Tag Archives: copyright

Khurana & Khurana, Advocates and IP Attorney ranked as “Tier 2” for IPR services in IP Ranking List published by Asian Legal Business

Khurana & Khurana’s pursuit for excellence continues as it celebrated 10 glorious years of service in 2018. It has been acknowledged many a times for its quick and effective services so far. K&K has again made its mark as a tier two law firm for Trademark/Copyright and Patent in offshore as well, according to IP rank list as published by Asian Legal Business (ALB). (For more details click here)

Khurana & Khurana has been one of the law firms to help India protect its IPR by providing Patent and trademark portfolio services, which includes Patent filing, Patent prosecution, Patent opposition, Trademark filing, Trademark prosecution, Trade opposition, IP enforcement as well as litigation.  This full service firm has, further contributed in improving India’s Patentability environment through filing a number of Patent applications surpassing more than 1200 applications in 2017, both domestic as well as Conventional filings, in the country.


Khurana and Khurana has also carved a niche for itself by successfully representing a diverse portfolio of clients, ranging from start-ups to fortune 500 companies. K&K is pacing swiftly towards filing more number of Trademark applications with each passing year as highlighted in the diagram given below:


Khurana & Khurana has its presence across the globe as its has offices in various places in India and in other countries namely USA, Bangladesh, Myanmar, Nepal, Vietnam, Sri Lanka and Malaysia. Moreover, with its diligent and sincere work, Khurana and Khurana has been able to engage ClienIP Ranking May 2018ts from diverse section of the world.  The figure below shows the Geographical split of K&K’s Client base:

                         tier2_image3          tier2_image4

As Khurana and Khurana climbs the ladder to success, such recognition by ALB, infuses a new zeal and passion to scale new challenges. Khurana and Khurana is happy to acquire a firm position in the realm of Intellectual Property and strives to achieve greater heights!


Criminal & Civil Prosecution for Copyright/Trademark Violation

If any brand’s product is genuine & original, then it enjoys a substantial amount of recognition in the eyes of its potential customer, therefore it is necessary to protect the commercial value of any product offered by such brands and the said protection is provided through Intellectual Property Rights associated with the product i.e. Trademark, copyright etc against the logo, name, tagline, design of the product etc.

But many a time, counterfeit products which mean fake or unauthorized replica of the original product is sold in the market. The purpose behind this is to take advantage of the superior value and recognition of the original, then create fake products and sell them in the market. Counterfeit products tend to have fake company logos and brands (resulting in copyright or trademark infringement in the case of goods), have a reputation for being lower quality. This act harms Original products reputation and profits. The Frontier Economics study commissioned by ICC BASCAP found that the total global economic value of counterfeit and pirated products was as much as US$650 billion in 2008. This figure got doubled to US$1.7 trillion by 2015, due to the rapid increase in physical counterfeiting and piracy.

The Trademark Act, 1999 and Copyright Act, 1957 provides for remedies and action against the Infringement of Intellectual Property Rights.

Protection Under Trademark Act

Section 103 and 104 provides for imprisonment for a term not less than six months which may extend up to three years and fined not less than fifty thousand rupees which may extend up to two lakh rupees in case of  false application of trademark and selling of goods to which false trademark has been applied.  Section 115 (4) of the Act talks about the powers of police for the process of search and seizure of any such products which calls for action against infringement of the trademark. The catch in this provision is that the police officer before making any such raids and takeover has to obtain a certificate of opinion from the registrar on the facts of the case and shall abide by the opinion made. The registrar, although is not obliged to give any such opinion and also the database made available to the Registrar of Trade Marks is not adequate, as it fails to recognize the device marks or symbols or labels, which constrains the Registrar from giving a full proof opinion owing to the non-availability of the entire database comprising word marks as well as device marks or symbols or labels. This provision many a time’s delays the process of conducting a raid and in meanwhile maker of the counterfeit product continues to sell such products and gain profit and it might also run away after selling the product.

For the purpose of taking fast forward action against any infringement, the proprietor should take Criminal action. The proprietor should file a criminal complaint under Section 156 of the code of criminal procedure. Subsection 3 of Section 156 provides that in case of refusal by the police to lodge an FIR or initiate criminal action, the aggrieved party can file a complaint before the Magistrate, procedure w.r.t. which is laid down in section 190 of the Code of Criminal Procedure, 1973.

A search warrant can be obtained by directly approaching the magistrate court, the procedure of which has been laid down under Section 93 of Code of Criminal Procedure, 1973.

