Patents

Relevant authorities and legislation

The Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications is the body controlling or responsible for implementation of the Patent Laws in India by way of the Patents Act, 1970 and the Patent Rules, 2003. 

Patents rights are territorial in nature, i.e. applicable within Indian territory only, and India follows the first-to-file rule for registration of patent. 

The Patent Rules are amended from time to time, and the most recent changes were made via the Patent Amendments Rules 2024. Key changes in the procedure include a reduction in the timeline for filing a request for examination; changes in the timeline for filing updated status of corresponding foreign patent applications; a new concept of Certificate of Inventorship; discount of 10% on payment of annuity fees for at least four years in advance; simplifying the relevant form related to the filing of a working statement and changes in the timeline for filing the same; options of availing the grace period; changes in the procedure of pre and post grant opposition proceedings, etc. 

The Patent Offices in India are in four jurisdictions; i.e. Delhi, Mumbai, Chennai and Kolkata. 

According to the recent Annual Report (2022–2023) published by the Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications (hereinafter referred to as the “IP Annual Report”), it was noted that there has been an increase in the number of domestic filings by Indian inventors by 52.29%; of patent application filings by 24.64%, and grants of patents by 13.5%, in comparison to the year 2021–2022 as represented below:

Source: The Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications, Annual Report, 2022–23.

The total revenue generated in the year 2022–2023 by the Patent Office was INR 728 Crores. 

Application for a patent and primary elements

An application for an invention related to a product and/or process can be filed in India. The core factors determining the patentability of an invention in India are Novelty, Inventive Step (or a non-obvious improvement) and Industrial Applicability. There are certain non-patentable subject matters in India, such as those frivolous or contrary to natural laws; those against public order or morality; a mere discovery of a new form of a known substance; a computer program (per se); a mathematical or business method; algorithms; a method of agriculture or horticulture; topography of integrated circuits; traditional knowledge; and those under the purview of atomic energy. 

Procedure for patent registration

• Types: broadly, there are three types of patents applications in India; i.e: 
  • Ordinary Application (Provisional/Complete). 
  • Reciprocity/Conventional Application — to be filed within 12 months (non-extendible) from the date of filing the application in the country of the convention. 
  • PCT National Phase Application — this can be filed within 31 months (non-extendible) from the date of priority/PCT filing date (whichever is earlier).
• Documents/Information Required: the information/documents required for filing a Patent Application are: 
  • Details of the Applicant and Inventors (Full Name, Nationality and Address).
  • Details of the PCT/Priority Application (s) (if applicable). 
  • Specification (Provisional (can only be filed in case of an Ordinary Application) or Complete, as the case may be). 
  • Details of corresponding foreign patent applications. 
  • Proof of Right (in case Applicant and Inventors are different). 
  • Certified Priority Document with English Translation or WIPO Das Code (if applicable).
  • Document in support of the Start-Up/Small Entity Status/Educational Institution (if applicable).
  • Power of Attorney. 
• Update Form-3 details/status of corresponding foreign patent applications: the requirement to file the updated Form-3 has now been changed by the Indian Patent Office. The same can be filed only in the three situations mentioned below: 
  • within six months from the date of filing of application in India;
  • within three months from the date of issuance of the First Examination Report; and 
  • within two months from any further directions of the Controller. 

The deadline to file the updated Form-3 in all the above-mentioned three cases can be extended up to three months by the payment of requisite fees.

