RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/326/Add.1
24 January 2002
(02-0359)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from India to questions posed by the European Communities
and their member States, Japan and the United States
Addendum
By means of a communication from the Permanent Mission of India, dated
27 November 2001, the Secretariat has received the following responses to questions posed by the
European Communities and their member States, Japan and the United States, as circulated indocuments IP/C/W/320/Add.1, 322 and 316 respectively.
_______________
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. G
ENERAL PROVISIONS
1. Please confirm whether your legislation includes measures necessary to protect public health
and nutrition, and to promote the public interest in sectors of vital importance to your socio-economic
and technological development as mentioned under Article 8 of the Agreement on Trade-Related
Aspects of Intellectual Property Rights (the "TRIPS  Agreement").  Please explain how such measures
are consistent with the provisions of  the TRIPS Agreement.
[No reply received]
B. COPYRIGHT AND RELATED RIGHTS – THE COPYRIGHT ACT 1957 AS AMENDED BY THE
COPYRIGHT (AMENDMENT ) A CT 1999 ( THE "ACT");  THE INTERNATIONAL COPYRIGHT
ORDER 1999 AS AMENDED BY THE INTERNATIONAL COPYRIGHT (AMENDMENT ) ORDER 2000
(THE "ORDER ")
2. Please define in more detail the meaning of "literary database" in Section 2(o) of the Act.
Under Section 2(o) of the Indian Copyright Act, 1957 literary works include computer
databases as well.  There is no definition for the term databases.  But the courts in India haverecognized collection of databases in electronic format and protected them under the Copyright Act.
See Burlington home shopping Pvt. Ltd., v. Rajnish Chibber & Anr.  1996 Patent and Trade Mark
Reporter , 40 (Delhi High Court).
3. Does protection for databases extend to compilations "whether in machine-readable or other
form" as required by Article 10.2 of the TRIPS Agreement?IP/C/W/326/Add.1
Page 2
Yes, the term used in Section 2(o) of the Indian Copyright Act, 1957 is "compilations
including computer databases".  Computer is defi ned in Section 2(ffb) including any electronic or
similar device having information processing capabilities.  This will include both machine readable or
other forms of databases.
4. Please confirm whether the same level of protection is given to registered copyright
(Section 44 of the Act) and unregistered copyright.  Please explain any differences in the level of
protection given.
Registration is not mandatory under the Indian Copyright Act, 1957.  Section 44 is only
optional.  The word used is "may" and not "shall".  So the protection is not based on registration and
both registered and unregistered works get the same protection.  Registration is only a prima facie
evidence in case of litigation.
5. Please explain how the rights of phonogram producers, set out in Article 14 of the TRIPS
Agreement, are protected.
Section 13 of the Indian Copyright Act, 1957 recognizes sound recording as a work for
protection of copyright.  Section 14(e)(i) provides for reproduction right and Section 14(e)(ii)provides for rental rights.
6. Please state how your legislation grants the retroactive protection required pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
Indian Copyright Act, 1957 from the very beginning recognized sound records for the
protection of copyright.  Hence there was no need  to use the provisions of Article 18 of Berne
Convention.
Regarding performers right the Indian law was amended in 1994 and provided protection for
the performers as provided in the Rome Convention (See Section 38 of the Act).  The right is
available for performances with effect from 10 May 1995.
7. Please explain how your legislation impl ements Article 50 of the TRIPS Agreement.
The types of provisional measures that judicial authorities may order, and the legal basis for
such authority are:
Temporary injunctions
Injunctions may be granted interlocutory, granted before trial, or permanent, granted after
trial.  Interim injunctions are granted if the Court is satisfied that there is a prima facie  case for the
relief sought, that the balance of convenience is in the plaintiff's favour and that if interim injunctionis not granted it will cause irreparable injury to the plaintiff.  Interim injunctions may be in force till
the court takes a decision on that matter or finally decides the case.  If the plaintiff succeeds at the trial
he will be entitled to a permanent injunction.  The principles are governed by the provisions of the
Code of Civil Procedure, 1908 dealing with temporary injunction.
Other temporary orders
(i) Court may, upon the application of the plaintiff allow a representative of the court
usually a Court Commissioner (an independent Advocate of the Court) to enter the
premises of the defendants in order to search and seize documents and evidence.  Theorder can even be ex parte  (inaudita altera parte ).  This is based on the provisions ofIP/C/W/326/Add.1
Page 3
Code of Civil Procedure, 1908.  This is similar to the Anton Pillar Order of the United
Kingdom.
(ii) The Court may issue a direction restraining the defendants from disposing of their
assets within the jurisdiction until the trial or  judgment in the action.  This is based on
the provisions of the Code of Civil Procedure, 1908 and can be ex parte .  This is
similar to the Mareva Injunctions in the United Kingdom.
8. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
[No reply received]
9. Please explain how the Act implements Articles 51 – 58 of the TRIPS Agreement.
According to Section 53 of the Copyright Act read with the Customs Act anyone seeking
border measures with respect to goods infringing copyright if imported to India shall have to submit
an application in the prescribed form with the fee to the Registrar of Copyrights.  An application of
this nature can be submitted either by the owner of the copyright or by his duly authorized agent.
Upon receipt of such application Registrar of Copyrights, a quasi-judicial authority, may after making
such enquiry as he deems fit, order that the copies shall not be imported.  The Registrar of Copyrightsor any persons authorized by him for the purpose of making an enquiry may enter any ship, dock or
premises where, any such infringing copies may be found and may examine such copies for the
purpose of issuing such an order.  All copies of goods to which such an order issued by the Registrar
shall be deemed to be goods of which import has been prohibited or restricted under Section 11 of the
Customs Act, 1962 and the provisions of that Act shall have effect accordingly.
However all such copies confiscated under the Customs Act shall not vest in the government
but shall have to be returned to the owners of copyright in the work.
10. Please indicate whether or not your legislation provides for a de minimis imports exception.
Yes.  Section 51(b)(iv) Proviso of the Copyright Act, 1957 permits importation of one copy of
any work for the private and domestic use of the importer.
C. T
RADEMARKS – TRADE MARKS ACT, 1999
11. Please explain the scope of the phrase "scandalous or obscene matter" and how it will be
applied as a reason to prohibit the register of certain trademarks in accordance with Article 9.2.(c) of
the Act.
Scope of "Scandalous or obscene matter" under Section 9(2)(c) would include:
(1) Offending public sentiments;
(2) Hurting religious susceptibilities;
(3) Insignias of all religions would be prohibited;
(4) Libellous marks;
(5) Marks which threaten breach of peace in society.IP/C/W/326/Add.1
Page 4
12. Please confirm if signs, such as trade names, are protectable.  Please describe if elements
such as sound, perfumes and containers are protectable.
Trade name are protectable under the Trade Marks Act, 1999.  Sound and perfumes (smell)
are not protectable.
While shape of goods or packaging in regard to containers comes within definition of a
trademarks, containers per se  are not registrable.
13. Please explain the meaning of the word "ide ntity" in Article 11.1(a) and 29.2(c) of your Act.
Please confirm whether these provisions refer to trademarks that are identical to registered
trademarks.
Under Section 11(1)(a) and 29(2)(c) of the Trade Marks Act, 1999, "identity" would imply
identical, same, similar or deceptively similar mark.
14. Please explain in more detail the definition in Article 2 (zg) of a "well-known trade mark" and
explain fully the extent to which a well-known trademark will be protected, and the conditions
necessary for protection.
The Trade Marks Act, 1999 protects a well known mark under Section 9(1).  The Act contains
provisions for the protection of well-known mark which include definition of a well known mark
[Section 2(1)(zg)]; elaboration of factors which the Registrar will have to take into account in
determining whether a trademark is well known or not. [Section 11(6)]; non-requirement under
Section 11(9) that the well known trademark should have been used in India, or have been registeredor an application to have been filed in I ndia; protection, in opposition proceedings, under
Section 11(10) of a well known trademark against identical or similar trademarks; recognition under
Section 27(2) of the common law rights of the trad emark owner to take action against any person for
passing off goods/services as those of another person.
There are specific provisions in the Trade Marks Act, 1999 which protect the owner of a well
known trademark and to take action against its use by third parties.
In the case of a registered trademark, recognized as well known, the owner can file a suit for
infringement in terms of Section 134 and obtain reliefs provided in Section 135.  In the case of
unregistered well known trademark, a suit for passing off arising out of the use by the defendant of the
well known trademark can be filed, under Section 27(2), read with Section 134(c).  Section 135 alsoprovides for a Court to grant an ex parte  injunction in deserving cases.
Section 29(5) prevents a person from adopting someone else's trademark (including a well
known trademark) as part of that person's trade na me or business name by providing that such action
will constitute infringement.
The proviso to Section 9(1) provides that absolute grounds for refusal of registration would
not apply in the case of a well-known mark.  Under Section 11(2), a trademark which is:
(1) identical with or similar to an earlier trademark;  and
(2) to be registered for goods or services which are not similar to those for which the
earlier trademark is registered in the name of a different proprietor,
cannot be registered if the earlier trademark is a well-known trademark in India and the use of the later
mark would either take unfair advantage or be detrimental to the distinctive character or repute of the
earlier trademark.IP/C/W/326/Add.1
Page 5
15. Please confirm whether or not your legislation permits that the registration of trademarks be
indefinitely renewable.
Yes.  Section 25(1) of the Trade Marks Act,1999 provides that the registration of a trademark
shall be for a period of 10 years, but may be renewed from time to time in perpetuity.
16. Please explain how your legislation impl ements Article 50 of the TRIPS Agreement.
The provisions of Article 50.1(a) are met by an order of injunction including ex parte
injunction under Section 67(2) of the Act.
Article 50.1(b) obligations are met by Section 67(2)(b) of the Act which provides for
preserving infringing goods, documents or other evidence which are related to the subject matter ofthe suit.
In granting injunction the governing principles are:(1) whether the petitioner has made out a prima facie  case
(2) whether the balance of convenience is in his favour.
However, temporary injunction cannot be claimed as a matter of right.  It has to be
established that irreparable injury and loss would occur if it is denied.
Also refer to the reply to question no. 10 of the Checklist of Issues on Enforcement.
1
17. Please identify the competent authorities in your jurisdiction who receive requests from right
holders for an application to suspend the release of counterfeit goods by the customs authorities.
The Commissioner of Customs is the competent authority to receive requests from right
holders for an application to suspend the release of counterfeit goods under Section 140 of TradeMarks Act, 1999.
18. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
[No reply received]
19. Please indicate whether or not your legislation provides for a de minimis imports exception.
[No reply received]
D. G
EOGRAPHICAL INDICATIONS – GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND
PROTECTION ) ACT 1999
20. Please confirm the duration of protection given to geographical indications under the Act,
whether registered or not.
The Geographical Indications of Goods (Protection & Registration) Act, 1999 provides
statutory protection for a registered geographical indication for a period of 10 years renewable from
                                                     
1 Document IP/N/6/IND/1.IP/C/W/326/Add.1
Page 6
time to time in perpetuity.  However, if a geographical indication is not registered, no infringement
action can be initiated.
21. Please explain the scope of the provision extending the definition of geographical indication
to manufactured goods where "one of the activities of either the production or of processing orpreparation of the goods concerned takes place in such territory, region or locality" (Article 2(e)).
Please give examples if possible of when this de finition has been applied to manufactured goods.
In the case of the production of a manufactured item, there may be several stages of
processing raw materials and/or intermediate products.  No such examples are currently available with
regard to registered geographical indications.
22. Please describe how additional protection is granted by your legislation to wines and spirits.
Please mention other types of products, if any, covered by this additional protection.
Section 22(2) of the Geographical Indications of Goods (Protection & Registration) Act, 1999
empowers the Central Government to provide additional protection to certain goods and classes of
goods by notification in the official gazette, specifying such goods or class/classes of goods for the
purpose of such protection.  This would also includes wines and spirits.  There are no other productsso far covered under the Act.
23. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in your
jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of names
considered as generic in your jurisdiction.
Section 9(f) of the Geographical Indications of Goods (Protection & Registration) Act, 1999
provides that G.I.s which are determined to be generic names or indications of goods and are,
therefore, not or ceased to be protected  in their country of origin, or which have fallen into disuse in
that country, shall not be registered as a G.I.
Explanation I to Section 9 further provides "For the purposes of this Section, generic names
or indications in relation to goods,  means the name of a goods which, although relates to the place or
the region where the goods was originally produced or manufactured, has lost its original meaning
and has become the common name of such goods and serves as a  designation for or indication of the
kind, nature, type or other property or characteristic of the goods.
24. Please confirm whether the same protection is given to geographical indications that are
registered and those that are not registered under the Act.  Please explain any dissimilarities. In
particular please explain the scope of Articles 20(1) and 23(2) of the Act.
[No reply received]
E. I
NDUSTRIAL DESIGNS
25. Please explain whether or not your legislation extends to the protection of designs dictated
essentially by technical or functional considerations.  Please explain how textile designs are
protected.
[No reply received]
26. Please explain the scope of the phrase "scandalous or obscene matter" and how it will be
applied as a reason to prohibit the register of certain designs (Article 4(d) of the Act).
[No reply received]IP/C/W/326/Add.1
Page 7
27. Please define in more detail novelty and originality of industrial designs for the purposes of
the Act.
[No reply received]
28. Please explain how your legislation protects right holders of a design against importing of
articles bearing embodied or copied design.
[No reply received]
29. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
[No reply received]
F. PATENTS
30. Please describe how your legislation defines the notions of novelty, inventiveness and
industrial application.