  • In the case of Sanyo electric Co Vs State of Delhi (CRL. REV. PETITION NO. 154/2010), an order passed by magistrate regarding issue of search warrant related to trademark Infringement was challenged, alleging that order passed by the magistrate violates the requirement of Section 115(4) of the Trademark Act i.e. search warrant shall not be executed until the opinion of registrar has been obtained by the investigating officer. The Delhi High court decided that a search warrant issued by the court under Section 93 of the Code can be executed without the requirement stipulated in the proviso to Section 115(4) of the Trademark Act. The court may or may not seek the opinion of the registrar depending on the factual matrix of a particular case.

Many a time it may also happen that the identity of the manufactures and the distributors of the infringing material are not known to the complainant and the same operates as an obstacle in the initiation of criminal action. The said issue is addressed under Section 93 and 94 of the Code of Criminal Procedure, 1973 under which one can request for initiation of a search and seizure proceedings against known and unknown persons.

Protection under Copyright Act, 1957

Logos and designs, which are used as brand identities for representing businesses, are protected as trademarks. If they are original artworks that have an element of creativity, they are also entitled to be protected as copyrights as well.

  • In case there is any infringement of the said mark, the proprietor can take action Under Section 63 of Copyright Act, 1957 which contains the provision of punishment of Six months imprisonment which can be extended up to 3 years and also fine can be imposed of fifty thousand rupees which can be extended to 3 lacs.
  • The main advantage of taking action under Copyright law is that Under Section 64 (1), a Police officer not below the rank of Sub-inspector has the power to seize without warrant, infringing copies of a work. The infringement of Copyright was decided as a Cognizable offense in the case of State Govt. of NCT of Delhi vs. Naresh Kumar Garg 52011(46)PTC114(Del). The court, in this case, cited a Judgment of the Gauhati High Court in Jitendra Prasad Singh v. State of Assam 2003 (26) PTC 486 (Gau) where the offense under Section 63 of the Act was held to be cognizable and non-bailable. The court was of the view that it would be fruitful to refer to the provision of Section 64 of the Act, which empowers a police officer not below the rank of Sub-Inspector to seize the infringing copies of any work.
  • In case of cognizable offenses, the investigating officer has the power to make an arrest and start the investigation without a court order in accordance with (Section 156 (1) of Code of Criminal Procedure, 1973. The proprietor, whose mark is said to be infringed, should file a criminal complaint citing charges mentioned under Section 420 of IPC along with Section 63 of the copyright act. The provision of Section 420 of IPC preciously talks about cheating by the way of false representation of property to some other person.

By filing for copyright against Logos and Designs, similar charges under the Copyright Act could be framed against the offenders instead of bringing an action for a trademark infringement. Still, if there is involvement of only trademark infringement, then the proprietor should press for carrying out a raid at the right time for such counterfeit products before taking an opinion from the Registry which is required only at the evidence stage or before filing the charge sheet.

One should also register Fir under Section 420 and simultaneously the evidence is collected and then the additional charges under the Trademark and Copyright Act could be added before the trial. In such a way, Proprietor can initiate a possible swift action against the offenders and also include the IP infringement charges against them.

Civil Remedies in case of Violation of Trademark

 There is a lacuna in filing a criminal case against the seller of the counterfeit product, Till the time of conviction for the offense the offender is free to deal and trade in the counterfeit products. He may abscond. Police Investigations and Charge sheet filed by Police hardly ever finds/uncovers the whole supply chain of infringing Goods. The possible step proprietor can take is to file a civil suit simultaneously along with the criminal complaint in a particular case where infringement of trademark has been done. The advantage of doing this is that the by initiating a criminal complaint, seizure of counterfeit product can be done while civil suit helps to restrict the sale of the same while the matter is pending before the court.

Order of Injunction from Court

For the purpose of stopping the manufacturer of counterfeit product from its Sale, A civil remedy can be obtained by the proprietor where a court can issue Order of Injunction in which a person is required to perform or restrained from performing, particular Act. This helps the proprietor to restrain the manufacturer from selling counterfeit products till the matter is disposed of by the competent court. The general rules governing the grant of an injunction are contained in Sections 36 to 42 of the Indian Specific Relief Act, 1963 and Order XXXIX Rules 1 & 2 and Section 151 of the Code of Civil Procedure, 1908.

Damage cost

Any proprietor whose trademark has been infringed by the sale of Counterfeit products, the said person can claim compensation from the opposite against the profit made out from the sale of the counterfeit product through unauthorized use of trademark belonging to the proprietor.

