WORLD TRADE
ORGANIZATIONIP/Q/IND/1
IP/Q2/IND/1IP/Q3/IND/1
IP/Q4/IND/1
8 October 2003
(03-5318)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
INDIA
The present document reproduces the introductory statement made by the delegation of India,
the questions put to it and the responses given in connection with the review of legislation undertaken
at the Council's meeting of 27 to 28 November 2001.
_______________
I. INTRODUCTORY STATEMENT
Thank you, Chairman, for the opportunity to introduce features of national legislations of
India pertaining to Intellectual Property protection.
India has a long history of prov iding protection to IPRs.  Exclusive privileges were granted to
protect patentable matters for the first time in 1859 in India.  Patents and Designs have been protected
in India since 1872.  The Patents and Designs Act of 1911 improved upon the protection provided forthese areas of IPRs.  Trademarks have been prot ected since 1940 in India.  Copyrights have been
protected in India since 1847.  Later the Indian Copyright Act of 1914 was adopted which continued
to be free till 1958.
India has been a member of the Berne Conv ention and the Universal Copyright Convention
and of the Paris Convention and the Patent Cooperation Treaty.
Consequent to India's obligations under the TRIPS Agreement, appropriate and necessary
changes in these legislations have been identified and enacted in almost all cases.  In addition India
has enacted sui generis legislations in some TRIPS related areas.
India has repealed and replaced the Trade and Merchandise Marks Act, 1958 with the Trade
Marks Act, 1999.  The Act provides for the registration of distinctive marks for goods and services,
and for the prevention of the use of fraudulent marks.  It provides the procedure for and duration of
registration, assignment and transmission of marks, for the protection of collective marks, certificationtrademarks and well-known marks.  An Appellate Board to hear appeals against orders of the
Registrar has also been provided which will be a fast track appellate mechanism.  Penalties for
offences under the Act have also been strengthened.
For the protection of Geographical Indications of Goods, a sui generis legislation viz. the
Geographical Indications of Goods (Registration Protection) Act, 1999 has been enacted in order toIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 2
comply with the requirements under the TRIPS Agreement and to protect products of Indian origin as
well.  The Act provides for the registration of a geographical good which owes its distinctiveness,
essential characteristics or reputation and quality to its geographical origin and would include
agricultural, natural or manufactured goods.  Significant characteristics of this legislation includeregistration of geographical indications of goods, provision for higher level of protection for notified
goods and provision for procedures relating to offences and penalties.
The Designs Act, 2000 repeals and replaces the earlier Act of 1911 and seeks to provide a
much broader scope of protection to registered designs.  It meets the requirements under the TRIPS
Agreement in respect of Designs.  Salient features of this legislation include provision for
identification of non-registerable designs, replacement of Indian classification by the internationallyfollowed Locarno system of classification and provision for restoration of lapsed designs.
Indian Parliament has recently passed the Protection of Plant Varieties and Farmers' Rights
Act, 2001.  The objective of this legislation is to give a significant  thrust to agricultural growth by
providing an effective system for the protection of plant varieties and farmers' rights which willstimulate investments for research and development both in the public and the private sectors for the
development of new plant varieties by ensuring appropriate returns on such investment.  This
legislation recognizes the role of farmers' as cultivators and conservers of plant varieties and the
contribution of traditional, rural and tribal communities to the country's agro biodiversity by
rewarding them for their Contribution through benef it sharing and protecting the traditional rights of
the farmers'.  This Act will also fulfill India's obligation under Article 27.3(b) of TRIPS Agreement of
WTO by providing an effective sui generis system for protection of Plant Varieties.  Under this Act,
new plant varieties shall be registered for Plant Breeder Rights based on the international criteria of
newness, distinctiveness, uniformity and stability.  The essentially derived varieties shall also be
registered under this legislation based on internationally accepted criteria.  This legislation also hassome unique features like Benefit Sharing Community Rights, Gene Funds, Compulsory Licensing
etc.  Penal provisions have also been provided in this legislation on infringement of Plant Breeder
Rights.
Following the long tradition for the protection of  copyrights in India, the Indian Copyright
Act, 1957 was enacted to protect and foster creativity.  The Copyright Act 1957 was revised
periodically to address the challenges posed by technological developments.  That our law requiredonly a minor amendment to extend the period of protect ion of performers from 25 to 50 years to fulfill
our TRIPS obligations in 1999, shows the contemporariness of our copyright laws.
The Patent (Second Amendment) Bill, 1999 to modify the existing Patent Act of 1970 is
presently under consideration of a Joint Committee of Parliament which is expecting to finalize itsreport during the current Winter Session.  The Bill aims at installing a fully TRIPS compliant patent
regime.
The Semiconductor Integrated Circuits Layout-Design Act was enacted in the year 2000 to
provide for the protection of semiconductor integrated circuits layout-designs.  The Act provides forexclusive rights to the registered proprietor of a layout design and also to the registered users.  The
Act also provides for criminal remedies for infringe ment of layout-design so as to act as effective
deterrent.  The Act also provides for establishment of an Appellate Board to hear appeals against the
orders of the Registrar.
India provides for the protection and enforcement of different fields of intellectual property
through both specific national legislation as well as the Code of Civil Procedure and the Code of
Criminal Procedure by way of civil remedies and criminal penalties.  These provide effectiveIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 3
deterrent to infringement of IPRs.  The criminal cases and civil suits for infringement of IPRs lie in
the Judicial system for other cases.
As a complementing activity to initiatives rela ting to the installation of the legal framework
for the administration of intellectual property laws, my delegation would wish to inform you that
India has taken several steps to modernise the different intellectual property offices in the country.
The copyright office, the patent offices including the design office and the trade marks registry are
being modernised and strengthened considerably through the extensive application of information
technology, redesign of work procedures and human resources development.
A separate registry for processing applications for the registration of geographical indications
has been established recently.  These initiatives have already started showing, positive impact in the
administration of intellectual property rights protection.
Government of India has taken several initiatives to improve enforcement of intellectual
property rights and particularly, in enforcement of copyrights.
The Government has constituted a Copyright Enforcement Advisory Council under the
Ministry of Human Resource Development (Ministry handling the copyright matters in the
Government of India).  The Council consists of representatives of copyright industry, collective
administration societies, Heads of Police force of major States and representatives of other connecteddepartments of Government of India.  This Council makes recommendations on enforcement of
copyrights and monitors implementation of such recommendations.
As the enforcement of law is the responsibility of the State Governments in the federal set up,
the Central Government has requested the State Governments to set up special cells for copyrightenforcement headed by senior Police Officers.  In many States these cells handle other IPR
enforcement issues.  Industry organizations are encouraged to deal with these cells to sort out
enforcement issues.  These steps have been taken by the Central Government to give a boost to
enforcement of intellectual property, rights.  Training programmes on enforcement of copyrights are
also organized for senior administrators, senior police officers and customs officers.
In order to create public awareness about th e importance of enforcement of intellectual
property rights and to educate the public and rightholders of the importance of intellectual property
rights, the Central Government organizes as well as provides financial assistance for seminars on
copyright and IPR related studies.