[No reply received]
31. Please explain whether or not in your legislation, patent or otherwise, patent rights are
enjoyed without any exclusions (for example, exclusions based on ordre public or moral grounds, or
in relation to diagnostic, therapeutic and surgical methods; animals; essentially biological processes,
and pharmaceutical and agricultural chemical products).  If exclusions are provided for, please
describe in detail how these exclusions are applied in legal as well as practical terms.
[No reply received]
32. Please describe how micro-organisms, non-essentially biological processes, microbiological
processes and plant varieties are protected by your legislation.  Please explain, in this respect, the
relevant Sections of your legislation.
[No reply received]
33. Please clarify if the patent protection of a process, as provided for in your legislation, covers
the product obtained directly by that process.
[No reply received]
34. Please explain the additional conditions, if any, in your legislation other than the sufficient
disclosure of the invention in Article 29 of the TR IPS Agreement (e.g. submission of justification for
access to genetic material or prior inform consent to its use).  If such additional conditions exist,
please point out the relevant legislation.
[No reply received]
35. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to the relevant legislation.
[No reply received]IP/C/W/326/Add.1
Page 8
36. Please explain whether or not your legislation provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licence may be granted.  In
particular, please explain how your national legislation considers individual merits in the
authorization of such use.
[No reply received]
37. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
[No reply received]
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS – T HE SEMICONDUCTOR
INTEGRATED CIRCUITS LAYOUT DESIGN ACT 2000
38. Please describe how your legislation provides for effective action against infringement of
topography rights.
As per Section 18 of the Semiconductor Integrated Circuits Layout-Design Act, 2000, a
registered layout-design is infringed by a person who, not being the registered proprietor of the
layout-design or a registered user thereof:
- does any act of reproducing, whether by incorporating in a semiconductor integrated circuit or
otherwise, a registered Layout-Design in its entirety or any part thereof, except such act of
reproducing any part thereof which is not original;
- does any act of importing or selling or otherwise distributing for commercial purposes a
registered Layout-Design or a semiconductor integrated circuit incorporating such registered
Layout-Design or an article incorporating such a semiconductor integrated circuit containing
such registered Layout-Design for the use of which such person is not entitled under this Act.
Section 56 of the Semiconductor Integrated Circuits Layout-Design Act, 2000 provides that
any person who contravenes knowingly or wilfully any of the provisions of Section 18, as described
above, shall be punishable with imprisonment for a term which may extend to three years, or with fine
which shall not be less than fifty thousand rupees but which may extend to one million rupees, or with
both.
Where a person is convicted of an offence under Section 56, the court convicting him may
direct the forfeiture to Government of all goods a nd things by means of, or in relation to, which the
offence has been committed.
39. Please explain how your legislation impl ements Article 50 of the TRIPS Agreement.
[No reply received]
H. UNDISCLOSED INFORMATION
40. Please explain whether or not your legislation grants a defined period of time for the
protection of undisclosed information. If so, please give the time span.
[No reply received]IP/C/W/326/Add.1
Page 9
41. Please explain how your legislation defines "undisclosed information".
[No reply received]
42. Please explain how your legislation defines da ta submitted to governments or governmental
agencies.
[No reply received]
I. ENFORCEMENT
43. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
The Specific Relief Act, 1963 provides that a perpetual injunction may be granted to the
plaintiff to prevent the breach of an obligation existing in his favour, whether expressly or byimplication.  The plaintiff in a suit for perpetual injunction under of the Specific Relief Act, 1963,
may claim damages either in addition to, or in substitution for, such injunction and the Court may, if it
thinks fit, provide such damages.
The Code of Civil Procedure, 1908 provides that in any suit for restraining the defendant from
committing a breach of contract or other injury of any kind, whether compensation is claimed in the
suit or not, the plaintiff may, at any time after the commencement of the suit, and either before or after
judgment, apply to the court for a temporary injunction to restrain the defendant from committing the
breach of contract or injury complained of, or any breach of contract or injury of a like kind arising
out of the same contract or relating to the same property or right.  The Court may by order grant suchinjunction, on such terms as to the duration of the injunction, keeping in account, giving security, or
otherwise, as the court thinks fit.  Grant of injunc tion is a discretionary relief and the Court has to take
into account prima facie  case, balance of convenience and likelihood of irreparable injury.
The power of the Courts is not limited to the grant of injunction or damages, stated above.
Subject to such terms, the Courts have inherent power to pass any order having regard to the
circumstances and nature of the case to render justice and ultimately to protect public interest.
In addition to the provisions in the Code of Civil Procedure, 1908, the Trade Marks Act,
1999, the Designs Act, 2000, the Geographical Indicati ons of Goods (Registration & Protection) Act,
1999, the Indian Copyright Act, 1957 and the Protection of Plant Varieties and Farmers' Rights Act,
2001 also specifically provide for the remedies that may be ordered by the judicial authorities.
The Trade Marks Act, 1999 provides for relief in suits for infringement or for  passing off.  It
states that an order passed by the District Court or any superior Court on appeal, may include an
ex parte  injunction or any interlocutory orde r for any of the following matters:
- for discovery of documents;
- preserving of infringing goods, documents or other evidence which are related to the subject
matter of the suit;
- restraining the defendant from disposing of or dealing with the assets in a manner which may
adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies
which may be finally awarded to the plaintiff.
The law thus explicitly recognizes the powers of the Courts to pass orders of the nature of
"Anton Pillar Order" or "Mareva injunction" of the United Kingdom in trademark proceedings. TheIP/C/W/326/Add.1
Page 10
relief which a Court may grant in any suit for infrin gement or for passing off include injunction and at
the option of the plaintiff, either damages or an account of profits, together with or without any order
for the delivery up of the infringing labels and marks for destruction or erasure.
Under the Designs Act, 2000 remedies for infringement are provided by way of monetary
fines, permanent injunction and damages.  Recovery of profit is granted as an alternative remedy to
damages and not as an additional remedy.
Under the Geographical Indications of Goods (R egistration & Protection) Act, 1999 an order
passed by the District Court or any superior Court on appeal, may include an ex parte  injunction or
any interlocutory order for any of the following matters:
- for discovery of documents;
- preserving of infringing goods, documents or other evidence which are related to the subject
matter of the suit;
- restraining the defendant from disposing of or dealing with his assets in a manner which may
adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies
which may be finally awarded to the plaintiff.
Under the Geographical Indications of Goods (R egistration & Protection) Act, 1999, the relief
which a Court may grant in any suit for infringement or for passing off include injunction and at the
option of the plaintiff, either damages or an account of profits, together with or without any order for
the delivery of the infringing labels and marks for destruction or erasure.
Under the Indian Copyright Act, 1957, in a civil suit, the owner of the copyright is entitled to
remedies by way of injunctions, damages, accounts and otherwise as are or may be conferred by law
for infringement of a right.  The copyright owner can also claim costs including compensatory costs
and attorneys' fees.  In case of copyright infringeme nt the right holder also has the right to infringing
copies or any conversion of the infringing copies.
Under the Patents Act, 1970, the relief which a court may grant in any suit for infringement
include an injunction and at the option of plaintiff, either damages or an account of profits.
Under the Protection of Plant Varieties and Farmers' Rights Act, 2001, the relief which a
court may grant in any suit for infringement include an injunction and at the option of the plaintiff,
either damages or a share of the profits.   The order of injunction may include an ex parte  injunction or
any interlocutory order for any of the following matters, namely :
- for discovery of documents;- preserving of infringing variety or documents or other evidence which are related to the
subject matter of the suit;
- attachment of such property of the defendant which the court deems necessary to recover
damages, costs or other pecuniary remedies wh ich may be finally awarded to the plaintiff.
44. Please explain whether or not your legislation provides for a mechanism to appeal final
administrative decisions to judicial bodies.
The jurisdiction over IPR infringement cases lie with the District Courts.  The appeal to the
orders of the District Court would be in High Court and thereafter in the Supreme Court.IP/C/W/326/Add.1
Page 11
45. Please describe how your legislation authorizes judges to order production of evidence by the
opposing party.  Please give precise information on what measures are taken to ensure the protection
of confidential information.
The Code of Civil Procedure, 1908 and the Indian Evidence Act, 1872 give authority to Civil
Courts, at any time during the pendency of the suit, to order the production by any party, upon oath ofsuch of the documents in his possession or power, relating to any matter in question in the suit.  The
Code of Civil Procedure, 1908 provides that the Co urt may, at any time, either of its own motion or
on the application of any party:
- make such orders as may be necessary or reasonable in all matters relating to the delivery and
answering of interrogatories, the admission of documents and facts, and the discovery,
inspection, production, impounding and return of documents or other material objectsproducible as evidence;
- issue summonses to persons whose attendance is required either to give evidence or to
produce documents or such other objects as aforesaid;
- order any fact to be proved by affidavit.
Any party may, without filing an affidavit, appl y to the Court for an order directing any other
party to any suit to make discovery on oath of the documents which are or have been in his possession
or power, relating to any matter in question therein.  On the hearing of such application the Courtmay, if satisfied, make such order, either generally or limited to certain classes of documents, as may,
in its discretion, be thought fit.
46. Please quote provisions of your legislati on that authorize judges to order a defendant to
desist from an infringement.
Please refer to reply to question no. 43 regard ing powers of the Courts to grant injunctions.
47. Please quote what provisions of your legislation authorize judges to order the payment to the
right holder of adequate damages to compensate the injury he suffered.
Please refer to reply to question no. 43.
48. Please quote what provisions of your legislation authorize judges to order the payment of the
right holder's expenses by the infringer.
The Code of Civil Procedure, 1908 provides that the costs of and incident to all suits shall be
in the discretion of the Court, and the Court shal l have full power to determine by whom or out of
what property and to what extent such costs are to be paid, and to give all necessary directions for the
purposes aforesaid.
49. Please explain if and how judges have the authority to order that infringing goods are placed
outside channels of commerce or destroyed.
[No reply received]
50. Please quote what provisions of your legislation authorize judges to indemnify a defendant in
the event of abuse by the plaintiff.
The Code of Civil Procedure, 1908 provides that if in any suit or other proceeding, any party
objects to the claim on the ground that the claim, as against the objector, false or vexatious to theIP/C/W/326/Add.1
Page 12
knowledge of the party by whom it has been put forw ard, and if thereafter, such claim is disallowed,
abandoned or withdrawn in whole or in part, the Cour t, if it so thinks fit, may, order further payment
of the objector by the party by whom such claim has been put forward, of costs by way of
compensation, subject to certain pecuniary limits.  The Courts have inherent powers to make such
orders as may be necessary for the ends of justice or to prevent abuse of the process of the Court.
The Copyright Act, 1957 provides that where any person claiming to be the owner of
copyright of any work, by circular, advertisements or otherwise threatens any other person with legal
proceedings or liability in respect of an alleged infringement of copyright, any person aggrieved
thereby may institute a declaratory suit that the a lleged infringement to which the threats relate was
not in fact an infringement of any legal rights of the person making such threats and may in any such
suit obtain an injunction against the continuance of such threats and recover such damages, if any, ashe has sustained by reasons of such threats.  These remedies are not available if the person making
such threats with due diligence commences and prosecutes an action for infringement.  This provision
provides a person recourse against even threat of wrongful enjoinment.
51. Please explain how your legislation impl ements Article 50 of the TRIPS Agreement.
Please see the reply to question no. 43 also.
The Code of Civil Procedure, 1908 provides for interim reliefs in favour of the parties.
Interim relief is provided to meet the end of justice in the interim after a civil action is instituted.
During the process of adjudication judicial author ities have powers to grant interim relief to the
parties in the form of ad interim, interim, or temporary injunction.  Such orders may also be passed to
protect public interest.  Injunctions may be granted interlocutory, granted before trial, or permanent,
granted after trial.  Interim injunctions are granted if the Court is satisfied that there is a prima facie
case for the relief sought, that the balance of convenience is in the plaintiff's favour and that if interim
injunction is not granted it will cause irreparable injury to the plaintiff.  Interim injunctions may be inforce till the court takes a decision on that matter or finally decides the case.  If the plaintiff succeeds
at the trial he will be entitled to a permanent injunction.
The Court may, upon the application of the plaintiff allow a representative of the court
usually a Court Commissioner (an independent ad vocate of the Court) to enter the premises of
defendants in order to search and seize documents and evidence.  The order can be ex parte  (inaudita
altera parte ).  This is similar to the Anton Pillar Order of the United Kingdom.  The Court may issue
a direction restraining the defendants from disposin g of their assets within the jurisdiction until the
trial or judgment in the action.  This order can be ex parte .  This is similar to the Mareva Injunctions
in the United Kingdom.
52. Please identify the competent authorities in your jurisdiction who receive requests from right
holders for an application to suspend the release of counterfeit goods by the customs authorities.
The proprietor or a licensee of a registered trademark may give notice in writing to the
Commissioner of Customs to prohibit the importation of goods if the import of such goods constitute
infringement under the Trade Marks Act, 1999 to enable appropriate action by the customs
authorities.  The owner of the copyright in any wo rk or his duly authorized agent can apply to the
Registrar of Copyrights to prohibit the import of copies that would infringe copyright within the
meaning of the Indian Copyright Act, 1957.
53. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
Border measures are applicable to both imports and exports.IP/C/W/326/Add.1
Page 13
54. Please indicate whether or not your legislation provides for a de minimis imports exception.
[No reply received]
55. Please explain how your legislation impl ements Article 61 of the TRIPS Agreement.
Criminal remedies are not available under th e Designs Act, 2000 and the Patents Act, 1970.