Protection against IPR infringement under Customs Act, 1962

The provisions of this Act talks about the prohibition of Import and Export of such goods which are in the context of Infringement of patents, trademarks, copyrights, designs, and geographical indications in accordance with Section 11. Section 113 gives authority to the competent officer for the purpose of confiscation of infringed goods to be used for export and also in accordance with Section 112/114, penal action can be taken against any such importer or exporter of infringed goods.

Preservation of Brand from Counterfeit in India

Most of the people involved in making and selling of counterfeit products in India are not well aware of the fact that this activity creates liability for criminal and civil action. The common perception amongst such traders is that it is a mere art form of advertising and selling goods.

The Legal process relating to counterfeit products contains several shortcomings which have been mentioned below:-

Abuse of legal proceedings

Lawyers of defense side try to delay the proceedings by questioning the FIR filled and the raid conducted by the investigating officer. They claim remedy provided under Section 482 of Code of Criminal Procedure, stating that the FIR was fake and no police action/seizure ever took place or by invoking that the proceeding is illegal and fraudulent against the principles of natural justice or by challenging the jurisdiction of the Court. However according to the procedure mentioned in the law, there shouldn’t be more than three adjournments of proceedings of court but in general, this principle is completely ignored.

Investigation by the Police

It is the duty of Police officer under competent authority to conduct raids at the place where the sale of counterfeit products is taking place. Police many a times fails to prove the findings of the raid conducted due to half-baked Investigation conducted by them. The name of witnesses mentioned in the charge sheet filed either go missing or turn hostile due to a pro-long stretch of criminal cases in the court. The investigating officer also lacks adequate knowledge regarding the components of IPR infringements and proceedings to be followed for quick action.

Obstacles by Manufacturers and Police

People who are involved in manufacturing and sale of counterfeit products have strong political connections as they are part of large domestic markets. Most of these people have strong unity in the market and they use their connections to pressurize Police officer to not to conduct any investigation or seizure proceedings.  The police officer also makes excuses like the offense of the Infringement is not cognizable, they don’t have time; there is no cause of action; the offender’s premises are beyond their jurisdiction or no action can be taken as the trademark is unregistered.

Police Officer ignores two Important points:-

  1. Registration is not a mandatory requirement for police action under Copyrights Act 1957. Copyright comes into existence as soon as a work is created and no formality is required to be completed for acquiring copyright & registration is discretionary (section 45).
  2. In matters of Cognizable Offenses, the Police are bound to register a fir and start an investigation without being concerned about any authority in place. According to Section 64 of Copyright Act, Police Officer should only need to be convinced that infringement an infringement has taken place. Papers can be given any time before the filing of the charge sheet and at the most, an affidavit or an undertaking from the complainant should suffice.

Refusal of conducting multiple raids

The business of sale of the counterfeit product is expanded over multiple locations. The police officer refuses to carry out simultaneous raids stating lack of jurisdiction and the Complainant is asked to file fresh Complaint with the other jurisdictional Police Authority for the same cause of Action. This results in repetition of same proceedings which further delays Investigation proceedings.

Failure of Police in recognizing dissimilarities

The raid to be conducted is sometimes refused because police fail to recognize minute differences in artistic works in case of a matter of copyright and trademark infringement.

Long Time period between initiation of criminal complaint till the conclusion of the trail

In the matter where the Complainant is the company and if the power of attorney holder leaves the company, the matter is not represented then it stands dismissed due to non-attendance of the original Complainant and the counterfeiters are discharged. The biggest concern for the complainant is due to this, the counterfeiters are discharged and the duplicate material also comes back in the market for sale.

Author:  Mr. Amit Ranjan, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com

Fashion & Intellectual Property

“Fashion is not something that exists in dresses only. Fashion is in the sky, in the street, fashion has to do with ideas, the way we live, what is happening.” – Coco Chanel

Fashion industry is at an all-time high and the present size of the market is a $US1 Billion. Many established players together with new designers are operating within the market. One of the key factors leading to the growth of successful fashion houses and of the fashion industry in general is the brand consciousness and the bond which is shared between the customers/clients and the fashion houses. The bond that fashion houses develop with their clients can be attributed to the popularity of their logos or house marks. Consequently securing these logos becomes paramount for these fashion houses.