• Publication: the filed application will be published within 18 months from the application filing/priority date in the Official Journal of Patents. Post-publication, all the documents related to the invention are accessible to the public for inspection. The Indian Patents Act provides that from the date of publication of the application until the date of grant, the applicant will have equal privileges and rights as if the patent for the invention has been granted on the date of publication of the application, albeit that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted. Post-publication, the application will be open to opposition and a notice of opposition can be filed by any third party prior to it being granted (Pre-Grant Opposition). Note that a request for early publication of the application can also be filed by the Applicant along with payment of official fees. 
• Examination: a request for examination of the patent along with official fees can be filed within 31 months from the earliest date of either application or priority. In case the applicant satisfies the requirements as laid down, a request for early examination can also be filed which involves payment of extra official fees in comparison to the normal route. Pursuant to the examination, a First Examination Report (FER) is issued by the Patent Office and the deadline to file a response to the said report is six months from the date of issuance of the FER. The said deadline can be further extended by a period of three months by filing a suitable request prior to the expiry of the original period along with the requisite fees.
• Hearing Stage: in case the Controller is not satisfied by the submissions made in response to the First Examination Report, the application is scheduled for an official hearing. Pursuant to attending the hearing, the applicant has to file Written Submissions along with suitable arguments and amendments (if necessary) within 15 days from the date of hearing.
• Grant of Patent: once all the objections raised either in the First Examination Report or during the Hearing are suitably defended/overcome by the applicant, the application will move toward registration and the Patent Certificate is issued. 
• Post Grant Publication: grant of the patent is published in the Official Journal of Patents. At any time after grant of the patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may file a notice of opposition (Post Grant Opposition). 
• Statement of Working of the Patent Invention: since the patent has been granted, it is mandatory for the right holder and licensee to submit a “Statement of Working of the Patent Invention on Commercial Scale in India” within the stipulated timelines. The following details are required to be submitted: 
  • Whether the patented invention has Worked or Not Worked in India. If not worked, acceptable reasons to be selected are:
    • Patented Invention is under development/commercial trial;  
    • Patented Invention is under review/approval with the regulatory authorities;  
    • commercial licensing is being explored; and
    • any other reason which may be specified.
  • Whether the patent is available for licensing. If yes, contact details of the concerned person are to be provided. 

Please note: one working statement can be filed in respect of multiple related patents, wherein all such patents are granted to the same patentee(s).

• Foreign Filing License (FFL): as per the Indian Patent rules and procedure, prior to filing the Patent Application outside India (without filing an application in India) the requisite permissions from the Indian Patent Office need to be taken in the form of an FFL. The request for securing an FFL by Indian residents has to be filed either prior to the filing of the patent application in a foreign jurisdiction OR when the corresponding conventional/PCT Application is filed after the expiration of six weeks from the application filing date in India. The mandatory permission cannot be issued with retrospective effect. In case of contravention of this provision, any subsequently filed Indian application may be rejected/revoked (if patent is already granted). In addition, a penalty may be imposed, and/or imprisonment.
• Revocation of Patent: additionally, a petition for revocation of a granted patent can also be filed before the High Court by any person interested, on various grounds mentioned under relevant provisions of the Act. 
• Compulsory License: after three years from the grant of patent, any interested person has an option to file an application for the grant of a compulsory license of patent on the following grounds:
  • the reasonable requirements of the public have not been satisfied;
  • the patented invention is not available at a reasonable affordable price; or
  • the patented invention is not worked in India.

Rights conferred by registration

The term of a patent is 20 years (non-extendible) from the application filing date/priority date (in cases of PCT or Convention Application). Every year, renewal fees have to be paid. Once a term of patent has expired, the patent cannot be re-registered and will come into the public domain. The rights conferred upon a patentee post grant of application are: 

• Product Patent: to prevent third parties from making, using, offering for sale, selling or importing the patented product in India. 
• Process Patent: to prevent third parties from using the process and act of making, using, offering for sale, selling or importing the patented product obtained by the said process in India. 

Enforcement

The registered proprietor has the power to initiate legal action for infringement and can be enforced through a civil action. The remedies against infringement include injunctions (interim and/or permanent), damages or accounts of profit and seizure of concerning goods as well. The infringement suit can only be filed after the grant of patent.

Unregistered patents are not enforceable per se and there is no right in, or remedy available, for unregistered patents under the Act. 

Designs 

Relevant authorities and legislation

The governing body responsible for design matters in India is the Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications, headquartered in Kolkata, West Bengal.

In India, first-to-file rule is applicable for registrability of design and is territorial in nature. In terms of legislation, the prevailing design laws in India are governed by the Designs Act, 2000, in conjunction with the Designs Rules, 2001. These comprehensive regulations ensure the protection and enforcement of design rights, fostering a climate of innovation and creativity within the nation. 

As per the recent IP Annual Report (2022–2023), there has been an increase in the total number of design applications from 12,585 (2018–2019) to 22,698 (2022–2023) — as represented in the table below. The total revenue generated by the Design Office was INR 8.52 Crore. 

Source: The Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications, Annual Report, 2022–23.

A design may be registered in respect of any or all of the articles prescribed in the class of articles under the Locarno Classification.