The criminal procedures and penalties and other remedies for infringement of various
intellectual property rights under the relevant Acts are as follows:
The Indian Copyright Act, 1957
As per Section 63 of the Indian Copyright Act, 1957, any person who knowingly infringes or
abets the infringement of:
- the copyright in a work;  or- any other right conferred by this Act, except the right conferred by Section 53A,shall be punishable with imprisonment for a term which shall not be less than six months but which
may extend to three years and with fine which shall not be less than fifty thousand rupees but which
may extend to two hundred thousand rupees; provided that where the infringement has not been made
for gain in the course of trade or business the court may, for adequate and special reasons to bementioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a
fine of less than fifty thousand rupees.
Whoever having already been convicted of an offence under Section 63 is again convicted of
any such offence shall be punishable for the second and for every subsequent offence, withimprisonment for a term which shall not be less than one year but which may extend to three years
and with fine which shall not be less than one hundred thousand rupees but which may extend to two
hundred thousand rupees; provided that where the in fringement has not been made for gain in the
course of trade or business the court may, for adequate and special reasons to be mentioned in the
judgment impose a sentence of imprisonment for a term of less than one year or a fine of less than one
hundred thousand rupees.
Any person who knowingly makes use on a computer of an infringing copy of a computer
programme shall be punishable with imprisonment for a term which shall not be less than seven days
but which may extend to three years and with fine which shall not be less than fifty thousand rupees
but which may extend to two hundred thousand rupees.  But if the programme is not used for gain or
in the course of trade or business, the Court may not impose imprisonment and may impose a finewhich may extend to fifty thousand rupees.
Any person who knowingly makes, or has in his possession, any plate for the purpose of
making infringing copies of any work in which copyright subsists shall be punishable with
imprisonment which may extend to two years and shall also be liable to fine.
Any person who publishes a sound recording or a video film in contravention of the
provisions of Section 52A of the Indian Copyrigh t Act, 1957 shall be punishable with imprisonment
which may extend to three years and shall also be liable to fine.
Any police officer not below the rank of a sub-inspector has the power of search and seizure
of the materials used for infringement of copyright.  They must be produced before the Magistrate.
The owner can take possession of the goods.  In case of failure to take possession, the Court at the endIP/C/W/326/Add.1
Page 14
of the trial disposes the property following the procedure prescribed in the Code of Criminal
Procedure, 1973.
The Protection of  Plant Varieties and Farmers' Rights Act, 2001
Section 68(1) of the Protection of Plant Varieties and Farmers' Rights Act, 2001 provides that
no person other than the breeder of a variety registered under this Act or a registered licensee or a
registered agent thereof shall use the denomination of that variety in the manner as may be prescribed.
Section 69 (1) of the Protection of Plant Variet ies and Farmers' Rights Act, 2001 provides that
a person shall be deemed to falsely apply the denomination of a variety registered under this Act who,
without the assent of the breeder of such variety applies such denomination or a deceptively similardenomination to any variety or any package containing such variety or uses any package bearing a
denomination which is identical with or deceptively similar to the denomination of such variety
registered under this Act, for the purpose of packing, filling or wrapping therein any variety other than
such variety registered under this Act.
Section 69(2) of the Protection of Plant Varieties and Farmers' Rights Act, 2001 provides that
any denomination of a variety registered under this Act falsely applied as mentioned in sub-
Section (1), is in this Act referred to as false denomination.
Under Section 70 of the Protection of Plant Varieties and Farmers' Rights Act, 2001, any
person who applies any false denomination to a variety;  or indicates the false name of a country or
place or false name and address of the breeder of a variety registered under this Act in course of
trading such variety; shall unless he proves that he acted, without intent to defraud, be punishable with
imprisonment for a term which shall not be less th an three months but which may extend to two years
or fine which shall not be less than fifty thousand rupees but which may extend to five hundredthousand rupees or both.
Under Section 71 of the Protection of Plant Varieties and Farmers' Rights Act, 2001, any
person who sells, or exposes for sale, or has in his possession for sale or for any purpose of trade or
production any variety to which any false denomination is applied or to which an indication of the
country or place in which such variety was made or produced or the name and address of the breeder
of such variety registered under this Act has been falsely made, shall unless he proves:
- that having taken all reasonable precautions against committing an offence against this
Section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the denomination of such variety or that any offence had been committed in
respect of indication of the country or place in which such variety registered under this Act,was made or produced or the name and address of the breeder of such variety;
- that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom  he obtained such variety;  or
- that otherwise he had acted innocently,
be punishable with imprisonment for a term which shall not be less than six months but which may
extend to two years;  or with fine which shall not be less than fifty thousand rupees but which may
extend to five hundred thousand rupees or both.
Under Section 73 of the Protection of Plant Varieties and Farmers' Rights Act, 2001,
whoever, having already been convicted of an offence under this Act is again convicted of such
offence shall be punishable for the second and for every subsequent offence with imprisonment for a
term which shall not be less than one year but which may extend to three years;  or with fine whichIP/C/W/326/Add.1
Page 15
shall not be less than two hundred thousand rupees  but which may extend to two million rupees or
both.
The Trade Marks Act, 1999
As per Section 103 of the Trade Marks Act, 1999 any person who:
- falsifies any trademark;  or- falsely applies to goods or services any trademark;  or- makes, disposes of, or has in his possession,  any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a trademark;  or
- applies any false trade description to goods or services;  or- applies to any goods to which an indication of the country or place in which they were made
or produced or the name and address of the manufacturer or person for whom the goods are
manufactured is required to be applied under Section 139, a false indication of such country,
place, name or address;  or
- tampers with, alters or effaces an indication of origin which has been applied to any goods to
which it is required to be applied under Section 139;  or
- causes any of the things above-mentioned in this Section to be done,shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a
term which shall not be less than six months but which may extend to three years and with fine which
shall not be less than fifty thousand rupees but which may extend to two hundred thousand rupees;
provided that the court may, for adequate and special reasons to be mentioned in the judgement,
impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees.
As per the provisions of Section 104, any person who sells, lets for hire or exposes for sale, or
hires or has in his possession for sale, goods or things, or provides or hires services, to which any
false trademark or false trade description is applied or which, being required under Section 139 to
have applied to them an indication of the country or place in which they were made or produced or the
name and address of the manufacturer, or person for whom the goods are manufactured or services
provided, as the case may be, are without the indications so required, shall, unless he proves:
- that, having taken all reasonable precautions against committing an offence against this
Section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the trademark or trade description or that any offence had been committed in
respect of the goods or services;  or
- that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom he obtai ned such goods or things or services;  or
- that otherwise he had acted innocently,be punishable with imprisonment for a term which shall not be less than six months but which may
extend to three years and with fine which shall not be less than fifty thousand rupees but which may
extend to two hundred thousand rupees; provided th at the court may, for adequate and special reasonsIP/C/W/326/Add.1
Page 16
to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six
months or a fine of less than fifty thousand rupees.
As per Section 105 of the Trade Marks Act, 1999, whoever having already been convicted of
an offence under Section 103 or Section 104 is again convicted of any such offence shall bepunishable for the second and for every subsequent offence, with imprisonment for a term which shall
not be less than one year but which may extend to three years and with fine which shall not be less
than one hundred thousand rupees but which may extend to two hundred thousand rupees; provided
that the court may, for adequate and special reason  to be mentioned in the judgment, impose a
sentence of imprisonment for a term of less than one year or a fine of less than one hundred thousand
rupees.
Section 111 provides that where a person is convicted under Section 103, 104 or 105 or is
acquitted, the Court convicting or acquitting may direct  the forfeiture to Government of all goods and
things by means of or in relation to which the offence has been committed.  The Court may order any
forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.
The Geographical Indications of Goods  (Registration & Protection) Act, 1999
As per Section 39 of the Geographical Indications of Goods  (Registration & Protection) Act,
1999 any person who:
- falsifies any geographical indication;  or
- falsely applies to goods any geographical indication;  or- makes, disposes of, or has in his possession,  any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a geographical
indication;  or
- applies to any goods to which an indication of the country or place in which they were made
or produced or the name and the address of the manufacturer or person for whom the goods
are manufactured is required to be applied under Section 71, a false indication of such
country, place, name or address;  or
- tampers with, alters or effaces an indication of origin which has been applied to any goods to
which it is required to be applied under Section 71;  or
- causes any of the things above-mentioned in this Section to be done,shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a
term which shall not be less than six months but which may extend to three years and with fine which
shall not be less than fifty thousand rupees but which may extend to two hundred thousand rupees;
provided that the court may, for adequate and special reasons to be mentioned in the judgement,impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees.
Section 40 of the Geographical Indications of  Goods (Registration & Protection) Act, 1999
provides that any person who sells, lets for hire or exposes for sale, or hires or has in his possessionfor sale, goods or things to which any false geographical indication is applied or which, being
required under Section 71 to have applied to them an indication of the country or place in which they
were made or produced or the name and address of the manufacturer, or person for whom the goods
are manufactured or without the indications so required, shall, unless he proves:IP/C/W/326/Add.1
Page 17
- that, having taken all reasonable precautions against committing an offence against this
Section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the geographical indication or that any offence had been committed in respect
of the goods;  or
- that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom he  obtained such goods or things;  or
- that otherwise he had acted innocently,be punishable with imprisonment for a term which shall not be less than six months but which may
extend to three years and with fine which shall not be less than fifty thousand rupees but which mayextend to two hundred thousand rupees; provided th at the court may, for adequate and special reasons
to be mentioned in the judgement, impose a senten ce of imprisonment for a term of less than six
months or a fine of less than fifty thousand rupees.
Section 41 of the Geographical Indications of  Goods (Registration & Protection) Act, 1999
provides that whoever having already been convic ted of an offence under Section 39 or Section 40 is
again convicted of any such offence shall be punishable for the second and for every subsequent
offence, with imprisonment for a term which shall not be less than one year but which may extend to
three years and with fine which shall not be less than one hundred thousand rupees but which may
extend to two hundred thousand rupees; provided th at the court may, for adequate and special reasons
to be mentioned in the judgement, impose a sentence of imprisonment for a term of less than one year
or a fine of less than one hundred thousand rupees.
Where a person is convicted of an offence under Section 39 or Section 40 or Section 41 or is
acquitted of an offence under Section 39 or Sect ion 40 on proof that he acted without intent to
defraud, or under Section 40 on proof of the matters specified in clause (a) or clause (b) or clause (c)
of that Section, the court convicting or acquitting him may direct the forfeiture to Government of all
goods and things by means of, or in relation to, which the offence has been committed, or but for such
proof as aforesaid would have been committed.
When a forfeiture is directed on a conviction, the court, before whom the person is convicted,
may order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.
Where a person accused of an offence under Section 39 proves:
- that in the ordinary course of his business he is employed on behalf of other persons to apply
geographical indications, or as the case may be, to make dies, blocks, machines, plates, orother instruments for making, or being used in making, geographical indications;
- that in the case which is the subject of the charge he was so employed, and was not interested
in the goods or other thing by way of profit or commission depend on the sale of such goods;
- that, having taken all reasonable precautions against committing the offence charged, he had,
at the time of the commission of the alleged offence, no reason to suspect the genuineness of
the geographical indication;  and
- that, on demand made by or on behalf of the prosecutor, he gave all the information in his
power with respect to the persons on whose behalf the geographical indication was applied,
he shall be acquitted.IP/C/W/326/Add.1
Page 18
The Semiconductor Integrated Circuits Layout-Design Act, 2000
As per Section 18 of the Semiconductor Integrated Circuits Layout-Design Act, 2000, a
registered layout-design is infringed by a person who, not being the registered proprietor of the
layout-design or a registered user thereof:
- does any act of reproducing, whether by incorporating in a semiconductor integrated circuit or
otherwise, a registered Layout-Design in its entirety or any part thereof, except such act of
reproducing any part thereof which is not original;
- does any act of importing or selling or otherwise distributing for commercial purposes a
registered Layout-Design or a semiconductor integrated circuit incorporating such registeredLayout-Design or an article incorporating such a semiconductor integrated circuit containing
such registered Layout-Design for the use of which such person is not entitled under this Act.
Section 56 of the Semiconductor Integrated Circuits Layout-Design Act, 2000 provides that
any person who contravenes knowingly or wilfully any of the provisions of Section 18, as describedabove, shall be punishable with imprisonment for a term which may extend to three years, or with fine
which shall not be less than fifty thousand rupees but which may extend to one million rupees, or with
both.
Where a person is convicted of an offence under Section 56, the court convicting him may
direct the forfeiture to Government of all goods a nd things by means of, or in relation to, which the
offence has been committed.
JAPAN
A. C
OPYRIGHT AND RELATED RIGHTS
1. Please explain exceptions or exemptions of the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbou ring Rights Law, if any, as permitted in
Articles 3 and 4 of the TRIPS Agreement.
Works of other WTO Members get "national treatment" as provided in Sections 40 and 40A
of the Indian Copyright Act, 1957  read with International Copyright Order, 1999.  Copyright of
works first made or published in a country or the author of which was, at the date of such publication,
a national of a country who is Member of the Berne Convention for the Protection of Literary and
Artistic Works, or Universal Copyright Conven tion or World Trade Organization are protected in
India as if they are Indian works, based on Section 40 of the Indian Copyright Act, 1957 read with
International Copyright Order, 1999. Accordingly al l provisions of the Indian Copyright Act, 1957
will apply as if they are Indian works.
B. TRADEMARKS
2. Regarding "well-known trademarks", please ex plain how legislation of your country
implements Article 16.2 and 16.3 of the TRIPS Agreement, which Article 6 bis of the Paris Convention
shall apply,  mutatis mutandis, to.  Please cite the relevant provisions of your country's law.