Mr. Chairman, the legislations under review have provided India with the opportunity of
examining the framework of IPR protection in the country and to align it with the International
requirements which are part of the country's international commitments.  The legislative initiatives are
being complemented by substantial revamping and modernization of the IP administration.
II. RESPONSES TO THE QUESTIONS POSED BY AUSTRALIA
A. C
OPYRIGHT AND RELATED RIGHTS
1. What is the current duration of copyright in photographs?  With regard to the term
"Author's Life plus 50 years", when was this te rm enacted?  Was the "Author's Life plus 50
years" term applied to all photographs currentl y protected by copyright at the date of force of
the amendment?  If so, were there any schemes or provisions to protect existing contractualIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 4
arrangements, or mitigate damage to copyright users for arrangements existing prior to the
amendment?
In case of photographs copyrights subsists until 60 years from the beginning of the calendar
year next following the year in which the photograph is published.  The duration of the protection wasmade 60 years w.e.f. 28.12.1991.  The term of 50 years was provided from 1957 itself.
2. Does India grant WPPT standard performers' ri ghts in audio fixations?  If not, is the
introduction of audio performers' rights under active consideration, and if so have any
proposals been released for public comment?  If  yes, when were these rights enacted and was
there an existing system of performers' rights (as opposed to Rome Convention anti-bootlegging
rights) at that time?  If there was no existing  system of performers' rights, did the relevant
legislation recognise rights in performances embodied in pre-amendment sound recordings (i.e.
retrospectively apply the legislation)?
India protects performers right based on TRIPS obligation.  This protection was introduced
from 1995 onwards.  India has not yet jointed the WPPT.
3. Has India enacted audio-visual performers' rights (beyond Rome Convention
standards)?  If not, is the introduction of audio-visual performers' rights under active
consideration, and if so have any prop osals been released for public comment?
India protects audio-visual performers' rights in accordance with the provisions contained in
Section 40 A & 42 A of Copyright Act.  Under Article 3 of TRIPS Agreement, India is underobligation to provide national treatment for performers right.  Extension of protection in accordance
with WPPT is under consideration.
4. To what extent does current copyrigh t protection in India cover the use and
dissemination of copyright works on digital ne tworks such as the Internet?  Are there any
specific provisions in copyright law concerning the digital on-line environment, and are there
any significant judicial or administrative  decisions with bearing on this issue?
Section 2(ff) of the Copyright Act, 1957  defines communication to public to mean making
any work available for being seen or heard or otherwise enjoyed by the public directly or by means of
display or diffusion other than by issuing copies of such work regardless whether any member of
public actually sees, hears or otherwise enjoys the work so made available.  Publication has been
defined as making a work available to the public by issue of copies or by communicating the work tothe public.  These provisions are capable of interpreting dissemination of copyright works on digital
networks.  In addition to this, section 14 recognises reproduction to include storage as well.  However,
this interpretation does not have any judicial sanctions, as there has been no reported judgement on
the issue.
5. Are there any specific exceptions to copyright under the law of India to allow use of
copyright materials by third parties for permitted purposes?  Are there any significant judicial
decisions with bearing on this issue?  Are th ere any specific rules or findings concerning
exceptions or limitations to copyright protection of computer software?
Limitations and exceptions to the exclusive rights  are contained in Section 31, 31 A, 32, 32 A
and 52 of the Copyright Act, 1957.   Section 39 deals with exceptions relating to broadcast
reproduction right and performers' right.  These exceptions and limitations are for special cases and
without prejudice to the normal exploitation of rights by right holders and does not unreasonably
prejudice the  legitimate rights of the author.  There are no significant judicial pronouncements fromIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 5
the Supreme Court of India in these matters.  The exceptions in relation to computer programmes are
provided in Section 52(1) (aa) to 52(1) (ad).
6. Does the law of your country provide copyright protection for material created by
government?  If yes, does the law provide pr otection to government in the same way as
protection is provided for other copyright crea tors or do different provisions apply?  How does
the law of your country deal with the use of copyright material by government?  For example, is
government subject to the same requirements as other users of copyright material or do
different provisions apply?
As per  Section 17(d) of the Copyright Act, 1957 in the case of a government work,
Government shall in the absence of any agreement to the contrary be the first owner of copyrighttherein.  The law provides protection to Government works in the same way as protection is provided
for other copyright  holder, "Government work" has been defined as a work which is made or
published by or under the direction and control of:
(i) the Government or any department of the Government;
(ii) any legislation in India;
(iii) any court, tribunal or other judicial authority in India.
However certain exceptions are provided under section 52(c) and (d) for the purpose of a
judicial proceeding and in a work produced for the use of the legislature respectively.  In all other
circumstances all the provisions of Copyright Act apply to the use of materials by government thesame way it applies to other users.
7. How does the law of your country deal with the copying of material by educational
institutions? Are educational institutions subject to the same requirements as other users of
copyright material or do different provisions ap ply?  Are there exceptions to the general rules
regarding infringement of copyright which apply in respect of copying by educational
institutions?
Section 52(h) & (i) provides for special exceptions for the use of materials for educational
purpose.  In all other circumstances the normal rules apply.
8. How does the law of your country implement the obligations under Article 14.3 of the
TRIPS Agreement in respect of broadcasting organisations?
The Copyright Act, 1957, provides broadcasters with "broadcast reproduction right" under
section 37 of the Act, which meets the obligations under the TRIPS Agreement.
9. Does the law of your country provide criminal  sanctions for copyright infringement?  If
yes, please describe the operation of these provisions.
Yes,  both direct and indirect infringements are recognised under the  Copyright Act.  The
criminal remedies are available for infringement of copyright or any other right (except the right
conferred under section 53 A, which is the right to share in the re-sale price of the original copy)
recognised under the Copyright Act.  This includes moral rights of authors, performers right and
broadcast reproduction right.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 6
B. PATENTS (INCLUDING PLANT VARIETY PROTECTION )
10. How does your country provide protection for new plant varieties as required under
Article 27.3(b)? If your legislation is based on the UPOV system, on which UPOV Act was it
modelled?  Can new plant varieties be protected by patent in your country?
As required under Article 27.3(b) of TRIPS Agreement, new plant varieties are protected
under the newly enacted "Protection of Plant Varieties & Farmers' Rights Act, 2001".  This legislation
is based on a sui generis  system having many provisions of UPOV, 1978 Act.  There is no provision
in the country for Protection of New Plant Varieties by Patent.
C. PROTECTION OF UNDISCLOSED INFORMATION
11. Does the law providing for the protection of undisclosed information as required by
Article 39.2 of the TRIPS Agreement apply to government and government-linked agencies?  If
not, to whom does it apply?
Section 5 of the Official Secret Act provides that unauthorised disclosure of official secrets is
a punishable offence.  This provision is also applicable to government employees.
