be lawful for any person:
(a) for the purposes of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof; or
(b) to import for the purposes of sale without the consent of the registered proprietor any article belonging to the class in which the design has been registered and having applied to it the design or any fraudulent or obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
5.5 Overlap of Design, Copyright and Trade Marks
Facts: Gopal Glass registered a design for a glass sheet with a particular pattern. Bharat Glass used the same pattern on their glass sheets and Gopal Glass sued for piracy of registered design.
Issue: Whether the pattern on glass sheets was a valid registered design and whether it was infringed by Bharat Glass.
Held: The Supreme Court upheld the registration and found infringement. The design was new and original, it appealed to the eye, and Bharat Glass had committed piracy by using a fraudulent imitation. The court discussed the distinction between design and artistic work and the effect of S.15 of Copyright Act.
Facts: Both companies manufactured vitamin/supplement products and used similar trade dress (three-dimensional shape of the bottle). The court examined the overlap between trade mark (trade dress), design, and copyright protection.
Issue: Can a three-dimensional shape be simultaneously protected under the Designs Act and the Trade Marks Act?
Held: The Division Bench held that there may be overlap between trade mark, design, and copyright protection. If a shape is registered as a design, it cannot simultaneously be protected as a trade mark (to prevent double protection). However, after the design’s copyright expires, the shape may be registered as a trade mark if it has acquired distinctiveness.
6. Summary of All Important Case Laws
| Case Name | Year | Court | Key Principle |
|---|---|---|---|
| M/s HDC v. Deputy Registrar of TM | 1955 | Cal HC | Word directly referring to character/quality of goods not registrable |
| Imperial Tobacco v. Registrar of TM | 1977 | Cal HC | Geographical names prima facie not registrable |
| Geep Flashlight v. Registrar of TM | 1972 | Del HC | Common vernacular/laudatory words not registrable |
| N.R. Dongre v. Whirlpool | 1996 | SC | Trans-border reputation via advertisement protectable |
| Satyam Infoway v. Sifynet Solutions | 2004 | SC | Domain names are protectable as trade marks |
| K.R. Krishna Chettiar v. Sri Ambal | 1970 | SC | Totality of impression test for mark similarity |
| Carrefour v. V. Subburaman | 2007 | Mad HC | Well-known marks protected without Indian use/registration |
| Parle Products v. J.P. & Co. | 1972 | SC | Ordinary buyer test for trade dress passing off |
| Cadila Health Care v. Cadila Pharma | 2001 | SC | Stricter test for pharmaceutical product marks |
| Milmet Oftho v. Allergen Inc. | 2004 | SC | Global first use relevant for pharmaceutical passing off |
| Kapil Wadhwa v. Samsung | 2012 | Del HC (DB) | India follows international exhaustion; parallel imports permitted |
| Hawkins Cookers v. Murugan Enterprises | 2012 | Del HC | Referential/nominative use of TM for spare parts not infringement |
| ITC v. Philip Morris | 2010 | Del HC | Trade dress protectable; dilution by blurring/tarnishment recognised |
| Pepsi v. Hindustan Coca Cola | 2003 | Del HC (DB) | Comparative advertising permissible but disparagement is infringement |
| Gujarat Bottling v. Coca Cola | 1995 | SC | Negative covenants in TM licensing enforceable by injunction |
| Bharat Glass Tube v. Gopal Glass Works | 2008 | SC | Industrial design: obvious imitation constitutes piracy |
| Reckitt Benckiser v. Wyeth | 2010 | Del HC (DB) | TM, Design and Copyright can overlap; courts prevent double protection |
📝 Important Questions for Exam
A. Short Answer Questions (2–5 Marks)
B. Long Answer / Essay Questions (10–15 Marks)
C. Problem-Based / Applied Questions
D. MCQ Practice (20 Questions)
⚡ Quick Revision Summary
1. Key Definitions Table
| Term | Section | One-Line Definition |
|---|---|---|
| Mark | S.2(1)(m) | Includes device, brand, label, word, shape, packaging, colour combination |
| Trade Mark | S.2(1)(zb) | Mark graphically representable + capable of distinguishing goods/services |
| Service | S.2(1)(z) | Any service made available to potential users (banking, education, transport, etc.) |
| Well-Known TM | S.2(1)(zg) | Mark known to substantial public such that use on other goods indicates same origin |
| Geographical Indication | S.2(e) GI Act | Indication identifying goods from a region where quality is attributable to geographic origin |
| Design | S.2(d) Designs Act | Features of shape/pattern applied to article by industrial process, appealing to eye |
2. All Sections Covered