Application for a design and primary elements

According to Indian law, a “design” is described as the characteristics of shape, configuration, pattern, ornament, or composition of lines, color, or a combination of these elements applied to any article, whether two-dimensional or three-dimensional or both forms, through any industrial process or means. This includes manual, mechanical or chemical methods, either separate or combined, which are solely judged by the eye in the final product. In other words, the finished article should have visual appeal/be visible by the eyes and must not be linked to any functional aspect of the article. Examples of design includes a clock, a necklace, a knife, etc. 

A “design” does not encompass any mode or principle of construction or anything that is essentially a mere mechanical device. Therefore, trademarks, property marks or artistic works do not fall within the definition of “design”.

Indian designs law safeguards any new and original design that can be applied to an article. For registration eligibility, the design must be new or original, not disclosed through prior publication or use, distinguishable from known designs, free from scandalous or obscene content and not contrary to public order or morality.

Procedure for design registration

There are two types of design applications in India, i.e: 

• ordinary application; and 
• reciprocity/Conventional application which can be filed within six months (non-extendible) from the date of filing the application in the relevant country.

With respect to filing, Indian designs law provides a grace period of six months. The same is limited to disclosure made in a notified exhibition/trade show and where prior notice is given to the Controller of such disclosure. Failure to comply with the provision of notifying the Controller will impact novelty and result in failure to avail the grace period.

For filing a design application information/documents such as Details of the Applicant (Full Name, Nationality and Address); Title of the Application; Clear Drawings and specification of the Design to be protected; Nature of the goods/services to which design is to be applied for determining class of the Design Application; Certified Priority Document with English Translation or WIPO Das Code (if applicable); Document in support of the Start-Up/Small Entity Status (if applicable) and Power of Attorney are required. 

As per procedure, photographic views of the design — namely perspective view; front view; back view; top view; bottom view; left view and right view — or drawings with no extraneous matter in the background and clear solid lines need to be submitted.

Once a design application is submitted, it undergoes a meticulous examination process. As per the IP Annual Report, the pendency in examination of a new application has now been brought down to one month from the application filing date. Where the Design Office finds no cause of concern or objection, the design is accepted directly and a certificate of registration is issued. Additionally, the registered design is published in the Official Journal of Patents post issuance of the Registration Certificate.

However, if an objection is raised, the applicant is required to respond to the First Examination Report within stipulated timelines. If any objections persist despite the applicant’s response, the Design Office may appoint a personal hearing — to provide an opportunity to discuss and address any lingering concerns. If all the objections are addressed in the response to the First Examination Report to the satisfaction of the Controller of Designs/Examiner, the application will be accepted, followed by registration and issuance of Registration Certificate.

Rights conferred by registration

Pursuant to issuance of the certificate of registration, it is advisable that the Registered Proprietor marks or embosses the article/product with the registered design with ®, “REGD.” or “REGISTERED” along with the registration number, to notify the public that the design is registered. In cases of failure to mark an article/product, any penalty or damages against a third-party infringer cannot be claimed by the Registered Proprietor unless it has been proved that either all proper steps of marking of products were ensured or the infringer is aware of the rights of the design holder or a notice has been previously issued to them.

The protection can be further renewed for a period of five years before the expiry of an initial period of 10 years from the date of filing/priority date under the Paris Convention. Once a total period of 15 years from the date of filing/priority has expired, the design cannot be re-registered. 

Enforcement of rights

Under Indian designs law, there is no provision to file an opposition against a design application. However, it can be cancelled based on a petition by an interested person, any time after the registration, on one of the following grounds:

The registration allows the proprietor of the design to prevent others from producing, importing, selling or distributing products that have an identical appearance, or are a fraudulent or obvious imitation of their registered design. Additionally, the piracy/infringement of design happens when a third-party (i) applies the registered design or its imitation to any article for the purpose of sale; (ii) imports such articles without the written consent of the registered proprietor for sale; and (iii) publishes such articles or exposes terms for sale. The financial penalty ranges from INR 25,000 (USD 330 approx.) to INR 50,000 (USD 645 approx.).

The registered owner has the power to initiate legal action for infringement and this can be enforced through a civil action. The remedies against infringement include interim and permanent injunctions, as well as damages. The purpose of a preliminary injunction is to ensure the protection of the rights of the parties on the basis of three factors i.e. prima facie case; balance of convenience; and irreparable injury. A civil action enforcing a registered design can be filed before the District Court where the defendant resides or conducts business, or where infringement has taken place. 