III. RESPONSES TO QUESTIONS POSED BY CANADA
1. What recourse do right holders have in respect of wilful trademark counterfeiting or
copyright piracy on a commercial scale, as required by Article 61?
Please refer to the response from India on the Checklist of  Issues on Enforcement.
2. What protection does your copyright legislation afford to "foreign works"?
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 theProtection of Literary and Artistic Works, or Universal Copyright Convention 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 Copyri ght Order, 1999.  Accordingly all provisions of the
Indian Copyright Act, 1957 will apply as if they are Indian works.
IV. RESPONSES TO QUESTIONS POSED BY THE 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 Agreementon Trade-Related Aspects of Intellectual Proper ty Rights (the "TRIPS Agreement").  Please
explain how such measures are consistent with the provisions of  the TRIPS Agreement.
Implementation of provisions of Article 8 of the TRIPS Agreement is the subject matter of the
Patents (Second Amendment) Bill, 1999.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 7
Follow-up question:
The answer to our question 1 remains outstanding.  Please describe if your legislation
includes measures to protect public health and nutrition, and to promote the public interest insectors of vital importance to your socio-economic and technological development as mentioned
under Article 8 of the TRIPS Agreement.  If yes, please explain how such measures are
consistent with the provisions of the TRIPS Agreement.
The Patents Act, 1970 as amended by the Patents (Amendment) Act, 2002 contains
provisions for protection of public health and nutrition and to promote public interest in sectors of
vital importance to socio-economic and technological development.  These measures have beenincorporated taking note of flexibility provided in Articles 7, 8, 30 and 31 of the TRIPS Agreement
and supported by the Doha Ministerial Declaration on TRIPS and Public Health.
B. C
OPYRIGHT 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 have
recognized 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?
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 andboth 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 8
6. Please state how your legislation grants the retroactive protection required pursuant to
Article 18 of the Berne Convention (the obligatio n 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 Conven tion (See Section 38 of the Act).  The right is
available for performances with effect from 10 May 1995.
7. Please explain how your legislation implements 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 injunction
is not granted it will cause irreparable injury to the plaintiff.  Interim injunctions may be in force tillthe 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.  The
order can even be ex parte  (inaudita altera parte ).  This is based on the provisions of
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 procedur es are available to suspend the exporting of
counterfeit goods.
Please refer to reply to Question No. 18.
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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 9
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 Copyrights
or 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 thepurpose 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.
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 registerable.
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 ref er 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 10
Follow-up question:
In the light of your reply to question 13, in which it is said that "identity" implies
identical, same, similar or deceptively similar ma rk, please explain then why Section 11(1) of the
Trade Mark Act, 1999 makes a distinction between (a) identity and (b) similarity.  The purpose
of our initial question was rather to verify wh ether the term 'identity' covers only but strict
identical signs.
Section 11 of the Trade Marks Act, 1999 deals with relative ground for refusal of registration
of a trade mark.  According to Section 11(1)(1), a trade mark is not to be registered subject to
Section 12 if because of its "identity with an earlier trade mark" and similarity of goods or servicescovered by the trade mark there exists a likelihood of confusion on the part of the public.
Section 11(1)(b) further provides (subject again to Section 12) that a trade mark shall not be registered
if because of its "similarity to an earlier trade mark" if on account of identity or similarity of goods or
services covered by the trade mark, there is likelihood of confusion.
In the previous reply it was mentioned that "identity" implies identical, same, similar or
deceptively similar.  An earlier trade mark means a registered trade mark or a prior convention
application of a well-known trade mark. "Identity to an earlier mark" under Section 11 (1)(a) would
be invoked by the Registrar when the pending trade mark has been used in the market.  The extent of
use and evidence of confusion or deception would be assessed to determine the registerability of themark.  However, Section 11 (1)(b), " similarity  to an earlier trade mark" would be invoked where a
pending trade mark has not been used in the Indian  market and application has to be judged on the
basis of "notional use in a normal and fair manner" and to decide whether the central idea of each
mark is the same.
14. Please explain in more detail the definiti on 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 underSection 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 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 also
provides 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 11
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.
Follow-up question:
It is pointed out that the proviso to Section 9(1) of the Trade Mark Act, 1999 that
absolute grounds for refusal of registration shall not apply in the case of well-known
trademarks.  In other words the fact that th e trademark applied for is well-known can be
invoked, as it is the case for acquired distinctiveness through use, to demonstrate
distinctiveness.  Is such provision also  applicable to signs which are deceptive?
Proviso to Section 9(1) of the Trade Mark Act, 1999 exempts such trade marks which are not
registerable on absolute grounds.  This includes trade marks that have acquired distinctivenessthrough use or is a well-known trade mark.  Howe ver, the response to the question posed [whether
signs which are deceptive is objectionable under proviso to Section 9(1)] the answer is in the negative.
Signs which are deceptive are objectionable under Section 9(2)(a) and not proviso to Section 9(1).
Under Section 9(2)(a) deceptive signs can be refused registration on absolute ground.
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 implements 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 of
the 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 12
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 customsauthorities.
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 Trade
Marks Act, 1999.
18. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
Section 135 of the Trade Marks Act, 1999 provides for relief which a court may grant in a suit
for infringement of a trademark which include injunction and at the option of the plaintiff either
damages or an account of profit together with or without an order for delivery up of the infringing
labels and mark for destruction and erasure.  However, courts have inherent powers to grant relief
relating to suspension of export of counterfeit goods in specific cases if requested for by the plaintiff.
19. Please indicate whether or not your legislation provides for a de minimis  imports
exception.
There is no specific provision in the Trade Marks Act 1999 to provide for de minimis  imports
exception.
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
time to time in perpetuity.  However, if a geographical indication is not registered, no infringement
action can be initiated.
Follow-up question:
Does your answer mean that the first registra tion is valid for 10 years and the renewal
entails validity at perpetuity without further fees?
The registration of a geographical indication is valid for the initial period of 10 years and can
be renewed in perpetuity on payment of appropriate renewal fees.
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 or preparation of the goods concerned takes place in such territory, region or
locality" (Article 2(e)). Please give examples if possible of when this definition has been applied
to manufactured goods.
                                                     
1 Document IP/N/6/IND/1.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 13
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.
Follow-up question:
Could you clarify how and which specific pieces  of evidence, for those specific cases, are
required to ensure that the product is linked to the territory?
The scope of provision extends the definition of Geographical Indication to manufactured
goods where "one of the activities of either the pr oduction or of processing or preparation of the
goods concerned that takes place in such region or locality or territory".  This has to be established by
the applicant by specific evidence.  Such evidence may be produced before the Registrar to come
within the ambit of the definition of Geographical Indication.  Evidence could include historical
evidence of production, documented details of specifications and the like.
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 thepurpose of such protection.  This would also includes wines and spirits.  There are no other products
so far covered under the Act.
Follow-up question:
In the light of your answer, could you clarif y whether or not products such as rice or
saris are protected under the Act?