Introduction of Intellectual Property (IP) in Fashion Industry

Many brands within the fashion industry guard their logos or emblems under “Trademark Law.”However, most of these brands do not pay adequate amount of attention to other intellectual properties that they create in course of their business which should also be protected, for example, fashion layouts. A fashion enterprise spends huge sums of money and time to create new and authentic layouts each season. There are many steps that a designer or a fashion house may take to secure the rights over an original fashion layout or design, but before that let us appreciate the importance of securing such rights. The following incidents which were well captured by the various news reports will clearly highlight the importance of securing such rights:

  1. The 2018 cruise collection of Christian Dior which Sonam Kapoor Ahuja wore for the Elle India cover was allegedly copied from Indian Designer Orijit Sen. According to designer Orijit Sen, one of the co-founders of People Tree, the print on the Dior dress was a blatant rip off of Sen’s brand that he had created and began selling more than 10 years prior and is still producing in 2018. Further, he says “he had never worked with Dior or any other major fashion brand.” He also says he was“never approached by Dior or any other related label for permission to use the design.” Now Dior and Mr Sen have managed to come to a settlement for an undisclosed amount.
  2. Another incident is from 2017 when the designer Rahul Mishra sent a legal notice to a high-end clothing brand alleging plagiarism.
  3. Yet another incident of plagiarism involves the allegation that Shweta Bachchan Nanda and Monisha Jaising’s fashion label MxS copied the laundry room “AIRPLANE MODE” sweatshirt design.


Now let us understand how IP rights can reduce risk and enhance competitiveness of all types of businesses in the fashion industry.

Copyright: Copyright is first and most crucial IP on the subject of fashion industry. Copyright guarantees protection for artistic work to artists and designers. The most important criteria for securing a copyright are originality and uniqueness. Why should Copyright be the first choice of IP in fashion industry?

    1. Rights over copyright will start from the day the work is created. (As fashion trends may change seasonally, having a right from first date would be great)
    2. Copyright is secured almost globally (139 countries) thus it is not bound geographically.
    3. Term of copyright is lifetime of the artist plus 60 years from the year in which artist dies.
    4. Remedy against infringement lies in criminal law as well as under civil law.

Designs: According to The Designs Act, 2000, which is a law enacted by the Indian Parliament, a design means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trademark or property mark or any artistic work.

Thus, The Designs Act, 2000 covers all articles of clothing, haberdashery, garments, head wear, footwear and many others. Registration of design is a vital device in the hands of stylists, fashion designers and the entire fashion industry to secure the rights over their new and original fashion layouts, designs etc. In this regards, Section 22 of The Designs Act, 2000 clearly states that during the existence of copyright in any design it shall not be lawful for any person:
(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

Trademark: The aforementioned example of AIRPLANE MODE sweatshirt clearly highlights the importance of trademark protection in the fashion industry.Trademark registration helps in providing an exclusive legal right that stops any third person from using a quote or phrase which is similar to the registered trademark. Securing the rights over a brand name by filing for the registration of trademark is also very important part of any commercial enterprise. Thus, trademark is another IP  that fashion enterprises must become aware of and must look into.

Trademark (Shape): Further, a distinctive shape of an article can be protected under the trademark law in India. Trademark shape is crucial for footwear, bags etc.
Fashion Industry is booming and therefore all the players in the industry must realize the importance of IP in securing their designs and products from infringement. Ralph Lauren once said, “I don’t design clothes. I design dreams. “No one should let anyone else copy their dreams.
All views expressed in the blog are my own and do not constitute the opinions of any entity in any way with which I’ve been, am now or could be affiliated.

Author: Paras Khurana, IP Attorney at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at paras@khuranaandkhurana.com.




Meesha Novel Case

In this day and age, a microscopic scrutiny of the Government will show us we are only a deemed democratic nation and not one in actuality. If we truly had the rights that are listed in our supreme Constitution, there wouldn’t be any journalists and writers who fear for their lives simply because they have the tendency to express their opinions freely.

It’s a slippery slope when it comes to deciding what can be published, what is ignorant, what is moral, what is vulgar and what is obscene. Something that offends one person may not offend the other and vice versa. It would be a waste of time and resources for the courts to be preoccupied with matters that may hurt someone’s sentiments. Opinions must be encouraged and sought after, they must be welcomed even if the views oppose each other, healthy discussion is essential, and a person must be free to make art or literature in any form that they choose, without worrying about what someone else may think.

Plenty of cases come up in court, books are banned and movies are censored and it usually follows a disheartening familiar course. In these instances, the judgement delivered on September 5th, by the Hon’ble Chief Justice of India, Dipak Misra hits like a breath of fresh air.

The Meesha case was widely discussed in the media before this judgement was given. This story, Meesha i.e., moustache, appeared in Mathrubhumi which is circulated throughout the country.