Unregistered designs are not enforceable per se and there is no right in, or remedy available for, unregistered designs under the Act. However, similarly to trademarks, an unregistered design may be protected under common law (i.e. tort of passing off), if it has become distinctive due to long and continuous use. In order to claim such remedy, the design owner must establish that the design had become distinctive in respect of such goods due to long and continuous use. Designs may also be protected under the Copyright Act if such design is not registered under the Designs Act. But, in such cases, protection is limited and expires once the design has been applied to an article more than 50 times by an industrial process. In such a scenario, the design cannot be further registered in India. The registration in designs and copyrights cannot exist simultaneously in India.

In conclusion, India’s intellectual property landscape presents a wealth of opportunities. By understanding and leveraging India’s robust legal framework, stakeholders can not only safeguard their innovations but also foster a culture of creativity and innovation. India is evolving as a global hub for technology and with the proactive involvement of India’s IP offices, stakeholders can navigate the complexities of IP protection with confidence and clarity.

IP offices play a pivotal role in not only granting patents, trademarks, copyrights, designs, etc. but also in fostering a culture of innovation through outreach programs, training workshops, and policy advocacy. 

Furthermore, the recent initiatives by these offices such as the effective implementation of National IPR policy, improving accessibility of IP information, making the IP system more transparent and user-friendly, the implementation of grievance and feedback system, National Intellectual Property Awareness Mission, IP Manthan (virtual discussion on IP related topics), etc. has led to an increase in the number of overall IPR filings as well as timely protection of relevant IP(s) of stakeholders. This concerted effort not only strengthens the legal framework but also promotes a conducive environment for investment and economic growth.

As defined under section 2(zb) of the Trademarks Act, 1999, a trademark means a mark capable of graphical representation that can distinguish goods or services of one person from those of others which may include the shape of goods or their packaging and combinations of colors.

Sources of law

The primary source of trademark law in India is the Trademarks Act, 1999, which was implemented on September 15, 2003, replacing the Trade and Merchandise Marks Act, 1958. This act aligned India’s trademark law with international standards. It also introduced new provisions of registration and protection of trademarks, simplifying procedures and enhancing enforcement mechanisms. Additionally, the rules and regulations framed under this act, such as the Trademarks Rules, 2017 (replacing the Trademarks Rules, 2002), which came into effect on March 6, 2017, provide further details and procedures for trademark registration and management.

Other important sources include judicial decisions, administrative guidelines, international treaties and agreements to which India is a party (such as the Agreement on Trade-Related Aspects of Intellectual Property Rights — TRIPS Agreement, and the Madrid Agreement concerning international registration of marks), and international conventions (like the Paris Convention for the Protection of Industrial Property), which influence and shape trademark law and practice in India.

Substantive law

Trademark law encompasses the legal principles governing the creation, registration, protection, and enforcement of trademark rights. At its core, this body of law ensures that trademarks are distinctive, capable of identifying the source of goods or services, and eligible for registration based on criteria like distinctiveness and non-descriptiveness. 

Once registered, trademarks confer exclusive rights to their owners, empowering them to prevent unauthorized use of identical or confusingly similar marks. Infringement actions serve as a mechanism to enforce these rights, allowing owners to seek remedies like injunctions, damages, or account of profits against infringers. However, defendants in such cases can raise defenses like fair use or genericness to challenge the validity or applicability of the asserted trademark rights. Moreover, the validity of trademark registrations can be challenged based on various grounds, including lack of distinctiveness or prior rights. 

Additionally, the law governs the licensing and assignment of trademark rights, enabling owners to grant permissions or transfer ownership within legal parameters. 

Ultimately, the substantive law of trademarks seeks to balance the interests of trademark owners in brand protection with the goal of fostering fair competition and safeguarding consumers from confusion in the marketplace.

The Trademark Offices in India are in five jurisdictions; i.e. Delhi, Mumbai, Chennai, Kolkata and Ahmedabad. 

According to the recent IP Annual Report (2022–2023), it was noted that there has been an increase in the number of domestic filings by Indian Inventors by 97.16% in comparison to the year 2021–2022, as represented below:

Source: The Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications, Annual Report, 2022–23.

The total revenue generated in the year 2022–2023 by the Trademarks Office was INR 445 Crore. 