Section 22(2) of the Geographical Indication of  Goods (Registration & Protection) Act, 1999
empowers the Central Government to provide additional protection to certain goods or classes of
goods by notification in the Official Gazette, specifying such goods or class/classes of goods for the
purpose of such protection.  This may include wines and spirits, rice or saris or any other item as maybe decided and notified by the Central Government.  The scope of, a "good" under the Act as per,
Section 2(f) extends to agricultural, natural or manufactured goods or handicraft or of industry and
includes food stuff.
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 inthat 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 meaningand 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 14
24. Please confirm whether the same protection is given to geographical indications that are
registered and those that are not registered under th e Act.  Please explain any dissimilarities. In
particular please explain the scope of Articles 20(1) and 23(2) of the Act.
The Geographical Indications of Goods Act, 1999 extends protection to only such goods,
which are registered under the Act.  Therefore, while protection for infringement would be available
to only those goods, which are registered, unregis tered goods can only claim protection under the law
of passing off under the common law.
Follow-up question:
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.
Section 20 (1) of the Act provides that no person shall be entitled to institute any proceeding
to prevent, or to recover damages for, the infr ingement of an unregistered geographical indication.
Section 23(1) provides that registration of geographical indication is to be a prima facie evidence of
validity in all courts.  Section 23(2) of the Act provides that nothing in this section shall be deemed to
affect the right of the action in respect of an unregistered geographical indication.
The Geographical Indications of Goods Act, 1999 extends protection to only such goods,
which are registered under the Act.  Therefore, while protection for infringement under this Act would
be available to only those goods, which are registered, un-registered goods can only claim protection
under the law of passing off under the common law.
E. INDUSTRIAL DESIGNS
25. Please explain whether or not your legislat ion extends to the protection of designs
dictated essentially by technical or functional considerations.  Please explain how textile designs
are protected.
Designs dictated essentially by technical or functional considerations are not protected under
the Designs Act, 2000. "Design" is defined in section 2(d) to mean only features of shape,
configuration, pattern, ornament or composition of lines or colours applied to any article in either twoor three dimensional forms.  Its specifically excludes any mode or principle of construction or
anything which is mere mechanical device.
Textile designs are protected under Section 5 of the Designs Act, 2000.  The scope of
protection of textile designs is similar in respect of cost, examination or publication to the non-textiledesigns.  The system of registration of a textile design is similar to that for a non-textile design.
Examination of textile design applications and their publication in the official Gazette is done
in a manner similar to non textile design applications.  The filing fee for an application for registration
of textile design is also the same as in the case  of non-textile application and which is Rs. 1000/-.
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).
The scope of scandalous or obscene matter would include offending public sentiments,
hurting religious susceptibilities, libellous marks, marks which threaten breach of peace in society etc.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 15
The application of this principle would depend upon the examination of the designs and the
assessment of the Controller of Designs.  Case law in this regard has to develop.
27. Please define in more detail novelty and originality of industrial designs for the purposes
of the Act.
Section 4(a) of the Designs Act, 2000 prohibits the registration of designs that are not new
and original.  Novel and original designs would be those which meet the criteria of section 4(b) and
(c) i.e. those which have not been disclosed to the public anywhere in India or in any other country by
publication in tangible form or by use in any other way and is not significantly distinguishable for
non-designs or combination of non-designs.
28. Please explain how your legislation protects right holders of a design against importing
of articles bearing embodied or copied design.
Section 11 of the Designs Act, 2000 provides for rights conferred to registered proprietor and
Section 22 provides for legal proceedings in case of infringement of registered design by third parties
engaged in the unlawful making, selling or importing of the registered designs.
29. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
The Designs Act, 2000 does not provide for the right to issue a compulsory license.
F. PATENTS
30. Please describe how your legislation defines the notions of novelty, inventiveness and
industrial application.
Section 2(1)(j) of the Act states that invention means any new and useful:
(i) art, process, method or manner of manufacture;
(ii) machine, apparatus or other article;
(iii) substance produced by manufacture,
and includes any new and useful improvement of any of them, and an alleged invention.  This issue is
also a subject matter of the Patents (Second Amendment) Bill, 1999.
31. Please explain whether or not in your legislat ion, 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.
Section 3 of the Act states the inventions, which are not patentable under the Act.
"Section 3.  The following are not inventions within the meaning of this Act:IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 16
(a) an invention which is frivolous or which cl aims anything obvious contrary to well-
established natural laws;
(b) an invention the primary or intended use of which would be contrary to law or
morality or injurious to public health;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory;
(d) the mere discovery of any new property or new use for a known substance or of the
mere use of a known process, machine or apparatus unless such known process
results in a new product or employs at least one new reactant;
(e) a substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance;
(f) the mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
(g) a method or process of testing applicable during the process of manufacture for
rendering the machine, apparatus or other equipment more efficient or for the
improvement or restoration of the existing machine, apparatus or other equipment or
for the improvement or control of manufacture;
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic or other treatment of
human beings or any process for a similar treatment of animals or plants to render
them free of disease or to increase their economic value or that of their products."
This provision is subject matter of amendment by the Patents (Second Amendment)
Bill, 1999.
Further product patents on food, drugs/medi cine and chemicals are excluded from
patentability by Section 5 of the Patents Act, 1970. But methods or processes for producing such
substances are patentable under the present Act.
"Section 5(1).  In the case of inventions:
(a) claiming substances intended for use, or capable of being used, as food or as
medicine or drug, or
(b) relating to substances prepared or  produced by chemical processes (including alloys,
optical glass, semi-conductors and inter-metallic compounds),
(c) no patent shall be granted in respect of claims for the substances themselves, but
claims for the methods or processes of manufacture shall be patentable.
(d) Notwithstanding anything contained in sub-section (1), a claim for patent of an
invention for a substance itself intended for use, or capable of being used, as medicine
or drug, except the medicine or drug specif ied under sub-clause (v) of clause (1) of
sub-section (1) of section 2, may be made and shall be dealt, without prejudice to the
other provisions of this Act, in the manner provided in Chapter IVA."IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 17
India has time till 31 December 2004 to introduce product patent as Mail box and EMR
provisions in respect of Pharmaceuticals and agricultural-chemicals have been made by the Patents
(Amendment) Act, 1999.
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.
The question of patenting of micro-organisms, etc is a subject matter of the Patents (Second
Amendment) Bill, 1999.
The protection of micro-organisms, non essentially biological processes, & microbiological
processes are covered under the Patents Act.  However plant varieties, are protected under the
"Protection of Plant Varieties & Farmers' Rights Acts".  Section 24 of this Act provides for issue of
certificate of registration for Protection of Plant Varieties based on the criteria of Distinctiveness,
Uniformity and Stability (DUS) test.
33. Please clarify if the patent protection of a process, as provided for in your legislation,
covers the product obtained directly by that process.
As per provisions under section 48(2)(b) where a patent is for a method or process of
manufacturing an article or substance, the patentee gets an exclusive right by himself, his agents or
licensees to use or exercise the method or process in India.  This issue is a subject matter of thePatents (Second Amendment) Bill, 1999.