The Trade Marks Act, 1999 protects a well known mark under Section 9(1).  The Act
contains provisions for the protection of well-known mark which include definition of a well known
mark  [Section 2(1)(zg)]; elaboration of factors which the Registrar will have to take into account in
determining whether a trademark is well known or not. [Section 11(6)];  non-requirement underSection 11(9) that the well known trademark should have been used in India, or have been registeredIP/C/W/326/Add.1
Page 19
or an application to have been filed in I ndia; protection, in opposition proceedings, under
Section 11(10) of a well known trademark against identical or similar trademarks; recognition under
Section 27(2) of the common law rights of the trademark owner to take action against any person for
passing off goods/services as those of another person.
C. PATENTS
3. Does legislation of your country grant patent protection for inventions relating to products
and processes in all fields of technology?  Are there any exceptions?  If so, please explain what these
exceptions are and how they comply with Article 27 of the TRIPS Agreement.
Under the (Indian) Patents Act, 1970 patent protection on products are not available for food,
drug or medicine and substances produced by chem ical processes.  India is availing itself of the
transition period under Article 65.4 of the TRIPS Agreement and is not obliged to provide suchproduct patent protection at this point of time.
4. Does legislation of your country grant compulsory licences subject to all the conditions
enumerated in Article 31 of the TRIPS Agreement?  Please cite the relevant provisions of your
country's law.
Provisions under the (Indian) Patents Act, 1970 do not specifically address all the conditions
of Article 31 of the TRIPS Agreement.  However, Patent (Second Amendment) Bill, 1999, which is
pending before the Parliament, provides adequate cover in this respect.
D. P
ROTECTION OF UNDISCLOSED INFORMATION
5. Please explain how legislation of your county provides for the protection of "Undisclosed
Information" as required by Article 39.1 and 39.2 of the TRIPS Agreement.  Please explain in detail
and please cite the relevant provisions of your country's law.
[No reply received]
6. If your legislation ensures that undisclosed test or other data submitted by an applicant to the
responsible State agency in the procedure fo r market authorisation of a pharmaceutical or an
agricultural chemical product is protected against disclosure and against unfair commercial use by a
competitor, for example by prohibiting a second applicant for a similar product from relying on
original data of the first applicant, when applying subsequently for market authorisation for a similar
product, please explain it in detail.  Does legislation of your country provide for exceptions to this?
Does legislation of your country set a specific term of protection by the responsible State agency forundisclosed test or other data of the first applicant?  If yes, please explain such specific term in detail,
citing the relevant provisions of law.
Common law, service regulations and the provisions against disclosure of data in the Drugs
and Cosmetics Rules, 1945 and the Insecticide Rules, 1971 protect data submitted to regulatory
authorities from unauthorized disclosure and unfair commercial use.  The procedure for marketauthorization of a pharmaceutical or of an agricultural chemical product is governed by the provisions
of the Drugs and Cosmetics Act, 1940 and the Insecticides Act, 1968 and the rules thereof,
respectively. Rule 53 of the Drugs and Cosmetics Rules, 1945 provides that except for the purpose of
official business or when required by a Court of law, an Inspector under the Drugs and Cosmetics Act,
1940 shall not without the sanction in writing of his official superior, disclose to any person anyinformation acquired by him in the course of his official duties.  Rule 29 of the Insecticides Rules,
1971 provides that except for the purpose of official business or when required by a Court of law an
insecticides Inspector shall not disclose to an y person any information acquired by him in the
performance of his official duties.IP/C/W/326/Add.1
Page 20
E. ENFORCEMENT
7. Please indicate the remedies which the judicial authorities order regarding each intellectual
property rights provided in the TRIPS Agreement, including injunctions, damages, expenses,
destruction or disposal of infringing goods, materials or implements for their production.  Pleaseexplain the criteria and the way of calculation to decide the amount of the damages which judicial
authorities order to the infringer to pay the right holder.
The Specific Relief Act, 1963 provides that a perpetual injunction may be granted to the
plaintiff to prevent the breach of an obligation existing in his favour, whether expressly or by
implication.  The plaintiff in a suit for perpetual injunction under of the Specific Relief Act, 1963,
may claim damages either in addition to, or in substitution for, such injunction and the Court may, if it
thinks fit, provide such damages.
The Code of Civil Procedure,1908 provides that in any suit for restraining the defendant from
committing a breach of contract or other injury of any kind, whether compensation is claimed in the
suit or not, the plaintiff may, at any time after the commencement of the suit, and either before or after
judgment, apply to the court for a temporary injunction to restrain the defendant from committing thebreach of contract or injury complained of, or any breach of contract or injury of a like kind arising
out of the same contract or relating to the same property or right.  The Court may by order grant such
injunction, on such terms as to the duration of the injunction, keeping in account, giving security, or
otherwise, as the court thinks fit. Grant of injunction is a discretionary relief and the Court has to take
into account prima facie  case, balance of convenience and likelihood of irreparable injury.
The power of the Courts is not limited to the grant of injunction or damages, stated above.
Subject to such terms, the Courts have inherent  power to pass any order having regard to the
circumstances and nature of the case to render justice and ultimately to protect public interest.
The Code of Civil Procedure, 1908 provides that the costs of and incident to all suits shall be
in the discretion of the Court, and the Court shal l have full power to determine by whom or out of
what property and to what extent such costs are to be paid, and to give all necessary directions for the
purposes aforesaid.
In addition to the provisions in the Code of Civil Procedure, 1908, the Trade Marks Act,
1999, the Designs Act, 2000, the Geographical Indicati ons of Goods (Registration & Protection) Act,
1999, the Indian Copyright Act, 1957 & the Protection of Plant Varieties and Farmers' Rights Act,
2001 also specifically provide for the remedies that may be ordered by the judicial authorities.
The Trade Marks Act, 1999 provides for relief in suits for infringement or for  passing off.  It
states that an order passed by the District Court or any superior Court on appeal, may include anex parte  injunction or any interlocutory orde r for any of the following matters:
- for discovery of documents;- preserving of infringing goods, documents or other evidence which are related to the subject
matter of the suit;
- restraining the defendant from disposing of or dealing with the assets in a manner which may
adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies
which may be finally awarded to the plaintiff.
The law thus explicitly recognizes the powers of the Courts to pass orders of the nature of
"Anton Pillar Order" or "Mareva injunction" of the United Kingdom in trademark proceedings.  TheIP/C/W/326/Add.1
Page 21
relief which a Court may grant in any suit for infringement or for passing off include injunction and at
the option of the plaintiff, either damages or an account of profits, together with or without any order
for the delivery up of the infringing labels and marks for destruction or erasure.
Under the Designs Act, 2000 remedies for infringement are provided by way of monetary
fines, permanent injunction and damages.  Recovery of profit is granted as an alternative remedy to
damages and not as an additional remedy.
Under the Geographical Indications of Goods (R egistration & Protection) Act, 1999 an order
passed by the District Court or any superior Court on appeal, may include an ex parte  injunction or
any interlocutory order for any of the following matters:
- for discovery of documents;
- preserving of infringing goods, documents or other evidence which are related to the subject
matter of the suit;
- restraining the defendant from disposing of or dealing with his assets in a manner which may
adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies
which may be finally awarded to the plaintiff.
Under the Geographical Indications of Goods (R egistration & Protection) Act, 1999, the relief
which a Court may grant in any suit for infringement or for passing off include injunction and at the
option of the plaintiff, either damages or an account of profits, together with or without any order for
the delivery of the infringing labels and marks for destruction or erasure.
Under the Indian Copyright Act, 1957, in a civil suit, the owner of the copyright is entitled to
remedies by way of injunctions, damages, accounts and otherwise as are or may be conferred by law
for infringement of a right.  The copyright owner can also claim costs including compensatory costs
and attorneys' fees. In case of copyright infringement the right holder also has the right to infringing
copies or any conversion of the infringing copies.
Under the Patents Act, 1970, the relief which a court may grant in any suit for infringement
include an injunction and at the option of plaintiff, either damages or an account of profits.
Under the Protection of Plant Varieties and Farmers' Rights Act, 2001, the relief which a
court may grant in any suit for infringement include an injunction and at the option of the plaintiff,
either damages or a share of the profits.   The order of injunction may include an ex parte  injunction or
any interlocutory order for any of the following matters, namely:
- for discovery of documents;- preserving of infringing variety or documents or other evidence which are related to the
subject matter of the suit;
- attachment of such property of the defendant which the court deems necessary to recover
damages, costs or other pecuniary remedies wh ich may be finally awarded to the plaintiff.
8. Please explain the kind and amounts of crim inal penalties including implement and fines
regarding intellectual property rights, citing the relevant provisions of your country's law.  In
particular, are the crimes persecuted only when the injured party has made a formal complaint?
Please explain whether penalties are consistent with Article 61 of the TRIPS Agreement, which
requires provisions for a sufficient deterrent, consistently with the level of penalties applied for crimes
of a corresponding gravity.IP/C/W/326/Add.1
Page 22
Criminal remedies are not available under th e Designs Act, 2000 and the Patents Act, 1970.
The criminal procedures and penalties and other remedies for infringement of various intellectual
property rights under other relevant Acts are as follows:
The Indian Copyright Act, 1957
As per Section 63 of the Indian Copyright Act, 1957, any person who knowingly infringes or
abets the infringement of:
- the copyright in a work;  or- any other right conferred by this Act, except the right conferred by Section 53A,shall be punishable with imprisonment for a term which shall not be less than six months but which
may extend to three years and with fine which shall not be less than fifty thousand rupees but which
may extend to two hundred thousand rupees; provided that where the infringement has not been made
for gain in the course of trade or business the court may, for adequate and special reasons to bementioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a
fine of less than fifty thousand rupees.
Whoever having already been convicted of an offence under Section 63 is again convicted of
any such offence shall be punishable for the second and for every subsequent offence, withimprisonment for a term which shall not be less than one year but which may extend to three years
and with fine which shall not be less than one hundred thousand rupees but which may extend to two
hundred thousand rupees; provided that where the in fringement has not been made for gain in the
course of trade or business the court may, for adequate and special reasons to be mentioned in the
judgment impose a sentence of imprisonment for a term of less than one year or a fine of less than onehundred thousand rupees.
Any person who knowingly makes use on a comput er of an infringing copy of a computer
programme shall be punishable with imprisonment for a term which shall not be less than seven days
but which may extend to three years and with fine which shall not be less than fifty thousand rupees
but which may extend to two hundred thousand rupees.  But if the programme is not used for gain or
in the course of trade or business, the Court may not impose imprisonment and may impose a finewhich may extend to fifty thousand rupees.
Any person who knowingly makes, or has in his possession, any plate for the purpose of
making infringing copies of any work in which copyright subsists shall be punishable with
imprisonment which may extend to two years and shall also be liable to fine.
Any person who publishes a sound recording or a video film in contravention of the
provisions of Section 52A of the Indian Copyrigh t Act, 1957 shall be punishable with imprisonment
which may extend to three years and shall also be liable to fine.
Any police officer not below the rank of a sub-inspector has the power of search and seizure
of the materials used for infringement of copyright.  They must be produced before the Magistrate.
The owner can take possession of the goods.  In case of failure to take possession, the Court at the end
of the trial disposes the property following the procedure prescribed in the Code of Criminal
Procedure, 1973.IP/C/W/326/Add.1
Page 23
The Protection of  Plant Varieties and Farmers' Rights Act, 2001
Section 68(1) of the Protection of Plant Varieties and Farmers' Rights Act, 2001 provides that
no person other than the breeder of a variety registered under this Act or a registered licensee or a
registered agent thereof shall use the denomination of that variety in the manner as may be prescribed.
Section 69(1) of the Protection of Plant Varieties and Farmers' Rights Act, 2001 provides that
a person shall be deemed to falsely apply the denomination of a variety registered under this Act who,
without the assent of the breeder of such variety applies such denomination or a deceptively similar
denomination to any variety or any package containing such variety or uses any package bearing a
denomination which is identical with or deceptively similar to the denomination of such variety
registered under this Act, for the purpose of packing, filling or wrapping therein any variety other thansuch variety registered under this Act.
Section 69(2) of the Protection of Plant Varieties and Farmers' Rights Act, 2001 provides that
any denomination of a variety registered under this Act falsely applied as mentioned in sub-
Section (1), is in this Act referred to as false denomination.
Under Section 70 of the Protection of Plant Varieties and Farmers' Rights Act, 2001, any
person who applies any false denomination to a variety;  or indicates the false name of a country or
place or false name and address of the breeder of a variety registered under this Act in course of
trading such variety; shall unless he proves that he acted, without intent to defraud, be punishable withimprisonment for a term which shall not be less than three months but which may extend to two years
or fine which shall not be less than fifty thousand rupees but which may extend to five hundred
thousand rupees or both.
Under Section 71 of the Protection of Plant Varieties and Farmers' Rights Act, 2001, any
person who sells, or exposes for sale, or has in his possession for sale or for any purpose of trade or
production any variety to which any false denomination is applied or to which an indication of the
country or place in which such variety was made or produced or the name and address of the breeder
of such variety registered under this Act has been falsely made, shall unless he proves:
- that having taken all reasonable precautions against committing an offence against this
Section, he had at the time of commission of the alleged offence no reason to suspect thegenuineness of the denomination of such variety or that any offence had been committed in
respect of indication of the country or place in which such variety registered under this Act,
was made or produced or the name and address of the breeder of such variety;
- that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom  he obtained such variety;  or
- that otherwise he had acted innocently,be punishable with imprisonment for a term which shall not be less than six months but which may
extend to two years;  or with fine which shall not be less than fifty thousand rupees but which may
extend to five hundred thousand rupees or both.