Trademark filing procedure and process

Once granted registration, a trademark is valid for a period of 10 years — post-expiry of which the registration can be renewed by a period of 10 years by filing the requisite request and fees. It is relevant to note that the registration can be renewed indefinitely for as long as the proprietor desires.

Enforcement 

Trademark rights can be enforced using civil or criminal measures. When there’s infringement (statutory remedy) or passing off (common law remedy), a civil case can be filed, or the plaintiff can lodge a criminal complaint with the Magistrate’s Court. Sections 29 and 30 of the Trademark Act, 1999 offer remedies for trademark infringement, while sections 103 and 104 of the Act cover criminal remedies for enforcing trademark rights.

Civil remedies:

• Injunctions: trademark owners can seek injunctions from civil courts to prevent unauthorized use of their trademarks.
• Damages: courts may award monetary damages to compensate for losses suffered due to trademark infringement.
• Accounts of profits: courts may order the infringing party to account for the profits derived from the unauthorized use of the trademark.
• Delivery up or destruction: courts can order the infringing party to deliver up infringing goods for destruction or another appropriate disposal.

Criminal remedies:

• Filing complaints/FIRs: IP owners or authorities can file complaints or First Information Reports (FIRs) with law enforcement agencies to initiate criminal proceedings against infringers.
• Investigation: law enforcement agencies investigate the alleged infringement, collect evidence, and gather information on the infringing activities.
• Prosecution: if sufficient evidence is found, the infringing party may be prosecuted in criminal court. The police can arrest individuals involved in counterfeiting or trademark piracy.
• Penalties: punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with a fine which shall not be less than INR 50,000 (USD 600 approx.) and may be extended to INR two lakh (USD 2,400 approx.) depending on the nature and extent of the infringement.

Other remedies:

• Customs enforcement: trademark owners can record their registered trademarks with Indian customs authorities to prevent the importation of counterfeit goods.
• Anton Piller/John Doe orders: in cases of suspected infringement, courts may issue Anton Piller/John Doe orders, allowing the plaintiff to search the defendant’s premises and seize evidence of infringement.
• Cease-and-desist letters: trademark owners can send cease-and-desist letters to infringers which could outline the rights of the IP owner, the nature of the infringement, and request the infringer to cease the infringement.
• Online enforcement: trademark owners can use various online enforcement strategies such as sending takedown notices to internet service providers and online platforms hosting infringing content.

Relevant statutes

The Copyright Act, 1957 (the “Act”) along with the complementary Rules lays down the statutory provisions with regard to copyright protection in India. The Act has been amended multiple times to address various concerns that have developed over time.

Meaning of copyright

Copyright is a type of intellectual property right that vests in an author in relation to his/her work that has been expressed in a tangible form. 

Copyrightable work

There are broadly six categories of work in which copyright can be claimed:

Procedure to acquire copyright protection

• The applicant must file an application with the Copyright Office. The application must contain all the necessary information pertaining to the author and the work sought to be protected along with a statement of particulars.
• Thereafter, the application is examined. If objections are raised, they must be attended to by way of filing written submissions/hearings. 
• Once the objections have been resolved, the application may either be approved or rejected. 
• Post approval, the Copyright Office issues a Registration Certificate for the work.

Rights granted by copyright 

Copyright protection is bestowed upon a work as soon as it is created. This means that registration of the work under the statute is not a mandatory requirement to receive protection. Further, once copyright registration is granted to a work in a member country of the Berne Convention, the said work is automatically protected in other member countries as well, including in India. Copyright is a bundle of a few exclusive rights that are vested with the author/owner as listed below:

• Right of Reproduction: this right authorizes the author to make copies of the protected work in any form.
• Right of Distribution: this right is a subset of Right of Reproduction and allows the distribution of the copyrighted work in any manner.
• Right to Make Derivative Works: this right allows the work to be used in various ways; for example in adaptations or translations. 
• Right of Public Performance: this right affords the author to perform the copyrighted work publicly. 
• Right to Claim Authorship over Work: this right is the same as the Right to Attribution and allows the author to claim due credit for his/her copyrighted work.

A copyright is granted for the lifetime of the author/creator plus 60 years post the author’s death.

Infringement/enforcement

If a copyrighted work is infringed upon, the infringer will be liable to penal and civil actions as per the relevant provisions of the Copyright Act, 1957 and Rules made thereunder.

