1. IPR PROTECTION IN INDIA

2. INTELLECTUAL PROPERTY LAW
INTRODUCTION
Comprises of the following Laws:-
 Laws relating to Trade Marks / Brands (Trade Marks
Act, 1999), Property Marks
 Laws relating to Copyright (Copyright Act, 1957)
Artistic Work, Literary Work, Audio Video Records and
Software
 Laws relating to Industrial Designs (Designs Act, 2000)

3.  Laws relating to Patents (The Patent Act, 1970)
 Laws relating to Geographical Indications. The
geographical Indications of (Registration and Protection)
Act, 1999
 Laws relating to Internet, Web and Information
Technology (Information Technology Act, 2000)
 Domain Names

4. INFRINGEMENT OF IPR AND
LEGAL REMEDIES
 INFRINGEMENT WHEN AN IPR IS
REGISTERED i.e.Trade Mark , Patent Industrial
Designs , Geographical
Indications
 Copyright

5. PASSING OFF
 Passing off is a common law tort which can be used to
enforce unregistered trademark rights. Passing off
essentially occurs where the reputation of party A is
misappropriated by party B, such that party B
misrepresents this reputation and damages the goodwill of
party A.
 The law of passing off prevents one person from
misrepresenting his or her goods or services as being the
goods and services of the plaintiff, and also prevents one
person from holding out his or her goods or services as
having some association or connection with the plaintiff
when this is not true.

6. LEGAL REMEDIES AGAINST
INFRINGEMENT AND
PASSING OFF
REMEDIES
CIVIL CRIMINAL

7. IS REGISTRATION OF IPR NECESSARY?
NO In case of
 Trade Mark
 Copyright
Yes For
 Patents
 Industrial Designs
 Geographical Indications

8. HOW COPYRIGHT COMES IN TO
EXISTENCE !
 COPYRIGHT: -
Registration of Copyright w.r.t any logo / trade
mark is not necessary or compulsory under the
provisions of the Indian Copyright Act, 1957.
Automatic protection is available to an artistic
work, form the date when the artistic work / logo
was designed.
 Copyright Comes in to existence when the
concept in mind is put in to some tangible form
or crated

9. TRADE MARK ! WHO IS PROTECTED ?
A trade mark is granted protection on the basis of
 First Adoption
 First User
 First Inventor
 First Invention / Adoption/ User is superior then
the Registration

10. WHAT ARE THE RIGHTS CONFERRED
BY THE
REGISTRATION OF IPR ?
 Monopoly for the specified period is created in
favour of the Registrant
 In case of litigation onus of proof shifts on the
opposite party
 Prima facie presumption is raised in favour of the
Registrant

11. CAN THE REGISTRATION OF IPR BE
CANCELLED OR REVOKED ?
Yes, in case the registration has been obtained by
 Fraud
 Misrepresentation
 Wrongly
 Against the rights of some other party / opponent
 Registered by the Registrar erroneously
 Registration prohibited under some law
 Registration is against public policy or morals

12. WHEN REGISTRATION CAN BE OPPOSED
OR REVOKED/CANCELLED ?
 During the Process of Registration – By
filing Opposition
 After Registration – By filing Rectification
Petition

13. WHAT IS THE TEST OF COMPARISON IN
CASE OF VIOLATION OF IPR ?
There are two ways to compare similarities
between two trade marks :-
 PHONETIC Similarity
 OCULAR Similarity
Other tests for comparison are :-

14. OTHER TESTS OF COMPARISON
 Likely hood of confusion and deception
 From the angle of a prudent person of ordinary
intelligence
 No microscopic comparison
 No actual confusion or deception is required
 Actual loss or damage not necessary

15. CIVIL REMEDIES
 Injunction/stay
 Damages
 Accounts and handing over of profits
 Appointment of local commissioner by the
court for custody/sealing of infringing
material/accounts
 Interim Injunction:
Ex-Parte
After Hearing

16. PROCEDURE & PROCESS FOR
A CIVIL CASE
 Filing of plaint with supporting evidence at the time of filing
of the suit
 Filing of application under Order 39 Rule 1 & 2 read with sec.
151 of the Code of Civil Procedure, for grant of ex-parte ad-
interim;
 Filing of application under Order 26 of the Code of Civil
Procedure for appointment of a local commissioner, to make
inventory and/or to take possession of the infringing material
form the premises of the defendants, their agents, retailers and
distributors etc.
 Hearing of arguments by court on application for grant of ex-
parte injunction and appointment of local commissioner;
 The court may, if satisfied, grant ex-parte and interim
injunction and appoint a local commissioner.