Under Section 73 of the Protection of Plant Varieties and Farmers' Rights Act, 2001,
whoever, having already been convicted of an offence under this Act is again convicted of suchoffence shall be punishable for the second and for every subsequent offence with imprisonment for a
term which shall not be less than one year but which may extend to three years;  or with fine which
shall not be less than two hundred thousand rupees  but which may extend to two million rupees or
both.IP/C/W/326/Add.1
Page 24
The Trade Marks Act, 1999
As per Section 103 of the Trade Marks Act, 1999 any person who:
- falsifies any trademark;  or- falsely applies to goods or services any trademark;  or- makes, disposes of, or has in his possession,  any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a trademark;  or
- applies any false trade description to goods or services;  or- applies to any goods to which an indication of the country or place in which they were made
or produced or the name and address of the manufacturer or person for whom the goods are
manufactured is required to be applied under Section 139, a false indication of such country,
place, name or address;  or
- tampers with, alters or effaces an indication of origin which has been applied to any goods to
which it is required to be applied under Section 139;  or
- causes any of the things above-mentioned in this Section to be done,shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a
term which shall not be less than six months but which may extend to three years and with fine which
shall not be less than fifty thousand rupees but which may extend to two hundred thousand rupees;
provided that the court may, for adequate and special reasons to be mentioned in the judgment,impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees.
As per the provisions of Section 104, any person who sells, lets for hire or exposes for sale, or
hires or has in his possession for sale, goods or things, or provides or hires services, to which any
false trademark or false trade description is applied or which, being required under Section 139 to
have applied to them an indication of the country or place in which they were made or produced or the
name and address of the manufacturer, or person for whom the goods are manufactured or services
provided, as the case may be, are without the indications so required, shall, unless he proves:
- that, having taken all reasonable precautions against committing an offence against this
Section, he had at the time of commission of the alleged offence no reason to suspect thegenuineness of the trademark or trade description or that any offence had been committed in
respect of the goods or services;  or
- that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom he obtai ned such goods or things or services;  or
- that otherwise he had acted innocently,be punishable with imprisonment for a term which shall not be less than six months but which may
extend to three years and with fine which shall not be less than fifty thousand rupees but which mayextend to two hundred thousand rupees; provided th at the court may, for adequate and special reasons
to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six
months or a fine of less than fifty thousand rupees.IP/C/W/326/Add.1
Page 25
As per Section 105 of the Trade Marks Act, 1999, whoever having already been convicted of
an offence under Section 103 or Section 104 is again convicted of any such offence shall be
punishable for the second and for every subsequent offence, with imprisonment for a term which shall
not be less than one year but which may extend to three years and with fine which shall not be less
than one hundred thousand rupees but which may extend to two hundred thousand rupees; providedthat the court may, for adequate and special reason to be mentioned in the judgment, impose a
sentence of imprisonment for a term of less than one year or a fine of less than one hundred thousand
rupees.
Section 111 provides that where a person is convicted under Section 103, 104 or 105 or is
acquitted, the Court convicting or acquitting may direct  the forfeiture to Government of all goods and
things by means of or in relation to which the offence has been committed.  The Court may order any
forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.
The Geographical Indications of Goods (Registration & Protection) Act, 1999
As per Section 39 of the Geographical Indications of Goods (Registration & Protection) Act,
1999 any person who:
- falsifies any geographical indication;  or- falsely applies to goods any geographical indication;  or- makes, disposes of, or has in his possession,  any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a geographical
indication;  or
- applies to any goods to which an indication of the country or place in which they were made
or produced or the name and the address of the manufacturer or person for whom the goods
are manufactured is required to be applied under Section 71, a false indication of such
country, place, name or address;  or
- tampers with, alters or effaces an indication of origin which has been applied to any goods to
which it is required to be applied under Section 71;  or
- causes any of the things above-mentioned in this Section to be done,shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a
term which shall not be less than six months but which may extend to three years and with fine whichshall not be less than fifty thousand rupees but which may extend to two hundred thousand rupees;
provided that the court may, for adequate and special reasons to be mentioned in the judgment,
impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees.
Section 40 of the Geographical Indications of  Goods (Registration & Protection) Act, 1999
provides that any person who sells, lets for hire or exposes for sale, or hires or has in his possession
for sale, goods or things to which any false geographical indication is applied or which, being
required under Section 71 to have applied to them an indication of the country or place in which they
were made or produced or the name and address of the manufacturer, or person for whom the goodsare manufactured or without the indications so required, shall, unless he proves:
- that, having taken all reasonable precautions against committing an offence against this
Section, he had at the time of commission of the alleged offence no reason to suspect theIP/C/W/326/Add.1
Page 26
genuineness of the geographical indication or that any offence had been committed in respect
of the goods;  or
- that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom he  obtained such goods or things;  or
- that otherwise he had acted innocently,be punishable with imprisonment for a term which shall not be less than six months but which may
extend to three years and with fine which shall not be less than fifty thousand rupees but which may
extend to two hundred thousand rupees; provided th at the court may, for adequate and special reasons
to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than sixmonths or a fine of less than fifty thousand rupees.
Section 41 of the Geographical Indications of  Goods (Registration & Protection) Act, 1999
provides that whoever having already been convic ted of an offence under Section 39 or Section 40 is
again convicted of any such offence shall be punishable for the second and for every subsequentoffence, with imprisonment for a term which shal l not be less than one year but which may extend to
three years and with fine which shall not be less than one hundred thousand rupees but which may
extend to two hundred thousand rupees;  provided th at the court may, for adequate and special reasons
to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than one year
or a fine of less than one hundred thousand rupees.
Where a person is convicted of an offence under Section 39 or Section 40 or Section 41 or is
acquitted of an offence under Section 39 or Sect ion 40 on proof that he acted without intent to
defraud, or under Section 40 on proof of the matters specified in clause (a) or clause (b) or clause (c)
of that Section, the court convicting or acquitting him may direct the forfeiture to Government of allgoods and things by means of, or in relation to, which the offence has been committed, or but for such
proof as aforesaid would have been committed.
When a forfeiture is directed on a conviction, the court, before whom the person is convicted,
may order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.
Where a person accused of an offence under Section 39 proves:
- that in the ordinary course of his business he is employed on behalf of other persons to apply
geographical indications, or as the case may be, to make dies, blocks, machines, plates, or
other instruments for making, or being used in making, geographical indications;
- that in the case which is the subject of the charge he was so employed, and was not interested
in the goods or other thing by way of profit or commission depend on the sale of such goods;
- that, having taken all reasonable precautions against committing the offence charged, he had,
at the time of the commission of the alleged offence, no reason to suspect the genuineness ofthe geographical indication;  and
- that, on demand made by or on behalf of the prosecutor, he gave all the information in his
power with respect to the persons on whose behalf the geographical indication was applied,
he shall be acquitted.IP/C/W/326/Add.1
Page 27
The Semiconductor Integrated Circuits Layout-Design Act, 2000
As per Section 18 of the Semiconductor Integrated Circuits Layout-Design Act, 2000, a
registered layout-design is infringed by a person who, not being the registered proprietor of the
layout-design or a registered user thereof:
- does any act of reproducing, whether by incorporating in a semiconductor integrated circuit or
otherwise, a registered Layout-Design in its entirety or any part thereof, except such act of
reproducing any part thereof which is not original;
- does any act of importing or selling or otherwise distributing for commercial purposes a
registered Layout-Design or a semiconductor integrated circuit incorporating such registeredLayout-Design or an article incorporating such a semiconductor integrated circuit containing
such registered Layout-Design for the use of which such person is not entitled under this Act.
Section 56 of the Semiconductor Integrated Circuits Layout-Design Act, 2000 provides that
any person who contravenes knowingly or wilfully any of the provisions of Section 18, as describedabove, shall be punishable with imprisonment for a term which may extend to three years, or with fine
which shall not be less than fifty thousand rupees but which may extend to one million rupees, or with
both.
Where a person is convicted of an offence under Section 56, the court convicting him may
direct the forfeiture to Government of all goods a nd things by means of, or in relation to, which the
offence has been committed.
The Code of Criminal Procedures, 1973, First Schedule provides that in case of offences
punishable under special statue if it is not expressly stated whether the offence is cognizable or not inthat statute, the offences, if punishable with imprisonment for three years or more are treated as
cognizable and offences punishable with imprisonment with less than 3 or with fine only are non-
cognizable offences.  In the case of the offences under Section 103, 104 and 105 of the Trade Marks
Act, 1999, Section 39, 40 and 41 of the Geographical Indications of Goods (Registration &
Protection) Act, 1999, and offences under the Indian Copyright Act, 1957, the concerned Acts
expressly provide that these offences shall be cognizable.  A police officer in-charge of a police
station shall investigate the case on his own when  the commission of a cognizable offence is brought
to his knowledge.  In case of non-cognizable offences, police can investigate only on order of a
Magistrate having power to try such case.
As per the Code of Criminal Procedure, 1973, it is the duty of the police officer in charge of
the police station to take action in a cognizable offence.  A private person may provide informationrelating to the commission of a cognizable offence and it is the duty of the Police Officer to take
action in such cases.  A private complaint can also be filed to initiate prosecution. Any person
interested can file a complaint under Section 200 of the Code of Criminal Procedure, 1973 to a
Magistrate to take cognizance of the offence.  In case of non-cognizable offences, action could be
initiated only on an order by a Magistrate based on a complaint filed to the Magistrate having powerto try such cases.
9. Please indicate titles of laws and regulations and their provisions in which the suspension of
the release of counterfeit trademark or pirated copyright goods is prescribed, as stipulated in
Article 51 of the TRIPS Agreement.
The Indian Copyright Act, 1957 provides that the Registrar of Copyrights, on application by
the owner of the copyright in any work or by his duly authorised agent and on payment of prescribed
fee, may, after making such inquiry as he deems fit, order that copies which would infringe copyright
within the meaning of the Indian Copyright Act, 1957 shall not be imported.  The Registrar ofIP/C/W/326/Add.1
Page 28
Copyrights or any person authorised by him in his behalf may enter any ship, dock or premises where
any such copies may be found and may examine such copies. All copies to which any such order
made by the Registrar of Copyrights applies shall be deemed to be goods of which the import has
been prohibited or restricted under Section 11 of the Customs Act, 1962 and all the provisions of the
Customs Act, 1962 shall have effect accordingly, provided that all such copies confiscated under theprovisions of the Customs Act, 1962 shall not vest in the Government but shall be delivered to the
owner of the copyright in the work.
The proprietor or a licensee of a registered trademark may give notice in writing to the
Commissioner of Customs to prohibit the importation of goods if the import of such goods constitute
infringement under the Trade Marks Act, 1999.  Importation of goods which falsely apply a trademark
within the meaning of the Trade Marks Act, 1999 is prohibited in India and such goods are liable to
confiscation on importation under the Customs Act, 1962.  Where such goods are imported into India,
the Commissioner of Customs if, upon representation made to him, he has reason to believe that the
trademark complained of is used as a false trademark, may require the importer of the goods, or his
agent, to produce any documents in his possession relating to the goods and to furnish information as
to the name  and address of the person by whom the goods were consigned to India and the name andaddress of the person to whom the goods were sent to India.  The importer or his agent shall, within
fourteen days, comply with the requirement.  Any information obtained from the importer of the
goods or his agent may be communicated by the Commissioner of Customs to the registered
proprietor or registered user of the trademark which is alleged to have been used as a false trademark.
Under Section 11(2)(n) of the Customs Act,  1962, the Central Government is empowered to
prohibit absolutely or subject to such condition as may be specified, the import or export of goods for
the purpose of the protection of patent, trademarks and copyrights by issuing notifications.  In
exercise of this power, the Government has issued a notification prohibiting the import of goods
which cause infringement of intellectual property rights relating to trademarks and industrial designs.Similarly, the Government has issued a notification prohibiting the export of goods which cause
infringement of trademarks.
Section 111(d) of the Customs Act, 1962 provides for confiscation of the goods, which are
imported or attempt to be imported or brought within the Indian customs waters for the purpose of
being imported, contrary to any prohibition imposed by or under the Customs Act, 1962 or any other
law for the time being in force and a penalty is im posable on the person who, in relation to any goods,
does or omits to do any act which act or omission would render such goods liable to confiscation.
Under the Customs Act, 1962, the customs officers are fully empowered to seize the goods,
which they have reasons to believe, are liable to confiscation under this Act by giving a notice to the
owner of the goods.  Before confiscating the infringing goods, a notice is required to be served to theimporter informing him the ground on which the goods are proposed to be confiscated or penalty is to
be imposed.  Further, the importer is also given a reasonable opportunity of making a representation
in writing or being heard in the matter.IP/C/W/326/Add.1
Page 29
UNITED STATES
A. GENERAL
1. Please describe, in relation to each form of intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which national treatment and most
favoured nation treatment are provided to nationals of other WTO Members.
[No reply received]
B. COPYRIGHT AND RELATED RIGHTS
2. Please explain whether and how the copyright la w of India complies with Article 9 of the
TRIPS Agreement requiring that Members comply with all Articles 1 through 21 of the Berne
Convention (1971), except Article 6bis, since Members do not have rights or obligations relating to the
latter Article under the TRIPS Agreement.