Copyright infringement occurs under the following circumstances:

• using the exclusive rights of the owner of a copyright without authorization, whether in relation to the whole or a substantial part of the copyrighted work;
• making/distributing infringing copies of copyrighted work for sale/hire which would prejudice the rights of the owner of the copyright;
• allowing any place to be used for infringing purposes, such as a performance of the work in public for a profit; or
• public display/exhibition of work by way of trade or importation of infringing copies of a work.

The Copyright Act 1957 provides the below listed remedies against infringement of copyright: 

• civil remedies — these remedies include injunctions, damages (from INR 50,000 [USD 600 approx.] to INR 200,000 [USD 2,400 approx.]), rendition of accounts, delivery and destruction of infringing copies and damages for conversion;
• criminal remedies — these remedies include imprisonment (from six months to three years), imposition of fines, seizure of infringing copies and delivery of infringing copies to the owner; and
• border enforcement — another precaution that can be taken is to notify border authorities of the copyrighted work so as to prevent the import and destruction of imported goods with the assistance of the customs authorities of India.

This refers to the visual appearance and overall packaging and presentation of a product, including its design, shape, colors, and labelling. It helps consumers identify and distinguish a product or service from others in the marketplace based on its unique visual characteristics. Trade dress can include various elements such as:

• Product design: the physical shape and design of a product.
• Packaging: the way a product is packaged, including the color and graphics on the packaging.
• Decor or layout: the interior or exterior design of a business establishment, like a restaurant.

In India, trade dress protection is primarily governed by the Trademarks Act, 1999. Section 2(zb) of the Act defines a trademark to include “shape of goods, their packaging and combination of colors”. This provision allows businesses to register distinctive trade dress elements as trademarks, granting them exclusive rights to use those elements in connection with their goods or services.

To qualify for trade dress protection, the trade dress must be inherently distinctive or have acquired distinctiveness through extensive use in the marketplace. Its protection does not extend to functional features of a product or design. It should primarily serve an ornamental or distinctive purpose.

Enforcement

Owners of protected trade dress can take legal action against others who use similar designs or packaging that might confuse consumers.

Definition

The right of publicity is an intellectual property right that protects against the misappropriation, for commercial benefit without authorization, of a person’s name, likeness, or other indicia of personal identity — such as their nickname, pseudonym, voice, signature, likeness, or photograph. 

Similarly, personality rights refer to a person’s ability to safeguard his or her identity as a privacy right.

Legal basis of publicity and personality rights 

In the Indian context, personality and publicity rights and the protection provided thereunder are not particularly clear, since there is no statute or body governing the said rights. 

Historically, publicity and personality rights, vested in public figures by virtue of them acquiring a status and personality granting commercial value to their individual personas, have been recognized by the courts. A few such observations are detailed below: 

• In 1995, the emergence of personality rights was catalyzed by one notable case: R. Rajagopal v. State of Tamil Nadu, famously known as the Auto Shankar case, where the Supreme Court recognized a person’s right to control the commercial use of their identity. This case marked a pivotal shift, acknowledging that individuals, including celebrities, possess a legitimate interest in controlling the exploitation of their persona for commercial gains. The Court explained that the “freedom of the press flows from the freedom of speech and was subject to reasonable restrictions provided in Article 19(2), and that it was important to strike a balance between the freedom of press and the right to privacy”. The Court held privacy to be a “right to be let alone” and that no one could publish anything referring to an individual’s private affairs without the consent of the concerned person unless it was based upon public records.
• The Delhi High Court in its judgment in Arun Jaitley v. Network Solutions Private Limited and Ors (2011) observed that the popularity or reputation of an individual on the internet is not different from reality. The court also noted that the name also belongs to the category where, in addition to personality, it has also acquired its own distinguishing features.
• The Delhi High Court recently issued an omnibus order or an ex parte ad interim injunction in the case of Amitabh Bachchan v. Rajat Nagi & Ors, CS (COMM) 822 OF 2022, prohibiting the public from using the name, image, voice, or any of the characteristics of one of the most well-known actors, Amitabh Bachchan, without his permission.
• The Delhi High Court in Anil Kapoor v. Simply Life India and Ors granted protection for the Indian cinema actor Mr. Anil Kapoor’s individual persona and personal attributes, against misuse — specifically through the medium of Artificial Intelligence (AI) that may be used to create deepfakes. The Court here passed an ex parte order (omnibus injunction) restraining 16 entities from utilizing Mr. Kapoor’s name, likeness or image, and from employing technological tools such as AI, face morphing and GIFs for financial gain or commercial purposes.