34. Please explain the additional conditions, if any, in your legislation other than the
sufficient disclosure of the invention in Articl e 29 of the TRIPS Agreement (e.g. submission of
justification for access to genetic material or prio r inform consent to its use).  If such additional
conditions exist, please point out the relevant legislation.
None in the existing Patents Act 1970.
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.
Exceptions to patent right are provided under Sections 47 & 49 of the Act. Section 47
provides that the grant of a patent under this Act shall be subject to the condition that:
1. any machine, apparatus or other article in respect of which the patent is granted or
any article made by using a process in respect of which the patent is granted, may be
imported or made by or on behalf of the Government for the purpose merely of its
own use;
2. any process in respect of which the patent is granted may be used by or on behalf of
the Government for the purpose merely of its own use;
3. any machine, apparatus or other article in respect of which the patent is granted or
any article made by the use of the process in respect of which the patent is granted,
may be made or used, and any process in respect of which the patent is granted may
be used, by any person, for the purpose merely of experiment or research including
the imparting of instructions to pupils;  andIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 18
4. in the case of a patent in respect of any medicine or drug, the medicine or drug may
be imported by the Government for the purpose merely of its own use or for
distribution in any dispensary, hospital or other medical institution maintained by or
on behalf of the Government or any other dispensary, hospital or other medicalinstitution which the Central Government may, having regard to the public service
that such dispensary, hospital or medical institution renders, specify in this behalf by
notification in the Official Gazette.
Section 49 states that patent right is not infringed when used in foreign vessels, etc.
36. Please explain whether or not your legislatio n 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 le gislation considers individual merits in the
authorization of such use.
The compulsory licences provisions are covered under Chapter XVI of the Patents Act 1970.
Apart from the provisions covered under Section 87 and Section 88 (relating to "licences of right")and Section 97 (relating to special provisions for grant of compulsory licence on notification by the
Central Government), all the cases are decided on the merits of the case by the Controller.  This issue
is also subject matter of the Patents (Second Amendment) Bill, 1999.
37. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
This issue is subject matter of the Patents (Second Amendment) Bill, 1999.  However, civil
law relating to evidence is also applicable.
G. L
AYOUT -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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 19
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 implements Article 50 of the TRIPS Agreement.
Please refer to the replies to questions No. 5 & 10 made by India in the Checklist of Issues on
Enforcement (IP/N/6/IND/1 the 29th November 2001).
H. UNDISCLOSED INFORMATION
40. Please explain whether or not your legislatio n grants a defined period of time for the
protection of undisclosed information. If so, please give the time span.
The test data submitted for seeking marketing approval for a pharmaceutical or agricultural
chemical product is not disclosed to a second or subsequent applicant.
41. Please explain how your legislation defines "undisclosed information".
There is no definition of undisclosed information.  Also please refer to reply to question
No. 23 from the United States (IP/C/W/316).
42. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
There is no specific definition given in the Drugs & Cosmetics Act or the Insecticides Act of
the data submitted to government or government agencies.
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 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 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 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 20
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 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 todamages 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 theoption 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 lawfor 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 21
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 legislatio n 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.
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 th e 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 legislation 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 22
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.
Please refer to reply to Question. No. 21 in the "Checklist of Issues on Enforcement"
(IP/N/6/IND/1 date d 29 November 2001).
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 the
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, as
he has sustained by reasons of such threats.  These remedies are not available if the person makingsuch 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 implements 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 inIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 23
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 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 constituteinfringement 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.
54. Please indicate whether or not your legislation provides for a de minimis  imports
exception.
The Copyright Act, 1957 provides for de minimis  exception for import of one copy of any
work for the private and domestic use of the importer.  There are no specific de minimis  exceptions
provided in other IPR laws.
55. Please explain how your legislation implements 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 whichIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 24
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 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 thejudgment 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 daysbut 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 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 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 CriminalProcedure, 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 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 25
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 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 thecountry 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 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 whichshall 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 areIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 26
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 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 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 27
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 geographicalindication;  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 suchcountry, 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 possession
for sale, goods or things to which any false geographical indication is applied or which, beingrequired 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:
- 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 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 senten ce of imprisonment for a term of less than six
months or a fine of less than fifty thousand rupees.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 28
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 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, 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 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.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 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 29
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 withboth.
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.
V. RESPONSES TO THE QUESTIONS POSED BY 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 Neighbouring 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 Convention or World Trade Organization are protected inIndia 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. T
RADEMARKS
2. Regarding "well-known trademarks", please explain 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 indetermining 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 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.
C. P
ATENTS
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, pleaseexplain what these exceptions are and how th ey comply with Article 27 of the TRIPS
Agreement.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 30
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 such
product patent protection at this point of time.
4. Does legislation of your country grant com pulsory 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 th e relevant provisions of your country's law.
The protection of undisclosed information against unfair competition is provided through the
provisions of Law of Torts and the Indian Contract Act, 1872.  Breach of confidence or breach of trust
gives rise to a cause of action in torts for which damages may be sought (Mrs. Manju Bhatia V/s
NDMC, JT 1997 (5) S.C. 574).  For breach of contract, remedies are available under the Indian
Contract Act, 1872 by way of compensation and injunction.
6. If your legislation ensures that undisclosed test or other data submitted by an applicant
to the responsible State agency in the procedur e for 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 similarproduct 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 for undisclosed 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 market
authorization 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 ofofficial 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 any
information 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/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 31
E. E NFORCEMENT
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 theirproduction.  Please explain 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 32
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 orderfor 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 remedieswhich 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 forthe 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 criminal penalties including implement and fines
regarding intellectual property rights, citing th e relevant provisions of your country's law.  InIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 33
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.
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 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/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 34
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 suchIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 35
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 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 fiftythousand 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 tohave 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,IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 36
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.
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 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 fiftythousand 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 possessionIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 37
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 goods
are 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 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 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 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 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 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, 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 of
the geographical indication;  andIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 38
- 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.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 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.
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 in
that statute, the offences, if punishable with imprisonment for three years or more are treated ascognizable 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 policestation 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 information
relating 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 beinitiated only on an order by a Magistrate based on a complaint filed to the Magistrate having power
to try such cases.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 39
9. Please indicate titles of laws and regulations and their provisions in which the
suspension of the release of counterfeit tradem ark 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 Ac t, 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 the
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 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 thetrademark 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 and
address 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 goodswhich 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 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 representationin writing or being heard in the matter.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 40
VI. RESPONSES TO QUESTIONS POSED BY SWITZERLAND
A. TRADEMARKS
1. Please explain how your legislation implem ents Article 62.2 of the TRIPS Agreement.
Please indicate how long it takes on average to register a trademark.  Please cite the relevantprovisions of your law.
The average time taken to register a trademark in India is approximately three years in respect
of an application not facing any opposition.