The dialogue in the story that raised the said controversy was, “Why do girls take a bath and put on their best clothes when they go to a temple?”, “They are unconsciously proclaiming that they are willing to enter into sex.” This triggered an extreme reaction in the media and the writer of the novel was even sent threats.

It was contended that the Mathrubhumi editor was at fault for not editing statements that showed temple going women in a bad light. It was further contended that it was a defamatory and degrading publication which caters to perverted and communal minds and that it needs to be checked. Moreover, that it defiles the place of worship and causes the public to look down upon temple going women with contempt and ridicule. It was suggested that since this publication has the potential to disturb the public order, decency, morality and defames the women community, the Court should lay down guidelines to regulate and prohibit the same. It prayed for a mandamus to Union of India, Mathrubhumi and the State of Kerala to seize all copies of the same and issue a writ of prohibition to prevent further circulation.

Banning this book was considered as it was protested that a part of the book was indecent and that it offended the sentiments of women of a particular faith. The case of Devidas Ramachandran Tuljapurkar v. State of Maharashtra & Others[1] was cited wherein it was held that there is no authority who gives licence to a poet. Similarly, in Raj Kapoor & Others v. State & Others[2], it was explained that liberty is the root principle and that fundamental freedoms would be impacted if morals were measured by statutes and courts and that it would be a risky operation.

It may seem like a usual occurrence but the issue is a deep rooted one. When will the bullying and coercion come to an end and when will our State truly step out of its totalitarian regime?

This decision being a milestone in this situation should not have been in the limelight in the place. The violence that writers and artists are threatened with is a continuum without end. There seems to be no space for people to express themselves without expecting a slew of unjustified threats.

However, the court in this matter declared that we are a nation that permits free exchange of ideas and liberty of thought and expression and the judgement was concluded with Voltaire’s words, “I may disapprove of what you say but I will defend to the death your right to say it”.

Author: Ada Fazal,Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at  swapnils@khuranaandkhurana.com.


[1](2015) 6 SCC 1

[2](1980) 1 SCC 43

Update on Recent Stakeholder Meeting Held On 03.08.2018 at IPO, Delhi

Few of the following issues with respect to various field of  Intellectual Property, were raised by the stakeholders :

I. Patents:

a) E-communication, websites and allied issues

  • FERs are not notified to the applicants leading to abandonment of application.
  • The Patent Office website do not provide for Sequence Listing uploading in txt. format and the inline module do not provide for uploading of formal drawing after the Indian Patent application has been filed. This website also do not provide for Foreign filing authorizations and do not facilitate the certified copy as well.

b) Processing Of Application , Hearing, Video-Conferencing

  • There is no clarification regarding what documents can be filed by a Foreign Entity for claiming Small Entity Status as per Patent Rules, Form-28.
  • Hearing notices are not received, thereby leading to abandonment of the application, in case the hearing is not attended.
  • Hearings are pending in respect of post grant matters and review petitions.

c) There is no mechanism to keep a check on the opposition filed against a patent/patent application, and also the same including Pre-grant opposition is not served to the Applicant.

d) Other Issues

  • IPOs should provide FAQs with regard to Start-up , NBA and TKDL and allied subject.
  • IPO must conduct user satisfaction survey on quality of examination.

The IPO considered these issues and is implementing the following change:

  1. IT Support Cell has been established to provide necessary help and resolve the problems relating electronic communication. This has helped IPO in the errors relating to e-communications to less than 1%.
  2. IPO will be implementing IPO2 version of patent database, which will make filing of patent application easy and efficient and would resolve other websites issues.
  3. IPO clarifies that a Foreign entity may submit the financial statement showing its annual turnover in order to claim Small Entity Status complying with the provisions stipulated under MSME Act 2006 of India
  4. IPO advices the applicant to ensure that none of the mails regarding IPO shall drop in the spam account.
  5. In order to settle the work load of IPO with respect to FER, amended cases and post-grant matters and for clearing the pendency of matters, the Controllers appoint hearings.
  6. IPO is under the process of developing a separate module for tracking and updating the proceedings related opposition.
  7. With regard to the FAQs faced by stakeholders from their clients, IPO welcomed to answer all the FAQs provided that the stakeholders shall submit a list of such FAQs.
  8. IPO is developing a separate window of the IPO website in order to facilitate user satisfaction survey on quality of examination.