Provisions in IP laws

Trademarks

While no specific provision has been made under the Trademarks Act for publicity rights, the definition of “marks” under the Act covers names as well. Using this, a number of celebrities have taken the steps of seeking trademark protection of their names to prevent any misuse. A few celebrities have gone further and secured trademark protection for their signatures. When a celebrity registers a trademark, it signifies two things: 

• one, that they are open to any authorized assignment or licensing of their personality for promoting or merchandising purposes in the class of goods and services for which registration has been sought; and 
• two, that they possess a mechanism to defend those aspects of their personality against unauthorized use.

Copyright

The Copyrights Act, 1957 defines that a “performer” includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance. Hence, sections 38 and 57 of the Copyrights Act, 1957, that deal with performers’ rights and authors’ special rights can cover publicity rights under its umbrella. When a famous person’s identity is used for advertising without their permission, the problem is not that one should not get commercial gains for that use but that it should be the famous person who should get the power and right to control when, where and how their identity is used. 

Trade secrets refer to confidential and proprietary information that provides a business with a competitive advantage. This information can include formulas, techniques, processes, customer lists, pricing information, and other valuable business knowledge that is not generally known or readily ascertainable by others.

In India, trade secrets are primarily protected under the common law principles of confidentiality and contractual agreements. While India does not have specific legislation dedicated to trade secret protection, various laws including the Indian Contract Act, 1872, the Specific Relief Act, 1963, and the Information Technology Act, 2000, provide some level of protection. Businesses can further safeguard their trade secrets through non-disclosure agreements (NDAs), confidentiality agreements, employment contracts and other contractual arrangements. These agreements establish a legal obligation for employees, partners and other parties with access to trade secrets to maintain confidentiality and refrain from unauthorized use or disclosure. 

Enforcement: in case of misappropriation or unauthorized disclosure of trade secrets, businesses can seek legal remedies such as injunctions, damages, and specific performance through civil litigation. Indian courts have recognized the importance of protecting trade secrets and have upheld contractual obligations of confidentiality to prevent unfair competition and preserve the economic value of proprietary information.

Moral rights are personal rights indicating a nexus between the author and their work. These rights allow the author to protect their work from distortion, mutilation, modification or other acts in relation to the author’s work. In case of violation of these rights, the author may restrain or claim damages for such mutilation/distortion etc. Moral rights work to protect the integrity of the author’s work and continue to exist even post-assignment of the copyright. 

Moral rights are further categorized into three: 

• The Right of Attribution — this right ascertains an author’s ownership of his/her work and allows the public to identify the author of the work. Through this right, an author must necessarily be identified with respect to his/her work and plagiarism can be avoided.
• The Right to Integrity — this right ensures that the author of the work is not subjected to derogatory treatment, such as by mutilation/destruction/alteration of the work. 
• The Right against False Attribution — this right prevents others from false claims of ownership of an author’s work.

IP disputes

The process for resolving intellectual property (IP) disputes in India typically involves several steps:

• Cease-and-desist notice: the first step often involves sending a cease-and-desist notice to the alleged infringer, notifying them of the infringement and demanding that they stop using the IP in question.
• Filing a lawsuit: if the infringer does not comply with the cease-and-desist notice, the next step is to file a lawsuit in the appropriate court or tribunal. The choice of forum depends on the type of IP and the nature of the dispute. For example, patent, design, trademark and copyright disputes may be filed in the relevant District Court/High Court. The following steps are involved in a lawsuit:
  • Temporary injunction: the plaintiff may seek a temporary injunction to halt the infringing activity while the case is being heard. To obtain a temporary injunction, the plaintiff must demonstrate (a) a prima facie case, (b) a likelihood of success on the merits and (c) irreparable harm if the injunction is not granted.
  • Discovery and evidence: both parties engage in the discovery process, where they exchange relevant evidence. This may include expert reports, witness statements and other supporting materials.
  • Trial: the case proceeds to trial, where both parties present their arguments and evidence before the court. The court examines the evidence and legal arguments presented by both sides before making a decision.
  • Appeals: either party may appeal the court’s decision to a higher court or appellate tribunal if they believe there are legal errors or procedural irregularities in the trial court’s judgment.
  • Enforcement: If the court rules in favor of the plaintiff, they may be entitled to remedies such as permanent injunctions, damages, or orders for the infringing party to cease their infringing activities. 
• Alternate dispute resolution: throughout the process of the lawsuit, parties may also explore alternative dispute resolution mechanisms such as mediation or arbitration to resolve the dispute amicably and avoid lengthy litigation.