An application for registration of a trademark under the Trade Marks Act, 1999 may be made
under Section 18(1) by any person claiming to be the proprietor of the trademark used or proposed to
be used.  Thereafter, applications would be examined both on absolute ground of refusal underSection 9 and relative ground for refusal under Section 11 as also other provisions of the Act and the
Rules.  Since the Indian law provides for "pre-grant opposition", an application on acceptance is
advertised in the Trade Marks Journal.  An accepted application is advertised ordinarily within six
months from the date of acceptance or after the period mentioned under section 154(2), whichever  is
later.
2. Please explain in detail how India protects service marks and cite the relevant provisions
of law.
The Trade Marks Act, 1999 provides for the registration of trademarks for service in India.
Section 2(1)(z) defines services to include service of any description which is made available topotential users and includes the provisions of services in connection with business of any industrial or
commercial matters such as banking,  communication, education, financing, insurance, chit funds, real
estate, transport, storage, material treatment, processing, supply of electrical or other energy,
boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information
and advertising.
An application for a trademark for goods or services can be filed in the same form and
trademark for services will be examined in the like manner as trademark for goods.  Schedule IV
provides abbreviated list of goods and services for the classification of goods and services which are
based on international classification of goods and services.
B. P
ATENTS
3. Does your legislation grant patent protection for inventions relating to products and
processes in all fields of technology?  Are there any exceptions? If so, please explain what those
exceptions are and how they comply with Article 27 of TRIPS Agreement.
Under the (Indian) Patents Act, 1970 patent protections 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 such
product patent protection at this point of time.
4. Does your legislation provide patent protection for pharmaceutical and agricultural
chemical products in accordance with the obligation under Article 27 of the TRIPS Agreement?If not, please explain in detail how your legislation implements Articles 70.8 and 70.9 TRIPS
Agreement. Please cite the relevant provisions of the law.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 41
No, the (Indian) Patents Act 1970 does not provide patent protection for pharmaceutical and
agricultural chemical products.  The Patents (Amendment) Act, 1999 introduced in the Patents Act
1970, Section 5(2) to comply with Article 70.8 and Chapter IV A to comply with Article 70.9 of the
TRIPS Agreement.
5. Does your legislation, in accordance with Ar ticle 27.1, in combination with Article 31 of
the TRIPS Agreement, consider importation as "working" a patent (and therefore preclude
compulsory licensing, if a product is being imported)?
Importation is not considered as working a patent under the (Indian) Patents Act, 1970. The
Patents (Second Amendment) Bill, 1999 which is now pending before the Parliament does not specify
a requirement for local working for the purpose of grant of compulsory license.
Follow-up question:
In your answer you indicate that according to your present patent legislation (Patents
Act 1970), importation of a patented product is not considered as working a patent.  Pleaseconfirm whether, under the new law (Patents Bill, 1999, second Amendment) importation will
be considered as working a patent in accord ance with Article 27.1 of the TRIPS Agreement.
The obligation under Article 27.1 of the TRIPS Agreement have been implemented by
replacing Section 48 of the Patents Act through the Patent(Amendment) Act, 2002.  The new Sectionreads as under:
"48. Subject to the other provisions contained in this Act and the conditions specified in
section 47, a patent granted under this Act shall confer upon the patentee-
(a) Where the subject matter of the patent is a product, the exclusive right to prevent
third parties, who do not have his consent, from the act of making, using, offering for
sale, selling or importing for those purposes that product in India;
(b) Where the subject matter of the patent is a process, the exclusive right to prevent third
parties, who do not have his consent, from the act of using that process, and from the
act of using, offering for sale, selling or importing for those purposes the product
obtained directly by the process in India;
Provided that the product obtained is not a product in respect of which no patent shall be
granted under this Act".
Further, the condition relating to "patentee to ma nufacture in India to an adequate extent..." as
a ground of granting of compulsory licence has been omitted by the Patents (Amendment) Act, 2002.
6. Does your legislation make the granting of  a compulsory licence subject to all the
conditions enumerated in Article 31 of the TRIPS Agreement? Please cite the relevant
provisions of 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 42
7. Please indicate the term of protection granted to patents according to your law.
According to the (Indian) Patents Act, 1970 process patents on food or drug or medicines are
granted for 5/7 years and patents in other fields for 14 years from the date of the patent.  However, thePatent (Second Amendment) Bill, 1999, which is now pending before the Parliament prescribes a
uniform term of 20 years for all patents.
8. Does your legislation provide for the principle of the reversal of burden of proof in a
process patent litigation?  Please cite the relevant provisions of law.
The (Indian) Patents Act, 1970 does not provide for reversal of burden of proof in a process
patent litigation.  However, such reversal is possible under the Indian Evidence Act and also enforcedby the Court.  The Patents (Second Amendment) Bill, 1999, presently under consideration of
Parliament  provides specific provision in this respect.
C. P
ROTECTION OF UNDISCLOSED INFORMATION
9. Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by an applicant to the responsible State agency in the procedure for market
authorization of a pharmaceutical or of an agricultural chemical product is protected against
disclosure and against unfair commercial use by a competitor, for example by prohibiting a
second applicant from relying on, or from referring to the original data of the first applicant,
when applying subsequently for market auth orization for a similar product.  Does your
legislation provide for exceptions to this? If yes, under what conditions would such exceptions
apply?  Does your legislation set a specific term of protection for undisclosed test or other data
of the first applicant?
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 regulatoryauthorities from unauthorized disclosure and unfair commercial use.  Undisclosed test or other data
submitted by an applicant is not disclosed to any subsequent applicant.  The procedure for market
authorization of a pharmaceutical or of an agricultural chemical product is governed by the provisions
of the Drugs and Cosmetics Act, 1940 and rules thereof 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 anyperson any information 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 any person any information acquired by
him in the performance of his official duties.
Follow-up question:
Referring to the issue of unfair commercial use of test data submitted by an application
to the responsible State Agency in the procedu re for market authorization of a pharmaceutical
or of an agricultural chemical product, please specify whether the responsible State Agency willrequire the same amount of data from a second  applicant requesting market authorization for a
similar or identical product as from the first applicant.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 43
If yes, does your law provide for a time period after the expiration of which a second
applicant can refer to the data of the first applicant and will therefore not have to submit these
data in his own application for market authorization?
The test data submitted for seeking marketing approval for a pharmaceutical or agricultural
chemical product is not disclosed to a second or subsequent applicant.  Also please refer to reply to
Question No. 40 from EC  (IP/C/W/315/Add.1).
D. ENFORCEMENT
10. Please indicate remedies provided by your legislation, which constitute effective
deterrents to infringements of intellectual property rights.
The Specific Relief Act, 1963 provides for perpetual injunction to prevent the breach of an
obligation existing in the favour of a plaintiff.  The Code of Civil Procedure, 1908 provides for
remedies of temporary injunction, damages or costs.  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 Patents Act, 1970, the Protection of Plant Varietiesand Farmers' Rights Act, 2001 and the Indian Copyright Act, 1957 also specifically provide for
remedies of temporary injunction, damages or cost s and other pecuniary remedies to be awarded to
the plaintiff.