 II. Trade Mark

a) Trade Mark Registry does not allow any amendment to user details defying to the directions given by Delhi HC through decision.

b) TMR do not exercise a uniform Practice in show cause hearings with regard to interpretation of law.

c) Video Conferencing in Trade Marks should be implemented.

d) Refusal orders are sent even after filing the required documents. TMR Chennai is not handling post-registration matters.

e) There is no up-gradation of records of TMR, which results in citing in the examination report, those marks that were registered but not renewed. The dead marks continue to remain in the records of Trade mark register.

f) Hearings in international matters are being held at Mumbai Trade Marks Registry only. However, Section 36C states that an international application shall be dealt with by the head office of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by notification in the Official Gazette, specify.

The steps taken by IPO with regard to the above raised issues:

  1. IPO clarified that Delhi high Court has directed to decide the amendment of user details on case to case basis and no other administrative directions can be issued in this regard. IPO confirms that the matters are refused only in case of insufficient supporting documents.
  2. Trade mark Registry is under the process of preparing a Module for the purpose of registered user.
  3. In order to bring consistency in the proceedings, All hearing officers are being provided with a regular basis training program.
  4. IPO is seriously considering to implement the use of Video Conferencing and thus, the same is under Trial in TMR.
  5. Appropriate action has been taken up for sorting any issues related to proceedings of the post registration matters.
  6. TMR has noted the concern regarding non-up-gradation of Trademark records and appropriate actions will be taken against it.
  7. TMR will be providing Video-conferencing facility in order to conduct the hearings of International matter at all branch office.


a) There are many technical issues regarding online filing of Designs application. Few of the problems are:

  • Application forms drafted using the online portal are non-editable, therefore, if any amendment has to be made, the whole application is to be drafted again.
  • The fee receipt issued for online applications do not show details regarding classification of articles.
  • The online portal of the Design Office do not provide any applications except certified copies.
  • The applications filed online sometimes are objected to submit original application form and representations, thereby, duplicating efforts and increasing timelines.
  • The online portal do not show any update regarding any amendments/assignments made in the design post registration.

The Indian Patent and Design office has noted the above issues and are in the process of updating the Module to resolve the issues relating to online filing of applications.


a) IPO do not have efficiency and transparency as the Copyright office does not timely acknowledge or respond to the applicant. In many cases, the copyright office asks the applicant to re-submit copyright work without providing any explanation for the same.

b) Copyright – Searchable data is not available

The steps taken by IPO with regard to the above raised issues:

  1. The Copyright office has taken various steps to reduce the pendency of applications, which has brought a positive change.
  2. The Copyright office website has started to display the application received on a monthly basis, in order to increase transparency and stakeholder’s participation and to make it easier for the applicant to keep a track on the status of the Application. This also helps in facilitating information to the stakeholders and thereby, providing them an opportunity to file an objection if any before the Registrar of Copyrights.
  3. Further, the communication regarding Discrepancy Letter and the Register of Copyrights (R.O.C) between the Copyright Office and the Applicants can be transmitted via emails registered on: http://www.copyright.gov.in.
  4. Copyright Office has also published the Practice and Procedure Manual for examination of Literary, Artistic, Musical, Sound Recording and Cinematograph Films.
  5. Preparation of database for past copyright register for search purpose is under consideration.

Case summary of “Cabell v. Zorro Productions, Inc.”



This case is a result of copyright infringement of a musical based on the story of Zorro.The character of Zorro originally was developed by Johnst McCulley which was further adapted in stories. All of the stories are part of public domain. Cabell (hereinafter “the plaintiff) made a musical based on the story available in public domain and Zorro Productions (hereinafter “the defendant) is the assignee of the character Zorro. The Plaintiff produced a musical titled “Z – The Musical of Zorro” and got its scripts and audio with the U.S. Copyright for original, novel elements of his work but not the elements in the public domain as of 1996.

The Plaintiff met the Defendant for the production of the Musical but the agreement did not materialise and the defendant gave a legal threat to the Plaintiff not to publish their work without a license from them. Later, the Defendant licensed the use of the character Zorro to Allende in 2005 and separate musical in 2008.


  • The Plaintiff filed an infringement suit claiming that the novel and the musical was infringing its musical and seeking a declaration that the Plaintiffs’ musical is not infringing the copyright of the Defendant.
  • The Defendant cross-moved an application claiming that the Plaintiff was infringing its copyright.