IP assignments

Intellectual property (IP) assignments involve the transfer of ownership rights from one party to another regarding various intellectual property assets such as patents, trademarks, copyrights and industrial designs. These assignments are pivotal for businesses seeking to manage their IP portfolios effectively and capitalize on their innovations and creative works. Key components of IP assignments include identifying the parties involved, describing the intellectual property being transferred, specifying the consideration exchanged, and including warranties and representations regarding the IP’s ownership and validity. Legal formalities such as ensuring the assignment is in writing, recording or registering it with the relevant intellectual property office, and adhering to jurisdiction-specific requirements are essential for enforceability. Once executed, IP assignments provide enforceable rights to the assignee, who can seek remedies through litigation or alternative dispute resolution in case of breach or infringement.

Successful IP assignments enable businesses to profit from their innovations by transferring ownership rights and establishing clear terms for use, ultimately safeguarding intellectual property, encouraging innovation, and maintaining competitiveness in the market.

Licensing and franchising

Licensing and franchising are concepts through which intellectual property rights can be exploited by a proprietor. 

Licensing refers to an arrangement/agreement whereby the IP owner (licensor) agrees to grant to the licensee the right to use or exploit certain IP rights on agreed terms and conditions, with the owner retaining ownership of the IP rights. 

On the other hand, franchising refers to an arrangement/agreement whereby the owner (franchisor) of a business system with a bundle of IP rights (e.g. TM, copyright and trade secrets) agrees to grant to the franchisee the right to operate the business in the franchisee’s territory, to license the IP rights for the operating the business and to provide training, technical support and mentoring.

Further, India does not have a franchise/license-specific law. Licensing and franchising agreements in India are subject to a number of other laws, such as law of contract, foreign exchange control regulations, antitrust laws, intellectual property laws, tax regulations, data privacy laws, and anti-corruption legislation.

Categories of License

Domain names/social media takedowns 

Statutory provisions 

Since there is no specific law governing infringement of trademarks on a domain name/social media page, such issues are also broadly covered under the Trademarks Act, 1999. 

As per section 2(1)(z) of the Trademark Act, 1999, which defines “Service” as any service, illustration or information which is made available to the potential customer which includes the provision of services in connection with a business enterprise or the goods/service related to any industry. A domain name provides specific information about the service/goods and helps to distinguish the owner’s website from other websites. A domain name may pertain to the provision of trademark law as a domain name is also considered a service of the business owner which provides information. Therefore, it should be considered a trademark of the business.

Categories in which a domain name can be infringed

• Cyber-squatting: cyber-squatting is carried out through Domain Name Parking, or when an individual registers a domain name with no intention of carrying out any legitimate commercial or non-commercial activities. It is commonly done by registrants in order to sell the domain name on to its authorized user at exorbitant rates. 
• Linking and framing: linking and framing is when a user clicks on a text hyperlink that takes them to a different website. This website is similar to a well-known company and is created solely to deceive the consumers into believing that their domain name is associated with successful business entities that have a strong online presence.
• Meta tagging: meta tagging is when words and tags are used to manipulate search engines into displaying the infringed website. They work similarly to hashtags that are used on social media websites to increase visibility.

Enforcement actions

• Take down notice: a legal notice sent to any third-party website which is hosting infringing content on its webpage. Such notice apprises the website about the infringing content and calls upon it to take down/remove such content from its website. 
• The .IN Domain Name Dispute Resolution Policy (INDRP): this can only be initiated against domain names which have a .in or .bharat domain name. These proceedings are overseen by the National Internet Exchange of India and are governed under the provisions of the Arbitration & Conciliation Act, 1996, as well as the INDRP Policy and Rules. 
• Uniform Domain-Name Dispute-Resolution Policy (UDRP): this policy sets out the legal framework for the resolution of disputes between a domain name registrant and a third party (i.e., a party other than the registrar) over the abusive registration and use of an internet domain name in the generic top-level domains or gTLDs (e.g., .biz, .com, .info, .mobi, .name, .net, .org).