Indian Copyright Act, 1957 under Section 13 and 14 recognizes all works and rights protected
under the Berne Convention.  National Treatment is provided as per Berne under Section 40 of the
Act read with the International Copyright Order, 1999.  Section 52 of the Act provides for limited
exceptions based on the provisions of the Berne Convention.  Moral rights are protected underSection 57.  Section 53A provides for the resale right in original copies of the works.
3. Please explain how the copyright law of India protects computer programs as literary works
and complications of data as required by Article 10 of the TRIPS Agreement.
Section 13 of the Indian Copyright Act, 1957 read with Section 2(o), (ffb) and (ffc) protects
computer programme and databases.  The definiti on of "computer programme" under Section 2(ffc) is
in accordance with Article 10 of TRIPS Agreement.
4. Article 11 of the TRIPS Agreement requires that rental rights for computer programs and
cinematographic works be available.  Please cite to the corresponding provision of the copyright law
of India.
Section 14 (b)(ii) of the Indian Copyright Act, 1957 provides for the rental right of computer
programme and Section 14(d)(ii) provides for the rental right of cinematographic films.
5. Please state the length and terms of protection the copyright law of India provides for a work
other than a photographic work or a work of applied art and cite to the relevant provision of law.
Sections 22–29 of the Indian Copyright Act, 1957 in detail provide for the length and terms of
protection of various works.  The normal rule is life of the author and sixty years. In the case of
cinematographic films and sound records it is sixty years from publication.
6. Please describe the protection the copyright law of India provides for performers, and the
term of the protection.
Section 38 of the Indian Copyright Act, 1957 provides for the protection of performers based
on the provisions of the Rome Convention.  The duration is fifty years from the beginning of the
calendar year next following the year in which the performance is made.
7. Article 14.2 of the TRIPS Agreement provides th at producers of phonograms are to enjoy the
right to authorize or prohibit the direct or indirect reproduction of their phonograms. Article 14.2
requires that producers of phonograms are to have the right to authorize or prohibit the commercialIP/C/W/326/Add.1
Page 30
rental to the public of originals or copies of their phonograms. Please describe how the copyright law
of India implements these obligations and indicate the term of protection.
Section 13 of the Indian Copyright Act, 1957 recognizes sound recordings as a work for
protection of copyright.  Section 14(e)(i) provides for reproduction rights and Section 14(e)(ii)
provides for rental rights.
Section 27 of the Indian Copyright Act, 1957 defines that the term of copyrights in sound
recordings shall subsist until sixty years from the beginning of the calendar year next following the
year in which the film is published.
C. TRADEMARKS
8. Please describe in detail how India provides for priority for trademark applications based on
a foreign trademark application or registration.
In order to provide for trademark applications based upon a foreign trademark
application/registration Government of India has to issue a notification under Section 131 of the Trade
& Merchandise Marks Act, 1958, declaring all members of WTO as convention countries in respect
of protection of trademark rights, including the extension of right of priority. This notification hasbeen issued on 3 December 1998.
9. Please describe in detail how India provides protection for service marks.
The Indian law provides the same level of protection to trademarks used in relation to goods
or services.  The expression "trade mark" is defined  under Section 2(1)(zb) of the Trade Marks Act,1999 to cover both goods and/or services.
10. Please describe in detail how India provides protection for unregistered well-known marks.
The Trade Marks Act, 1999 protects a well known mark under Section 9(1).  The Act contains
provisions for the protection of well-known mark which include definition of a well known mark[Section 2(1) (zg)]; elaboration of factors which the Registrar will have to take into account in
determining whether a trademark is well known or not. [Section 11(6)]; non-requirement under
Section 11(9) that the well known trademark should have been used in India, or have been registered
or an application  to have been filed in India; protection, in opposition proceedings, under
Section 11(10) of a well known trademark against identical or similar trademarks; recognition under
Section 27(2) of the common law rights of the trad emark owner to take action against any person for
passing off goods/services as those of another person.
D. G
EOGRAPHICAL INDICATIONS
11. Please describe in detail how the laws of India provide for the recognition and protection of
geographical indications required by Article 22.2 of the TRIPS Agreement, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications so protected.
The Geographical Indications of Goods (Registration and Protection) Act, 1999 ("G.I. Act")
provides statutory protection to Geogra phical Indications ("G.I.") in India.
Section 2(1)(e) of the Act defines the term "geographical indication" to include agricultural
goods, natural goods or manufactured goods as originating, or manufactured in the territory of thecountry, or a region or locality in that territory, where a given quality, reputation or other
characteristics of such goods is essentially attribut able to its geographical origin and in case whereIP/C/W/326/Add.1
Page 31
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.
The Act provides that any association of persons or producers or any organisation or authority
representing the interest of producers of the goods may file an application for registration of a G.I.Once registered the G.I. gives both the registered proprietor and all the authorised users thereof,
whose names are entered in a separate register (part B) to obtain relief for infringement.  However,
only the producers of the goods bearing G.I. would have the exclusive right to the use of the
registered G.I.
So far no geographical indications have been protected under the Act.
12. Please describe in detail the manner in which the higher level of protection required for
wines and spirits under Article 23.2 of the TRIPS Ag reement is implemented, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications for such products.
Section 22(2) of the Geographical Indications of Goods (Registration and Protection) Act,
1999 empowers the Central Government to provide additional protection to certain goods and classesof goods by notification in the Official Gazette, specifying such goods or class/classes of goods for
the purposes of such protection. This would also include wines and spirits.
13. It appears that India's Geographical Indications of Goods (Restriction and Protection) Act,
1999, does not permit natural persons to register geographical indications. Please explain whynatural persons are prohibited from obtaining geographical indication registrations.
Under the Geographical Indications of Goods  (Registration and Protection) Act, 1999, a
geographical indication of good relates to products, agricultural or manufactured which originate in a
defined geographical area and which owes its unique characteristics to features which are unique to
that region.  A geographical indication is considered under the act to be the property or heritage of allthe persons engaged in the activity of creating products that bear the Geographical Indication.
14. Please describe in detail the manner in which an opposition to registration of a geographical
indication may be filed. May natural persons file oppositions?
Section 14 of the Geographical Indications of  Goods (Registration and Protection) Act, 1999
provides the manner for filing an opposition to a G.I. advertised in the G.I. Journal.  Any person,
including a natural person, may file a notice of opposition.
Procedure:
(1) Any person may, within three months from the date of advertisement or re-
advertisement of an application for registration or within such further period, notexceeding one month, in the aggregate, as the Registrar, on application made to him
in such manner and on payment of such fee as maybe prescribed allows, give notice
in writing in the prescribed manner to the Registrar, of opposition to the registration.
(2) The Registrar shall service a copy of the notice on the applicant for registration and,
within two months from the receipt by the applicant of such copy of notice ofopposition, the applicant shall send to the Registrar in the prescribed manner a
counterstatement of the grounds on which he relies for his application, and if he does
not do so, he shall be deemed to have abandoned his application.
(3) If the applicant sends such counter statement, the Registrar shall serve a copy thereof
on the person giving notice of opposition.IP/C/W/326/Add.1
Page 32
(4) Any evidence upon which the opponent and the applicant may rely shall be submitted
in such manner and within the such time as may be prescribed to the Registrar, and
the Registrar shall give an opportunity to them to be heard, if they so desire.
(5) The Registrar shall, after hearing the parties, if so required, and considering the
evidence, decide whether and subject to what conditions or limitations, if any, theregistration is to be permitted, and may take into account a ground of objection
whether relied upon by the opponent or not.
(6) Where a person giving notice of opposition or an applicant sending a
counterstatement after receipt of a copy of such notice neither resides nor carries on
business in India, the Registrar may require him to give security for the costs of
proceeding before him and in fault of such security being duly given, may treat the
opposition or application, as the case may be, as abandoned.
(7) The Registrar may, on request, permit correction of any error in, or any amendment
of, a notice of opposition, or a counterstatement on such terms as he thinks just.
15. Please describe in detail the manner in which (and identify the relevant legal bases under
which) a registered geographical indication may be challenged.
Section 27(1) the Geographical Indications of Goods (Registration and Protection) Act, 1999
empowers the Registrar of Geographical Indication or the Appellate Board to make such orders as it
may think fit for cancelling or varying the registra tion of a G.I. or authorised user on the ground of
any contravention or failure to observe the conditions entered on the register in relation thereto.
Section 27(2) provides "any person aggrieved by the absence or omission from the register of
any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly
remaining on the register, or by any error or defect in any entry in the register, may apply in the
prescribed manner to be Appellate Board or to the Registrar, and the tribunal may make such order for
making, expunging or varying the entry as it may think fit".
Under Section 9 of the Act, a geographical indication may be challenged on grounds which
are likely to deceive or cause confusion, or the use of which may be contrary to any law in force or
which comprises or contains scandalous or obsc ene matters or which comprises or contains any
matters likely to hurt the religious susceptibilities of any class or Section of the citizens of India.
16. Where may India's list of registered geographical indications be found? Is the list available
via the Internet?
Since no geographical indications have been registered so far, a list of geographical
indications is not yet available.  It would be available over a period of time on the website of the
Geographical Indications Registry. ( www.patentindia.nic.in )
E. INDUSTRIAL DESIGNS
17. Please describe in detail how India provides for priority for industrial design applications
based on a foreign industrial design application or registration.
Priority for industrial design applications based on a foreign application for registration under
the Designs Act, 2000 for all the Member countries of the Paris Convention and Members of the
World Trade Organization is provided under Section 44.IP/C/W/326/Add.1
Page 33
F. PATENTS
18. Please describe in detail the way in which the patent law of India implements Article 27 of the
TRIPS Agreement, indicating any exceptions prov ided for, and including details regarding the
protection for micro-organisms and non-biological and microbiological processes and plant varieties.
Please cite to the relevant provisions of the law.
[No reply received]
19. Please describe in detail the rights provided patent holders under the patent law of India and
cite to the relevant provisions of law.
[No reply received]
20. Please describe in detail any provisions in the laws of India permitting unauthorized use of a
patent, citing to the relevant provisions of law, and describe in detail the conditions under which such
use can occur.
[No reply received]
21. What term of protection does the patent law of India provide for patents?  Please describe
any provisions for extension of the term of protection and cite to the relevant provisions of the law.
[No reply received]
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
22. Please describe in detail the protection for layout-designs of integrated circuits provided
under the laws of India, including the term of protection, and cite to the relevant provisions of law.
The Semiconductor Integrated Circuits Layout Design Act, 2000 gives several protections to
the registered proprietor of layout design. These include exclusive right to use of the layout design
and obtaining relief in respect of infringement in the manner provided under Sections 17 and 18 of the
Act.
These cover the aspects of:- Any act of reproducing/incorporating in semiconductor integrated circuits a registered
layout design in its entirety or part thereof;
- Any act of importing or selling or distributing for commercial purposes a registered
layout design or Semiconductor integrated circuits incorporating registered layout
design or an article incorporating such a Semiconductor integrated circuits containing
registered layout design for the use of which such person is not entitled other than a
registered users thereof.  The rights (protection) conferred by the registration of a
layout design will be available to the registered proprietor of layout designirrespective of fact as to whether the layout design is incorporated in an article or not;
- The term (duration) of protection for a layout design shall be a period of 10 years
counted from the date of filing of application for registration or from the date of first
commercial exploitation anywhere in India or in any other country whichever isearlier (Sections 15 and 19 of the Act).IP/C/W/326/Add.1
Page 34
H. PROTECTION OF UNDISCLOSED INFORMATION
23. Please describe in detail how the laws of India provide for the protection of undisclosed
information as required by Article 39.2 of the TR IPS Agreement and provide citations to the relevant
provisions of law.
[No reply received]
24. Please describe in detail the manner in which pr otection is provided to test data regarding
pharmaceutical and agricultural chemical products submitted to the government in order to obtain
marketing approval in India and cite to the relevant provisions of law.
Common law, service regulations and the provisions against disclosure of data in the Drugs
and Cosmetics Rules, 1945 and the Insecticide Rules, 1971 protect data submitted to regulatory
authorities from unauthorized disclosure and unfair commercial use.  The procedure for marketauthorization of a pharmaceutical or of an agricultural chemical product is governed by the provisions
of the Drugs and Cosmetics Act, 1940 and the Insecticides Act, 1968 and the rules thereof,
respectively. Rule 53 of the Drugs and Cosmetics Rules, 1945 provides that except for the purpose of
official business or when required by a Court of law, an Inspector under the Drugs and Cosmetics Act,
1940 shall not without the sanction in writing of his official superior, disclose to any person anyinformation acquired by him in the course of his official duties. Rule 29 of the Insecticides Rules,
1971 provides that except for the purpose of official business or when required by a Court of law an
insecticides Inspector shall not disclose to an y person any information acquired by him in the
performance of his official duties.
25. Are other applicants for marketing approval for their own versions of a previously approved
pharmaceutical or agricultural chemical products pe rmitted to rely on data submitted by the earlier
applicant?  If so, how long a period of exclusivity is given the earlier applicant before such reliance
becomes possible.
[No reply received]
I. E
NFORCEMENT
26. Please describe in detail the manner in which the laws of India provide for effective action
against infringement of intellectual property rights as required by Article 41.1 of the TRIPS
Agreement.
Please refer to reply to question no. 28 given below.
27. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order production
of evidence necessary to substantiate a party's claims where that party has been unable to obtain such
evidence from the opposing party. Please describe how the laws or regulations of India provide this
authorization, citing to the relevant provisions of law or regulation.