Infringement of intellectual property rights is a criminal offence and punishable with
imprisonment or fine or both under the Indian Copyright Act, 1957, the Protection of Plant Varieties
and Farmers' Rights Act, 2001, the Trade Marks Act, 1999, the Geographical Indications of Goods
(Registration & Protection) Act, 1999 and the Semiconductor Integrated Circuits Layout-Design Act,
2000.
The above remedies act as effective deterrents to infringement of intellectual property rights.
For further details on remedies please refer to the reply to the Checklist of Issues on Enforcement
submitted by India.
11. Please describe any new initiatives that are planned to improve enforcement of
intellectual property rights in your country, particularly initiatives related to criminal
enforcement.
Government of India has taken several initiatives to improve enforcement of intellectual
property rights and particularly in enforcement of copyrights.
The Government has constituted a Copyright Enforcement Advisory Council under the
Ministry of Human Resource Development (Ministry handling the copyright matters in the
Government of India).  The Council consists of representatives of copyright industry, collectiveadministration societies, Heads of Police force of major States and representatives of other connected
departments of Government of India.  This Council makes recommendations on enforcement of
copyrights and monitors implementation of such recommendations.
As the enforcement of law is the responsibility of the State Governments in the federal set up,
the Central Government has requested the State Governments to set up special cells for copyright
enforcement headed by senior Police Officers.  In many States these cells handle other IPR
enforcement issues.  Industry organizations are encouraged to deal with these cells to sort out
enforcement issues.  These steps have been taken by the Central Government to give a boost to
enforcement of intellectual property rights.  Training programmes on enforcement of copyrights arealso organized for senior administrators, senior police officers and customs officers.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 44
In order to create public awareness about th e importance of enforcement of intellectual
property rights and to educate the public and right holders of the importance of intellectual property
rights, the Central Government organizes as well as provides financial assistance for seminars oncopyright and IPR related studies.
VII. RESPONSES TO QUESTIONS POSED BY THE UNITED STATES
A. G
ENERAL
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.
Trademark
Section 18(1) of the Trade Marks Act, 1999 provides that any person, Indian or foreign,
claiming to be the proprietor of the trademarks used or proposed to be used can file an application forregistration of a trademark.  Section 154 provides for priority for registration of trademark
applications from citizens of convention countries.
Geographical Indication
The Geographical of Indications of Goods (Registration and Protection) Act, 1999 provides
under Section 11(1) that any association of person s or producers may apply for registration of a
geographical indication.  This provision  provides for national treatment as envisaged under Article 3
of the TRIPS Agreement.  The most favoured nation treatment is extended to applicants from
Convention countries as per provision of Section 84 of the Act.
Industrial Design
The Designs Act, 2000 complies with the requirements for National treatment and most
favoured national treatment as per Articles 3 & 4 of the TRIPS Agreement since no limiting definition
of "person" is provided in the Act, "person" in cludes any individual or legal entity irrespective of
nationality.  Any person may apply for the registra tion of Design under Section 5 of the Designs Act,
2000.
Patent
Section 6 of the Patents Act, 1970 complies with the requirement of national treatment and
most favoured nation treatment as per Articles 3 and 4 of the TRIPS Agreement as it provides that any
person is entitled to apply for patents.
Plant Variety Protection
Section 34 of the Protection of Plant Varieties & Farmers' Rights Act, 2001, provides for
national treatment and reciprocity for protection of Plant Varieties  as under:
(1) With a view to the fulfilment of a treaty, convention or arrangement with any country
outside India which affords to citizens of India similar privileges as granted to its ownIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 45
citizens, the Central Government may, by notification in the Official Gazette, declare
such country to be a convention country for the purpose of this Act.
(2) Where a person has made an application for the granting of a breeder's right to a
variety or for entering such variety in the official register of varieties in a convention
country and that person, or any person entitled to make application on his behalf
under section 14 or section 23, makes an application for the registration of such
variety in India within twelve months after the date on which the application was
made in the convention country, such variety shall, if registered under this Act, be
registered as of the date on which the application was made in the convention country
and that date shall be deemed for the purposes of this Act to be the date ofregistration.
(3) Where applications have been made for granting of a breeder's rights to a variety, or
for entering such variety in the official register of varieties in two or more convention
countries, the period of twelve months referred to in sub-section (2) shall be reckonedfrom the date on which the earlier or earliest of those applications were made.
Copyright
Works of other WTO members get "national treatment" as provided in sections 40 and 40 A
of the Indian Copyright Act, 1957 read with para 3 of 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 World Trade Organisation 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.
Integrated Circuits Layout-Designs
Section 8 of the Integrated Circuits Layout-Designs Act complies with the requirement of
MFN and National treatment as per Articles 3 and 4 of the TRIPS Agreement as it provides that any
person is entitled to apply for the registration of his layout-designs.
B. COPYRIGHT AND RELATED RIGHTS
2. Please explain whether and how the copyright law 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 46
3. Please explain how the copyright law of India protects computer programs as literary
works and compilations 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 that 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 commercial 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 theyear in which the film is published.
C. T
RADEMARKS
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 TradeIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 47
& 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 has
been 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 registeredor 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 the
country, 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 where
such goods are manufactured goods, one of the activities of either the production or of processing or
preparation of the goods concerned takes place in such territory, region or locality.
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 Agreement is implemented, citing to theIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 48
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
why natural persons are prohibited from obta ining 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 all
the 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 of
opposition, 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 doesnot 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.
(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, andthe 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, the
registration is to be permitted, and may take into account a ground of objection
whether relied upon by the opponent or not.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 49
(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 theopposition 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 itmay 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 wronglyremaining 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 geogr aphical 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 industri al 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.
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 provided 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 50
Section 3 of the Patents Act 1970 states the inventions which are not patentable under the Act.
This is reproduced below:
"Section 3.  The following are not inventions within the meaning of this Act:
(a) an invention which is frivolous or which cl aims anything obvious contrary to well-
established natural laws;
(b) an invention the primary or intended use of which would be contrary to law or
morality or injurious to public health;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory;
(d) the mere discovery of any new property or new use for a known substance or of the
mere use of a known process, machine or apparatus unless such known process
results in a new product or employs at least one new reactant;
(e) a substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance;
(f) the mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
(g) a method or process of testing applicable during the process of manufacture for
rendering the machine, apparatus or other equipment more efficient or for the
improvement or restoration of the existing machine, apparatus or other equipment or
for the improvement or control of manufacture;
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic or other treatment of
human beings or any process for a similar treatment of animals or plants to render
them free of disease or to increase their economic value or that of their products."
Further product patents on food, drugs/medi cine and chemicals are excluded from
patentability vide Section 5 of the Patents Act, 1970.  However, methods or processes for such
substances are patentable under the present law.
"Section 5(1).  In the case of inventions:
(d) claiming substances intended for use, or capable of being used, as food or as
medicine or drug, or
(e) relating to substances prepared or  produced by chemical processes (including alloys,
optical glass, semi-conductors and inter-metallic compounds),
(f) no patent shall be granted in respect of claims for the substances themselves, but
claims for the methods or processes of manufacture shall be patentable.