The arguments advanced by the Plaintiff are –

  • The Defendant had access to the script of the musical of Plaintiff due to their exchanges with respect to a licensing agreement in 1966 which did not materialize.
  • The Plaintiff contended that there was substantial similarity between both the works.
  • The Plaintiff further contended that three characters from its script were sufficiently developed and therefore, it should be granted protection.
  • The Plaintiff’s musical was based on public domain and therefore, does not infringe the copyright of the Defendant

 The arguments advanced by the Defendant are –

  • The Defendant contended that the Plaintiff’s musical is infringing its copyright.
  • The Defendant further contended that Statute of Limitations will be applicable because when both the parties met for the licensing agreement, the Defendant had informed the Plaintiff that its musical is infringing the copyright of the Defendant.


The court thus decided;

  1. That the Plaintiff’s musical does not infringe the Defendant’s copyright over the character of Zorro.
  2. That the Defendant’s musical and novel does not infringe the Plaintiff’s musical and does not have similar theme and setting.


The Court analyzed the plaintiff’s claims. It was not disputed that the Defendant had access to Plaintiff’s script as a licensor holds a supervisory authority and there was an agreement between the Plaintiff and the Defendant which did not materialize so the Court cannot rule out a possibility of the Defendant having an access to the script. The Court followed the extrinsic test to conclude if there is a substantial similarity between the two works. The extrinsic test focuses on “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events”. The Court determined that the plot of the novel was focused on the character Zorro’s childhood whereas the Plaintiff’s musical is based on Zorro when he is an adult. The Court found differences in the settings, theme, pace, mood and tone of the two works.  The Court concluded the claim of the Plaintiff by adjudicating that the claim of Plaintiff that three characters from the musical were sufficiently developed in the novel cannot stand as there is no substantial similarity between the two and the treatment given to them is also dissimilar.

Adjudicating on the claim of the Defendant that the Plaintiff is infringing its copyright, the Court concluded that a reasonable person will not find substantial similarity between the two musicals. The Court disagreed with the contention that Statute of Limitations will be applicable in the present dispute as the Defendant has the right to file an infringement claim whenever the Plaintiff produces its musical. The Court rested the dispute by applying the doctrine that a party abandons claims by not raising them in opposition to a summary judgment motion and held that the Defendant had abandoned its claims of copyright infringement by not raising it in opposition to a summary judgment motion and passed a declaratory judgment claim in favour of the Plaintiff in this regard.

Note: Several quotations from the judgement are included in this article. The complete judgment can be found here.

Author: Ankita Aseri, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

Copyrighting Patents

The nature of Intellectual Property Rights is such that, like any other law, it has loopholes as well as overlaps. These overlaps arise due to the fact that IPR protects ideas by their expressions and expression can be in more ways than what can be imagined by one person. There are subject matters which are eligible for the protection of more than one kind of IP. The prime example is the overlap between design and copyrights which has been statutorily dealt with under the Copyrights Act.

However, the recent debate has been with regard to Copyrights and Patents. Now, both of these are as far apart as two IP protection sects can be. Copyright protects literary, dramatic, artistic, cinematographic, musical works whereas Patent grants rights to functional inventions which are novel, useful and non-obvious. However, these rights find a commonality in the patent applications. It is pertinent to disclose the information relating to the working of the invention in the patent application by way of specifications. These specifications also include certain drawings and sketches of working models of the invention. There has been a long standing question whether these applications, which consist of the originally authored specifications and drawings, are eligible to be granted a copyright. Or alternately, can the specifications in the patent application be infringing upon copyrights owned by other authors/scholars.

Countries have taken different stands in the matter. Germany, for instance, excludes patent documents from the copyright protection from the time they are published.[1] However it is necessary for a person to cite the source when using it in a scholarly or academic work. Switzerland as well exclusively exempts the patent documents from being copyrighted.[2] On the other hand the position in UK differs depending on when the patent was filed. All the applications filed prior to 1989 were protected by the Crown Copyright. However, after they enforced their 1988 Copyright Act all the applications prior to 1989 remained with the government  unless they had a copyright notice on them, and the copyright for all the applications filed after that date lies with the applicant and no use can be made unless with express license except for the purpose of ‘dissemination of information’.[3] USA holds a different position for copyrighting patent applications. It has been stated that all the information posted on the website of the USPTO is considered to be in the public domain but the government holds international copyright over it. However, the applicants are allowed to specify their copyright on the patent drawings or other materials.[4]