The Code of Civil Procedure, 1908 and the Indian Evidence Act, 1872 give authority to Civil
Courts, at any time during the pendency of the suit, to order the production by any party, upon oath of
such of the documents in his possession or power, relating to any matter in question in the suit.  The
Code of Civil Procedure, 1908 provides that the Co urt may, at any time, either of its own motion or
on the application of any party:
- make such orders as may be necessary or reasonable in all matters relating to the delivery and
answering of interrogatories, the admission of documents and facts, and the discovery,IP/C/W/326/Add.1
Page 35
inspection, production, impounding and return of documents or other material objects
producible as evidence;
- issue summonses to persons whose attendance is required either to give evidence or to
produce documents or such other objects as aforesaid;
- order any fact to be proved by affidavit.
Any party may, without filing an affidavit, appl y to the Court for an order directing any other
party to any suit to make discovery on oath of the documents which are or have been in his possession
or power, relating to any matter in question therein. On the hearing of such application the Court may,
if satisfied, make such order, either generally or limited to certain classes of documents, as may, in itsdiscretion, be thought fit.
28. Please describe in detail all of the civil remedies that are available to right holders under the
laws of India, citing to the relevant provisions of law or regulation.
The Specific Relief Act, 1963 provides that a perpetual injunction may be granted to the
plaintiff to prevent the breach of an obligation existing in his favour, whether expressly or by
implication. The plaintiff in a suit for perpetual injunction under of the Specific Relief Act, 1963, may
claim damages either in addition to, or in substitut ion for, such injunction and the Court may, if it
thinks fit, provide such damages.
The Code of Civil Procedure, 1908 provides that in any suit for restraining the defendant from
committing a breach of contract or other injury of any kind, whether compensation is claimed in the
suit or not, the plaintiff may, at any time after the commencement of the suit, and either before or after
judgment, apply to the court for a temporary injunction to restrain the defendant from committing the
breach of contract or injury complained of, or any breach of contract or injury of a like kind arisingout of the same contract or relating to the same property or right.  The Court may by order grant such
injunction, on such terms as to the duration of the injunction, keeping in account, giving security, or
otherwise, as the court thinks fit. Grant of injunction is a discretionary relief and the Court has to take
into account prima facie  case, balance of convenience and likelihood of irreparable injury.
The power of the Courts is not limited to the grant of injunction or damages, stated above.
Subject to such terms, the Courts have inherent power to pass any order having regard to thecircumstances and nature of the case to render justice and ultimately to protect public interest.
The Code of Civil Procedure, 1908 provides that the costs of and incident to all suits shall be
in the discretion of the Court, and the Court shal l have full power to determine by whom or out of
what property and to what extent such costs are to be paid, and to give all necessary directions for thepurposes aforesaid.
In addition to the provisions in the Code of Civil Procedure, 1908, the Trade Marks Act,
1999, the Designs Act, 2000, the Geographical Indications  of Goods  (Registration & Protection) Act,
1999, the Indian Copyright Act, 1957 and the Protection of Plant Varieties and Farmers' Rights Act,2001 also specifically provide for the remedies that may be ordered by the judicial authorities.
The Trade Marks Act, 1999 provides for relief in suits for infringement or for  passing off.  It
states that an order passed by the District Court or any superior Court on appeal, may include an
ex parte  injunction or any interlocutory orde r for any of the following matters:
- for discovery of documents;IP/C/W/326/Add.1
Page 36
- preserving of infringing goods, documents or other evidence which are related to the subject
matter of the suit;
- restraining the defendant from disposing of or dealing with the assets in a manner which may
adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedieswhich may be finally awarded to the plaintiff.
The law thus explicitly recognizes the powers of the Courts to pass orders of the nature of
"Anton Pillar Order" or "Mareva injunction" of the United Kingdom in trademark proceedings. The
relief which a Court may grant in any suit for infrin gement or for passing off include injunction and at
the option of the plaintiff, either damages or an account of profits, together with or without any order
for the delivery up of the infringing labels and marks for destruction or erasure.
Under the Designs Act, 2000 remedies for infringement are provided by way of monetary
fines, permanent injunction and damages. Recovery of  profit is granted as an alternative remedy to
damages and not as an additional remedy.
Under the Geographical Indications of Goods (R egistration & Protection) Act, 1999 an order
passed by the District Court or any superior Court on appeal, may include an ex parte  injunction or
any interlocutory order for any of the following matters:
- for discovery of documents;- preserving of infringing goods, documents or other evidence which are related to the subject
matter of the suit;
- restraining the defendant from disposing of or dealing with his assets in a manner which may
adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies
which may be finally awarded to the plaintiff.
Under the Geographical Indications of Goods (R egistration & Protection) Act, 1999, the relief
which a Court may grant in any suit for infringement or for passing off include injunction and at the
option of the plaintiff, either damages or an account of profits, together with or without any order for
the delivery of the infringing labels and marks for destruction or erasure.
Under the Indian Copyright Act, 1957, in a civil suit, the owner of the copyright is entitled to
remedies by way of injunctions, damages, accounts and otherwise as are or may be conferred by law
for infringement of a right. The copyright owner can also claim costs including compensatory costs
and attorneys' fees. In case of copyright infringement the right holder also has the right to infringingcopies or any conversion of the infringing copies.
Under the Patents Act, 1970, the relief which a court may grant in any suit for infringement
include an injunction and at the option of plaintiff, either damages or an account of profits.
Under the Protection of Plant Varieties and Farmers' Rights Act, 2001, the relief which a
court may grant in any suit for infringement include an injunction and at the option of the plaintiff,
either damages or a share of the profits.   The order of injunction may include an ex parte  injunction or
any interlocutory order for any of the following matters, namely:
- for discovery of documents;
- preserving of infringing variety or documents or other evidence which are related to the
subject matter of the suit;IP/C/W/326/Add.1
Page 37
- attachment of such property of the defendant which the court deems necessary to recover
damages, costs or other pecuniary remedies wh ich may be finally awarded to the plaintiff.
29. Please describe in detail the provisional procedures and remedies available to right holders
under the laws of India, citing to the relevant provisions of law and regulation, and indicate anycondition under which a right holder may avail itself of those procedures and remedies.
Please see the reply to question no. 28 also.
The Code of Civil Procedure, 1908 provides for interim reliefs in favour of the parties.
Interim relief is provided to meet the end of justice in the interim after a civil action is instituted.
During the process of adjudication judicial author ities have powers to grant interim relief to the
parties in the form of ad interim, interim, or temporary injunction.  Such orders may also be passed toprotect public interest. Injunctions may be granted interlocutory, granted before trial, or permanent,
granted after trial.  Interim injunctions are granted if the Court is satisfied that there is a prima facie
case for the relief sought, that the balance of convenience is in the plaintiff's favour and that if interim
injunction is not granted it will cause irreparable injury to the plaintiff. Interim injunctions may be in
force till the court takes a decision on that matter or finally decides the case.  If the plaintiff succeedsat the trial he will be entitled to a permanent injunction.
The Court may, upon the application of the plaintiff allow a representative of the court
usually a Court Commissioner (an independent ad vocate of the Court) to enter the premises of
defendants in order to search and seize documents and evidence. The order can be ex parte  (inaudita
altera parte ). This is similar to the Anton Pillar Order of the United Kingdom.  The Court may issue a
direction restraining the defendants from disposing of their assets within the jurisdiction until the trial
or judgment in the action.  This order can be ex parte .  This is similar to the Mareva Injunctions in the
United Kingdom.
In addition to the provisions in the Code of Civil Procedure, 1908, the Trade Marks Act,
1999, the Geographical Indications of Goods (Registr ation & Protection) Act, 1999 and the Protection
of Plant Varieties and Farmers' Rights Act, 2001, have specific provisions to enable courts to grant
ex parte  injunction and in particular Anton Pillar type of orders.  These are ex parte  orders for search
and seizure (in urgent cases where evidence are vulnerable to tampering) and orders in the nature of
Mareva injunction intended to preserve evidence or documents relating to the subject matter of the
suit so that the defendant is restrained from dealing with the assets in a manner to defeat the plaintiff's
ability to recover damages or other pecuniary remedies after final order. This is envisaged with a view
to deter infringement activities.
J. S
PECIAL REQUIREMENTS RELATED TO BORDER MEASURES
30. Please describe in detail the procedures under the laws of India that provide for border
enforcement at least for trademark counterfeiting and copyright piracy, identifying the competent
authority and citing to the relevant provisions of law or regulation.
The Indian Copyright Act, 1957 provides that the Registrar of Copyrights, on application by
the owner of the copyright in any work or by his duly authorised agent and on payment of prescribed
fee, may, after making such inquiry as he deems fit, order that copies which would infringe copyrightwithin the meaning of the Indian Copyright Act, 1957 shall not be imported. The Registrar of
Copyrights or any person authorised by him in his behalf may enter any ship, dock or premises where
any such copies may be found and may examine such copies. All copies to which any such order
made by the Registrar of Copyrights applies shall be deemed to be goods of which the import has
been prohibited or restricted under Section 11 of the Customs Act, 1962 and all the provisions of theCustoms Act, 1962 shall have effect accordingly, provided that all such copies confiscated under theIP/C/W/326/Add.1
Page 38
provisions of the Customs Act, 1962 shall not vest in the Government but shall be delivered to the
owner of the copyright in the work.
The proprietor or a licensee of a registered trademark may give notice in writing to the
Commissioner of Customs to prohibit the importation of goods if the import of such goods constituteinfringement under the Trade Marks Act, 1999. Importation of goods which falsely apply a trademark
within the meaning of the Trade Marks Act, 1999 is prohibited in India and such goods are liable to
confiscation on importation under the Customs Act, 1962. Where such goods are imported into India,
the Commissioner of Customs if, upon representation made to him, he has reason to believe that the
trademark complained of is used as a false trademark, may require the importer of the goods, or his
agent, to produce any documents in his possession relating to the goods and to furnish information as
to the name  and address of the person by whom the goods were consigned to India and the name andaddress of the person to whom the goods were sent to India. The importer or his agent shall, within
fourteen days, comply with the requirement. Any information obtained from the importer of the goods
or his agent may be communicated by the Commissi oner of Customs to the registered proprietor or
registered user of the trademark which is alleged to have been used as a false trademark.
Under Section 11(2)(n) of the Customs Act,  1962, the Central Government is empowered to
prohibit absolutely or subject to such condition as may be specified, the import or export of goods for
the purpose of the protection of patent, trademarks and copyrights by issuing notifications. In exercise
of this power, the Government has issued a notification prohibiting the import of goods which cause
infringement of intellectual property rights relating to trademarks and industrial designs. Similarly,the Government has issued a notification prohibiting the export of goods which cause infringement of
trademarks.
Section 111(d) of the Customs Act, 1962 provides for confiscation of the goods, which are
imported or attempt to be imported or brought within the Indian customs waters for the purpose ofbeing imported, contrary to any prohibition imposed by or under the Customs Act, 1962 or any other
law for the time being in force and a penalty is imposable on the person who, in relation to any goods,
does or omits to do any act which act or omission would render such goods liable to confiscation.
Under the Customs Act, 1962, the customs officers are fully empowered to seize the goods,
which they have reasons to believe, are liable to confiscation under this Act by giving a notice to the
owner of the goods. Before confiscating the infringing  goods, a notice is required to be served to the
importer informing him the ground on which the goods are proposed to be confiscated or penalty is to
be imposed. Further, the importer is also given a reasonable opportunity of making a representation in
writing or being heard in the matter.
31. Please indicate if border enforcement is available to owners of other forms of intellectual
property and, if so, please describe the procedures and remedies available in relation to each form of
intellectual property, citing the relevant provisions of law.
[No reply received]
32. Article 58 of the TRIPS Agreement specifies procedures to be followed where the competent
authorities can act ex officio. Please explain whether the competent authorities in India are
empowered to act ex officio and, if so, please iden tify the intellectual property areas subject to ex
officio action.
Under the Customs Act, 1962 customs authorities may take action with respect to import of
goods which would cause infringement as provided in the Trade Marks Act and the Indian CopyrightAct on a request as stated in reply to question 23.IP/C/W/326/Add.1
Page 39
K. CRIMINAL PROCEDURES
33. Please describe in detail how the laws of In dia implement Article 61 of the TRIPS Agreement
that requires Members to have criminal proce dures and penalties, including imprisonment and/or
monetary fines sufficient to act as a deterrent, at least for cases of willful trademark counterfeiting
and copyright infringement on a commercial scale.  Please cite to the relevant provisions of law andregulation.
Criminal remedies are not available under th e Designs Act, 2000 and the Patents Act, 1970.
The criminal procedures and penalties and other remedies for infringement of various intellectual
property rights under other relevant Acts are as follows:
The Indian Copyright Act, 1957
As per Section 63 of the Indian Copyright Act, 1957, any person who knowingly infringes or
abets the infringement of:
- the copyright in a work;  or
- any other right conferred by this Act, except the right conferred by Section 53A,
shall be punishable with imprisonment for a term which shall not be less than six months but which
may extend to three years and with fine which shall not be less than fifty thousand rupees but which
may extend to two hundred thousand rupees; provided that where the infringement has not been madefor gain in the course of trade or business the court may, for adequate and special reasons to be
mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a
fine of less than fifty thousand rupees.
Whoever having already been convicted of an offence under Section 63 is again convicted of
any such offence shall be punishable for the second and for every subsequent offence, with
imprisonment for a term which shall not be less than one year but which may extend to three years
and with fine which shall not be less than one hundred thousand rupees but which may extend to two
hundred thousand rupees; provided that where the in fringement has not been made for gain in the
course of trade or business the court may, for adequate and special reasons to be mentioned in the
judgment impose a sentence of imprisonment for a term of less than one year or a fine of less than one
hundred thousand rupees.