(2) Notwithstanding anything contained in sub-section (1), a claim for patent of an
invention for a substance itself intended for use, or capable of being used, as
medicine or drug, except the medicine or drug specified under sub-clause (v) ofIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 51
clause (l) of sub-section (1) of section 2, may be made and shall be dealt, without
prejudice to the other provisions of this Act, in the manner provided in Chapter IVA.
India has time till 31 December 2004 to introduce product patent as Mail box and EMR
provisions in respect of pharmaceuticals and agricultural-chemicals have been made by the Patents
(Amendment) Act, 1999.
However, the question of implementing the obligations concerning patenting of micro-
organisms is the subject matter of the Patents (Second Amendment) Bill, 1999.
Protection to plant varieties is provided through a sui generis  system under the Protection of
Plant Varieties and Farmers' Rights Act.
19. Please describe in detail the rights provided patent holders under the patent law of India
and cite to the relevant provisions of law.
Section 48 of the Patents Act contains provision relating to the rights of the patentee.  According
to this provision, a patent granted under this Act confers upon the patentee:
(a) where the patent is for an article or substance, the exclusive right by himself, his
agents or licensees to make, use, exercise, sell or distribute such article or substance
in India;
(b) where a patent is for a method or process of manufacturing an article or substance,
the exclusive right by himself, his agents or licensees to use or exercise the method or
process in India.
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 underwhich such use can occur.
Use without authorization of right holder is permitted in the Patents Act, 1970 under
sections 47, 84, 86, 87, 88, 96, 97 and 100 of the Patents Act, 1970.  Out of these provisions sections
47 and 100 are related to Government use, sections 86, 87 and 88 are related to Licence of Right,
section 84, (grant of compulsory licence), section 96 (licensing of related patents) and section 97
(compulsory licence on notification by Central Government).
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.
According to section 53 of the Patents Act, 1970 process patents on food or drug or medicines
are granted for 5 years from the date of sealing or 7 years form the date of patent whichever period isshorter and patents in other fields are granted for 14 years from the date of the patent.  There is no
provision for extension of the term in the Act.  Th is issue is also a subject matter of the Patents
(Second Amendment) Bill, 1999.
G. L
AYOUT -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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 52
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).
H. P
ROTECTION 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 TRIPS Agreement and provide citations to therelevant provisions of law.
The protection of undisclosed information against unfair competition is provided through the
provisions of Law of Torts and Indian Contract Act, 1872.  Breach of confidence or breach of trust
gives rise to a cause of action in torts for which damages may be sought (Mrs. Manju Bhatia V/s
NDMC, JT 1997 (5) S.C. 574).  For breach of contract, remedies are available under the Indian
Contract Act, 1872 by way of compensation and injunction.
24. Please describe in detail the manner in which protection 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 regulatoryauthorities from unauthorized disclosure and unfair commercial use.  The procedure for market
authorization 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 any
information 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/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 53
25. Are other applicants for ma rketing approval for their own versions of a previously
approved pharmaceutical or agricultural chemical products permitted 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.
The date submitted by the applicant for seeking marketing approval of a pharmaceutical or
agricultural chemical products is not disclosed to a second or subsequent applicant.
I. ENFORCEMENT
26. Please describe in detail the manner in which the laws of India provide for effective
action against infringement of intellectual prop erty 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 orregulations 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.  TheCode 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 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 54
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 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 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. 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;IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 55
- 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;
- 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 any condition 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 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.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 56
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 grantex 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 viewto 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 counterfe iting and copyright piracy, identifying the
competent authority and citing to the re levant 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 copyright
within the meaning of the Indian Copyright Act, 1957 shall not be imported. The Registrar ofCopyrights 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 the
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 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 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 forIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 57
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 oftrademarks.
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 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 tobe 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 eachform of intellectual property, citing the relevant provisions of law.
Section 11 of the Customs Act, 1962 empowers the Government to prohibit importation and
exportation of goods for the protection of patents, trademarks and copyrights.  It does not cover other
forms of intellectual property rights.  Under this section, the government has issued Noftn.
No. 1/Cus/dated 18 January 1964 prohibiting import of  goods having applied thereto false trademarks
within the meaning of Section 77 of the Trade and Merchandise Marks Act, 1958 and Indian Patent &
Design Act, 1911.  Similarly, a notification No. 135 dated 31 December 1960 has been issued
prohibiting export of good in violation of Trade and Merchandise Marks Act, 1958 under
section 11(2)(n) of Customs Act, 1962.  In respect of other intellectual property rights, no
notifications have been issued.
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 identify 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.
K. C
RIMINAL PROCEDURES
33. Please describe in detail how the laws of India implement Article 61 of the TRIPS
Agreement that requires Members to have criminal procedures and penalties, includingimprisonment 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 and regulation.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 58
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 thejudgment 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.
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 CriminalProcedure, 1973.IP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 59
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 aregistered 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 varietyregistered 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 oftrading 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 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/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 60
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 dye, 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 mayIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 61
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 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 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 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 thousandrupees.
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 goodsare 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 theyIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 62
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:
- 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 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 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 yearor 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 suchproof 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 of
the geographical indication;  andIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 63
- 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.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 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.
34. Article 61 also requires that remedies in a ppropriate 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 desc ribe the circumstances in which those remedies
would be imposed, citing to the relevant provisions of law or regulation.
Please refer to reply to Question No 21 on the Checklist of Issues on Enforcement submitted
by India in document No. IP/N/6/IND/1 dated 29 November 2001.
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 provisions of 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. STATISTICAL QUESTIONS
36. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, integr ated circuit layout-design, and trade secret
enforcement for 2000, including the number of cases filed; injunctions issued; infringingIP/Q/IND/1, IP/Q2/IND/1,
IP/Q3/IND/1, IP/Q4/IND/1
Page 64
products seized; infringing equipment seized; cases resolved (including settlement);  and the
amount of damages awarded.
Statistical information in respect of injunction, infringements, seizures, cases resolved, etc.
are not maintained by the IP Offices in the country since they fall under the purview of the Civil and
Criminal justice system and are administered in various different courts in the country.  This
information is not compiled centrally.
37. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringeme nt for 2000, including the number of raids,
prosecutions, convictions, and the amount of fines and/or jail terms (including whether the fines
were paid and whether the jail term was actually served or was suspended) and any otherinformation establishing that the criminal syst em operates effectively to deter copyright piracy
and trademark counterfeiting.
Please refer to the reply to Question No. 36.
M. N
OTIFICATIONS
38. Please explain whether India has notified it s patent, integrated-circuit layout design and
trade secret laws to the TRIPS Council, as re quired by TRIPS Article 63.2.  For any laws that
that have not been notified, please explain th e circumstances and explain when these laws will
be notified. Finally, please explain when In dia 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 to
finalize its report during the current Winter Session of Parliament. India has submitted replies to the
Checklist of Issues on Enforcement to WTO.2
__________
                                                     
2 Document IP/N/6/IND/1.