RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/326
23 November 2001
(01-5992)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from India to questions posed by Canada and Switzerland
By means of a communication from the Permanent Mission of India dated
23 November 2001, the Secretariat has received the following responses to questions posed byCanada and Switzerland, as circulated in documents IP/C/W/314 and 315, respectively.
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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 the
Protection of Literary and Artistic Works, or Universal Copyright Convention or World TradeOrganization, 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.
SWITZERLAND
A. T
RADEMARKS
1. Please explain how your legislation implements  Article 62.2 of the TRIPS Agreement.  Please
indicate how long it takes on average to register a trademark.  Please cite the relevant provisions ofyour 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 under
Section 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 isadvertised in the Trade Marks Journal.  An accepted application is advertised ordinarily within sixIP/C/W/326
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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 se rvice 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 to
potential 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. PATENTS
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 legi slation implements Articles 70 .8 and 70.9 TRIPS Agreement. Please
cite the relevant provisions of the law.
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 Article 27.1, in combination with Article 31 of the
TRIPS Agreement, consider impor tation 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 specifya requirement for local working for the purpose of grant of compulsory license.
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/C/W/326
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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 enforced
by 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 marketauthorization 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 regulatory
authorities 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 andCosmetics 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 any person any information acquired by
him in the performance of his official duties.
D. E
NFORCEMENT
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.IP/C/W/326
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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, collective
administration societies, Heads of Police force of major States and representatives of other connected
departments of Government of India.  This Council makes recommendations on enforcement ofcopyrights 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 IPRenforcement 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 right holders of the importance of intellectual propertyrights, the Central Government organizes as well as provides financial assistance for seminars on
copyright and IPR related studies.
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