| Section | What It Covers | Key Rule |
|---|---|---|
| S.2(1)(m) TM Act | Definition of “Mark” | Broad inclusive definition |
| S.2(1)(zb) TM Act | Definition of “Trade Mark” | Graphically representable + capable of distinguishing |
| S.9 TM Act | Absolute grounds for refusal | No registration if devoid of distinctiveness, descriptive, deceptive |
| S.11 TM Act | Relative grounds for refusal | No registration if likelihood of confusion with earlier mark |
| S.12 TM Act | Honest concurrent use | Registrar may allow both if genuine concurrent use |
| S.18–23 TM Act | Registration procedure | Application → examination → advertisement → opposition → registration |
| S.29 TM Act | Infringement | Use of identical/similar mark without proprietor’s consent |
| S.30 TM Act | Exceptions to infringement | Bona fide use of own name, descriptive use, spare parts |
| S.33 TM Act | Acquiescence | 5 years’ acquiescence bars challenge (unless bad faith) |
| S.34 TM Act | Prior user rights | Prior user can continue despite later registration |
| S.47 TM Act | Non-use cancellation | Mark removable if not used for 5 years |
| S.48–53 TM Act | Licensing | Registered user; quality control required |
| S.2(e) GI Act | Definition of GI | Indication identifying geographic origin linked to quality |
| S.9 GI Act | Absolute grounds for refusal (GI) | No registration if deceptive, contrary to public order |
| S.22 GI Act | Infringement of GI | Use of false GI or misuse of registered GI |
| S.2(d) Designs Act | Definition of Design | Shape/configuration/pattern applied to article, appealing to eye |
| S.11 Designs Act | Copyright in design | 10+5 years maximum protection |
| S.19 Designs Act | Cancellation | On grounds of prior registration, prior publication, not new |
| S.22 Designs Act | Piracy | Applying or importing article with registered design without consent |
3. Landmark Cases Table
| Case Name | Year | Court | Principle Established |
|---|---|---|---|
| N.R. Dongre v. Whirlpool | 1996 | SC | Trans-border reputation via advertisement (without actual sales) protectable in India |
| Satyam Infoway v. Sifynet | 2004 | SC | Domain names = trade marks; passing off lies for domain name misuse |
| K.R. Krishna Chettiar | 1970 | SC | Totality of impression test for mark similarity |
| Cadila v. Cadila Pharma | 2001 | SC | Stricter test for pharma marks; public health concerns elevated |
| Carrefour v. Subburaman | 2007 | Mad HC | Well-known marks protected without Indian use; TRIPs Art. 16(2) applies |
| Milmet Oftho v. Allergen | 2004 | SC | Global first use relevant for pharma marks; grounds passing off in India |
| Kapil Wadhwa v. Samsung | 2012 | Del HC DB | India follows international exhaustion; parallel imports of genuine goods permitted |
| Gujarat Bottling v. Coca Cola | 1995 | SC | Negative covenants in TM licensing agreements enforceable by injunction |
| Pepsi v. Hindustan Coca Cola | 2003 | Del HC DB | Disparagement in comparative advertising = TM infringement under S.29(8) |
| Bharat Glass v. Gopal Glass | 2008 | SC | Industrial design: obvious imitation = piracy; S.15 Copyright Act interaction |
4. Golden Rules / Key Principles
- A mark must be capable of distinguishing — distinctiveness is the cornerstone of trade mark law.
- Registration gives statutory protection; use gives common law (passing off) protection — both are important in India.
- The totality of impression test applies for comparing marks — never compare elements in isolation.
- For pharmaceutical marks, the standard of care is heightened — even small similarity is dangerous.
- Well-known marks are protected across all goods/services — even without use in India.
- GIs are community rights — no single person can own a GI; it belongs to the producers of a region.
- A design must appeal to the eye and must be applied by an industrial process — purely functional devices are excluded.
- S.15 Copyright Act — once applied industrially to more than 50 articles, copyright ceases; register as design instead.
- Parallel imports of genuine goods are permissible under India’s international exhaustion doctrine.
- TRIPs allows compulsory licensing for public health emergencies — Art. 31 + Doha Declaration.
5. Memory Aids
D — Devoid of distinctive character
C — Customary in trade
D — Deceptive / confusing
S — Scandalous / obscene
O — Offensive to religious sentiments
G — Goodwill / Reputation
R — misRepresentation
D — Damage
N — National Treatment
P — Priority Right
I — Independence of patents (minimum standards)
S — Shape / configuration / pattern / ornament
A — Applied to an Article
A — Applied by industrial process / means
N — New or original
I — Inspires the eye (appeals to the eye only)
E — Excludes functional devices, TM, artistic works