17. ELSE
 Judgment by the court.
 The court may give a short notice to the defendants for
giving them an opportunity of hearing before granting any
temporary injunction or appointing a local commissioners
 Service of notice/summons of the court on the defendant
 Filing of written statement / reply by the defendant;
 Hearing on application for grant of interim injunction;
 Further proceedings in the suit including filing of
replication/rejoinder, admission/denial of documents,
framing of issues;
 Trial

18. STATUTORY PROVISIONS
 Trade Marks Act, 1999
 Copyright Act, 1957
 Designs Act, 2000
 Patents Act, 1970
 Geographical Indications of Goods( Registration and
Protection) Act, 1999
 Code of Civil Procedure, 1908
 Specific Relief Act, 1963

19. CRIMINAL REMEDIES
 Filing of criminal complaint before the chief judicial
magistrate/chief metropolitan magistrate of the concerned
jurisdiction
 Leading evidence w.r.t. the infringement of the trade mark
 Filing of application under sec. 91/93 of the Code of Criminal
Procedure for issue of search and seizure warrants
 Orders/directions by the Court to police for the search and seizure
of infringing material.
 OR IN ALTERNATIVE
 Direction by the court to police for investigation, lodging of an
FIR and search and seizure, under sec. 156 of the Code of
Criminal Procedure, 1973.
 OR IN ALTERNATIVE
 Filing a Complaint / FIR with Police

20. STATUES INVOKED
FOR CRIMINAL ACTION
 Sec. 103/104 of the Trade Marks Act, 1999
 Sec. 63 and 64 of the Copyright Act, 1957
 Sec. 39 of the Geographical Indication of Goods Act,
1999
 Sec. 420 of the India Penal Code
 Sec. 91/93 of the Code of Criminal Procedure

21. COMPETENT COURT FOR CIVIL ACTION
 In India a suit may be instituted in any Court of original
jurisdiction, subject to its pecuniary & territorial
jurisdiction. The designation of the lowest court is
“District & Sessions Judge”. Such cases can also be
directly filed in the High Court, if such High Court is
vested with original jurisdiction, e.g. Delhi High Court.
 The Jurisdiction of High Court could be invoked, subject
to the payment of Court fees. The structure of Court fees
vary from state to state.

22. CAN LEGAL ACTION UNDER THE TRADE
MARKS ACT, 1999 AND THE COPYRIGHT
ACT, 1957 , BE COMBINED ?
 Yes, if the artwork, get up, design, color combination of
a trade mark/ label/ packing material is similar and / or
deceptively similar, the provisions of the Copyright Act,
1957, can also be invoked along with the Trade Marks
Act, 1959, and this course of action is always preferable,
as under the provisions of the Copyright Act, 1957, the
offence becomes COGINIZABLE, and police can, on its
own directly initiate Criminal proceedings after
registration of an FIR.

23. PROCEDURE FOR FILING A
CRIMINAL COMPLAINT
 Criminal Complaint in the Court of competent
jurisdiction;
 Pre summoning Evidence, for satisfying the court on the
basis of the evidence placed on record, that the
 allegations by complainant are prima facie maintainable;
 Issue of General/ specific Search and Seizure Warrants,
along with directions to police;

24.  Raid / Search & Seizure by Police
 Investigation and arrest (if necessary) of accused
persons;
 Arguments;
 Summons / Warrants against accused persons;
 Accused Appear and seek bail;
 Framing of charges, after notice of allegations;
 Trial
 Onus of proof is on the complainant