Any person who knowingly makes use on a computer of an infringing copy of a computer
programme shall be punishable with imprisonment for a term which shall not be less than seven days
but which may extend to three years and with fine which shall not be less than fifty thousand rupees
but which may extend to two hundred thousand rupees. But if the programme is not used for gain orin the course of trade or business, the Court may not impose imprisonment and may impose a fine
which may extend to fifty thousand rupees.
Any person who knowingly makes, or has in his possession, any plate for the purpose of
making infringing copies of any work in which copyright subsists shall be punishable withimprisonment which may extend to two years and shall also be liable to fine.
Any person who publishes a sound recording or a video film in contravention of the
provisions of Section 52A of the Indian Copyrigh t Act, 1957 shall be punishable with imprisonment
which may extend to three years and shall also be liable to fine.
Any police officer not below the rank of a sub-inspector has the power of search and seizure
of the materials used for infringement of copyright.  They must be produced before the Magistrate.IP/C/W/326/Add.1
Page 40
The owner can take possession of the goods.  In case of failure to take possession, the Court at the end
of the trial disposes the property following the procedure prescribed in the Code of Criminal
Procedure, 1973.
The Protection of  Plant Varieties and Farmers' Rights Act, 2001
Section 68(1) of the Protection of Plant Varieties and Farmers' Rights Act, 2001 provides that
no person other than the breeder of a variety registered under this Act or a registered licensee or a
registered agent thereof shall use the denomination of that variety in the manner as may be prescribed.
Section 69(1) of the Protection of Plant Varieties and Farmers' Rights Act, 2001 provides that
a person shall be deemed to falsely apply the denomination of a variety registered under this Act who,without the assent of the breeder of such variety applies such denomination or a deceptively similar
denomination to any variety or any package containing such variety or uses any package bearing a
denomination which is identical with or deceptively similar to the denomination of such variety
registered under this Act, for the purpose of packing, filling or wrapping therein any variety other than
such variety registered under this Act.
Section 69(2) of the Protection of Plant Varieties and Farmers' Rights Act, 2001 provides that
any denomination of a variety registered under this Act falsely applied as mentioned in sub-
Section(1), is in this Act referred to as false denomination.
Under Section 70 of the Protection of Plant Varieties and Farmers' Rights Act, 2001, any
person who applies any false denomination to a variety;  or indicates the false name of a country or
place or false name and address of the breeder of a variety registered under this Act in course of
trading such variety; shall unless he proves that he acted, without intent to defraud, be punishable with
imprisonment for a term which shall not be less th an three months but which may extend to two years
or fine which shall not be less than fifty thousand rupees but which may extend to five hundred
thousand rupees or both.
Under Section 71 of the Protection of Plant Varieties and Farmers' Rights Act, 2001, any
person who sells, or exposes for sale, or has in his possession for sale or for any purpose of trade or
production any variety to which any false denomination is applied or to which an indication of the
country or place in which such variety was made or produced or the name and address of the breederof such variety registered under this Act has been falsely made, shall unless he proves:
- that having taken all reasonable precautions against committing an offence against this
Section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the denomination of such variety or that any offence had been committed inrespect of indication of the country or place in which such variety registered under this Act,
was made or produced or the name and address of the breeder of such variety;
- that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom  he obtained such variety;  or
- that otherwise he had acted innocently,be punishable with imprisonment for a term which shall not be less than six months but which may
extend to two years;  or with fine which shall not be less than fifty thousand rupees but which mayextend to five hundred thousand rupees or both.
Under Section 73 of the Protection of Plant Varieties and Farmers' Rights Act, 2001,
whoever, having already been convicted of an offence under this Act is again convicted of such
offence shall be punishable for the second and for every subsequent offence with imprisonment for aIP/C/W/326/Add.1
Page 41
term which shall not be less than one year but which may extend to three years;  or with fine which
shall not be less than two hundred thousand rupees  but which may extend to two million rupees or
both.
The Trade Marks Act, 1999
As per Section 103 of the Trade Marks Act, 1999 any person who:
- falsifies any trademark;  or- falsely applies to goods or services any trademark;  or
- makes, disposes of, or has in his possession,  any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a trademark;  or
- applies any false trade description to goods or services;  or
- applies to any goods to which an indication of the country or place in which they were made
or produced or the name and address of the manufacturer or person for whom the goods are
manufactured is required to be applied under Section 139, a false indication of such country,
place, name or address;  or
- tampers with, alters or effaces an indication of origin which has been applied to any goods to
which it is required to be applied under Section 139;  or
- causes any of the things above-mentioned in this Section to be done,
shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a
term which shall not be less than six months but which may extend to three years and with fine which
shall not be less than fifty thousand rupees but which may extend to two hundred thousand rupees;
provided that the court may, for adequate and special reasons to be mentioned in the judgment,
impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees.
As per the provisions of Section 104, any person who sells, lets for hire or exposes for sale, or
hires or has in his possession for sale, goods or things, or provides or hires services, to which any
false trademark or false trade description is applied or which, being required under Section 139 to
have applied to them an indication of the country or place in which they were made or produced or the
name and address of the manufacturer, or person for whom the goods are manufactured or servicesprovided, as the case may be, are without the indications so required, shall, unless he proves:
- that, having taken all reasonable precautions against committing an offence against this
Section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the trademark or trade description or that any offence had been committed inrespect of the goods or services;  or
- that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom he obtai ned such goods or things or services;  or
- that otherwise he had acted innocently,
be punishable with imprisonment for a term which shall not be less than six months but which may
extend to three years and with fine which shall not be less than fifty thousand rupees but which may
extend to two hundred thousand rupees; provided th at the court may, for adequate and special reasonsIP/C/W/326/Add.1
Page 42
to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six
months or a fine of less than fifty thousand rupees.
As per Section 105 of the Trade Marks Act, 1999, whoever having already been convicted of
an offence under Section 103 or Section 104 is again convicted of any such offence shall bepunishable for the second and for every subsequent offence, with imprisonment for a term which shall
not be less than one year but which may extend to three years and with fine which shall not be less
than one hundred thousand rupees but which may extend to two hundred thousand rupees; provided
that the court may, for adequate and special reason to be mentioned in the judgment, impose a
sentence of imprisonment for a term of less than one year or a fine of less than one hundred thousand
rupees.
Section 111 provides that where a person is convicted under Section 103, 104 or 105 or is
acquitted, the Court convicting or acquitting may direct  the forfeiture to Government of all goods and
things by means of or in relation to which the offence has been committed. The Court may order any
forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.
The Geographical Indications of Goods (Registration & Protection) Act, 1999
As per Section 39 of the Geographical Indications of Goods (Registration & Protection) Act,
1999 any person who:
- falsifies any geographical indication;  or
- falsely applies to goods any geographical indication;  or- makes, disposes of, or has in his possession,  any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a geographical
indication;  or
- applies to any goods to which an indication of the country or place in which they were made
or produced or the name and the address of the manufacturer or person for whom the goods
are manufactured is required to be applied under Section 71, a false indication of such
country, place, name or address;  or
- tampers with, alters or effaces an indication of origin which has been applied to any goods to
which it is required to be applied under Section 71;  or
- causes any of the things above-mentioned in this Section to be done,shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a
term which shall not be less than six months but which may extend to three years and with fine which
shall not be less than fifty thousand rupees but which may extend to two hundred thousand rupees;
provided that the court may, for adequate and special reasons to be mentioned in the judgment,impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees.
Section 40 of the Geographical Indications of  Goods (Registration & Protection) Act, 1999
provides that any person who sells, lets for hire or exposes for sale, or hires or has in his possessionfor sale, goods or things to which any false geographical indication is applied or which, being
required under Section 71 to have applied to them an indication of the country or place in which they
were made or produced or the name and address of the manufacturer, or person for whom the goods
are manufactured or without the indications so required, shall, unless he proves:IP/C/W/326/Add.1
Page 43
- that, having taken all reasonable precautions against committing an offence against this
Section, he had at the time of commission of the alleged offence no reason to suspect the
genuineness of the geographical indication or that any offence had been committed in respect
of the goods;  or
- that, on demand by or on behalf of the prosecutor, he gave all the information in his power
with respect to the person from whom he  obtained such goods or things;  or
- that otherwise he had acted innocently,be punishable with imprisonment for a term which shall not be less than six months but which may
extend to three years and with fine which shall not be less than fifty thousand rupees but which mayextend to two hundred thousand rupees; provided th at the court may, for adequate and special reasons
to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six
months or a fine of less than fifty thousand rupees.
Section 41 of the Geographical Indications of  Goods (Registration & Protection) Act, 1999
provides that whoever having already been convic ted of an offence under Section 39 or Section 40 is
again convicted of any such offence shall be punishable for the second and for every subsequent
offence, with imprisonment for a term which shal l not be less than one year but which may extend to
three years and with fine which shall not be less than one hundred thousand rupees but which may
extend to two hundred thousand rupees; provided th at the court may, for adequate and special reasons
to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than one year
or a fine of less than one hundred thousand rupees.
Where a person is convicted of an offence under Section 39 or Section 40 or Section 41 or is
acquitted of an offence under Section 39 or Sect ion 40 on proof that he acted without intent to
defraud, or under Section 40 on proof of the matters specified in clause (a) or clause (b) or clause (c)
of that Section, the court convicting or acquitting him may direct the forfeiture to Government of all
goods and things by means of, or in relation to, which the offence has been committed, or but for such
proof as aforesaid would have been committed.
When a forfeiture is directed on a conviction, the court, before whom the person is convicted,
may order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.
Where a person accused of an offence under Section 39 proves:
- that in the ordinary course of his business he is employed on behalf of other persons to apply
geographical indications, or as the case may be, to make dies, blocks, machines, plates, orother instruments for making, or being used in making, geographical indications;
- that in the case which is the subject of the charge he was so employed, and was not interested
in the goods or other thing by way of profit or commission depend on the sale of such goods;
- that, having taken all reasonable precautions against committing the offence charged, he had,
at the time of the commission of the alleged offence, no reason to suspect the genuineness of
the geographical indication;  and
- that, on demand made by or on behalf of the prosecutor, he gave all the information in his
power with respect to the persons on whose behalf the geographical indication was applied, he
shall be acquitted.IP/C/W/326/Add.1
Page 44
The Semiconductor Integrated Circuits Layout-Design Act, 2000
As per Section 18 of the Semiconductor Integrated Circuits Layout-Design Act, 2000, a
registered layout-design is infringed by a person who, not being the registered proprietor of the
layout-design or a registered user thereof:
- does any act of reproducing, whether by incorporating in a semiconductor integrated circuit or
otherwise, a registered Layout-Design in its entirety or any part thereof, except such act of
reproducing any part thereof which is not original;
- does any act of importing or selling or otherwise distributing for commercial purposes a
registered Layout-Design or a semiconductor integrated circuit incorporating such registeredLayout-Design or an article incorporating such a semiconductor integrated circuit containing
such registered Layout-Design for the use of which such person is not entitled under this Act.
Section 56 of the Semiconductor Integrated Circuits Layout-Design Act, 2000 provides that
any person who contravenes knowingly or willfully an y of the provisions of Section 18, as described
above, shall be punishable with imprisonment for a term which may extend to three years, or with fine
which shall not be less than fifty thousand rupees but which may extend to one million rupees, or with
both.
Where a person is convicted of an offence under Section 56, the court convicting him may
direct the forfeiture to Government of all goods a nd things by means of, or in relation to, which the
offence has been committed.
34. Article 61 also requires that remedies in appropriate cases include the seizure, forfeiture and
destruction of infringing goods and any materials and implements the predominant use of which has
been the commission of the offence.  Please describe the provisions in the laws of India that provide
for such remedies, and describe the circumstances in which those remedies would be imposed, citing
to the relevant provisions of law or regulation.
[No reply received]
35. Article 61 also indicates that Members may provide for criminal procedures and penalties in
cases of willful infringement of others forms of intellectual property. Please describe any provisionsof the laws of India that provide for such procedures and remedies, citing to the relevant provisions of
law or regulation.
Please refer to reply to question no. 33.
L. S
TATISTICAL QUESTIONS
36. Please provide statistical information related to civil copyright, trademark, geographical
indication, industrial design, patent, integrated circuit layout-design, and trade secret enforcement
for 2000, including the number of cases filed; injunctions issued; infringing products seized;
infringing equipment seized; cases resolved (inc luding settlement);  and the amount of damages
awarded.
[No reply received]
37. Please provide statistical information related to criminal enforcement in the area of copyright
piracy and trademark infringement for 2000, including the number of raids, prosecutions,
convictions, and the amount of fines and/or jail terms (including whether the fines were paid andIP/C/W/326/Add.1
Page 45
whether the jail term was actually served or was suspended) and any other information establishing
that the criminal system operates effectively to deter copyright piracy and trademark counterfeiting.
[No reply received]
M. NOTIFICATIONS
38. Please explain whether India has notified its patent, integrated-circuit layout design and
trade secret laws to the TRIPS Council, as require d by TRIPS Article 63.2.  For any laws that that
have not been notified, please explain the circumstances and explain when these laws will be notified.
Finally, please explain when India will reply to the enforcement checklist.
India has notified to WTO its Semiconductor Integrated Circuit Layout-Design Act, 2000.
The Patent (Second Amendment) Bill, 1999, which ai ms at installing a fully TRIPS compliant patent
regime, is presently under consideration of the Joint Committee of Parliament which is expected tofinalize its report during the current Winter Session of Parliament. India has submitted replies to the
Checklist of Issues on Enforcement to WTO.
2
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2 Document IP/N/6/IND/1.