There have been very few cases which discuss the copyright ability of patent applications. The US case that accepted that copyright subsists in a patent application was In Re Yardley.[5] In more recent cases, it has been questioned whether patent applications can be challenged in court as infringing a copyright. In American Institute of Physics and John Wiley & Sons, Inc. v. Schwegman, Lundberg & Woessner P.A. [6], the University alleged that the firm infringed their copyright by attaching a scholarly article in their patent application. The firm on the other hand took the defense of ‘Fair Use’ and stated that the articles were taken from the USPTO website itself. In two other cases, American Institute of Physics and Blackwell Publishing, Ltd. v. Winstead PC[7]  and John Wiley & Sons, Ltd. and American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff LLP [8]—and again, after intervention by the PTO—the plaintiffs similarly amended their complaints to disclaim any allegation of infringement based on submission of copies of copyrighted articles to the PTO, or on retention of file copies of the works submitted to the PTO.[9] The defendants in all these cases stated that disclosure of prior art was necessary in order to secure a patent for their invention and thereby should be included under the exclusion of ‘Fair Use’. The court accepted this and said that as long as it proves to be of evidentiary value and is a requisite for disclosure for the government the use can be deemed to be fair.

Contrarily, the UK courts do not follow the same rationale. In Catnic Components Ltd. & Anr. v. Hill and Smith Ltd. the court held that the copyright in a patent ceases to exist once it is published. The court was of the opinion that the main underlying principle behind granting a patent is full disclosure. The idea is to bring the invention into public domain so as to boost innovation. Copyright on the other hand restricts the rights of other people by giving exclusive rights to the owner of the copyright. It is a conflict between the most basic objectives of the two rights. Furthermore, scholars have pointed out that granting copyright could in effect hamper the innovations further. The term of a patent is a maximum of twenty years but in case of copyrights the term is much longer and continues to be in effect 60 or 70 years after the death of the owner, depending on the domestic laws of the country. This creates a problem as to the fact that even after the invention is out in the public domain there would still be rights which will be otherwise attached and thereby will beat the purpose of being in public domain. These questions have not yet arisen in front of the Indian courts and the law is also silent on it, nothing has been stated explicitly. But the position of other countries gives us a fair idea as to how allowing copyright in patent applications or not can lead to different scenarios and raise different questions.

Author:  Yashvi Padhya, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnil@khuranaandkhurana.com.


[1] https://www.dpma.de/english/patents/faq/index.html#a22

[2] https://www.admin.ch/opc/en/classified-compilation/19920251/index.html#a5



[4] https://www.uspto.gov/terms-use-uspto-websites

[5] 493 F.2d 1389 (CCPA 1974)

[6] D. Minn. Civ. No. 12-528

[7] N.D. Tex. No. 3:12-CV-1230

[8] N.D. Ill. No. 12 C 1446



Diet Sabya – The New Call Out On Copyright And Fashion

The motifs on my jackets were hand-drawn and hand-embroidered. The collection is still selling, and one piece is sold for Rs. 40,000. However, one brand is re-creating the motifs as digital prints and selling it for Rs. 1,500.

          – Designer Rahul Mishra in an interview to Times of India on 13 May 2018.

‘Inspiration’, ‘Homage’ and ‘Dedication’ are few words that designers use shamelessly while ‘Copying’, ‘Infringing’ or ‘Plagiarising’ other’s design and fashion works. Earlier, clothing was necessity and hence seen in a utilitarian aspect. However, with changing times fashion has grown from utilitarian to artistic creations.With ever-increasing fashion industry, there are huge cries amongst the designer whose works are blatantly being ripped off.  Every Indian on the streets of Chandni Chowk, Delhi or Linking Road, Mumbai has been witness to knockouts and counterfeits of Sabyasachi’s lehengas and Manish Malhotra’s fashion week designer outfits. The reason being weak IP laws pertaining to fashion industry.

The lingering issue of Copyright protection in the Fashion industry has revived again due to internet sensation ‘Diet Sabya’. Diet Sabya is an anonymous Instagram page and desi-version of Diet Prada. The page calls out plagiarised fashion design works by comparing it on side-to-side basis. It has garnered attention of many in a short span of time with various celebrities appreciating the cause and various others fuming it.

Diet_sabya_blog1      diet_sabya_blog2

The relation of fashion and copyright has always been complicated. IP protection via trademark is limited in its scope. It will cover only those patters or marks which helps the brand in its attaining its distinctiveness. Famous examples include Christian Louboutin and its trademarked red sole on footwear. However, Copyright is an IP protection which can save the drowning boat of designers. However, it comes with a set of its own problems.

The Scope of Copyright Protection

Getting a copyright registration is not necessary. A copyright exists as soon as the work is created. The first question then arises is whether a design is a work under Section 13 of the Copyright Act, 1957? Artistic work under Section 2(c) includes drawings, among other things. The sketches of the designs are drawings and can be protected under the Act. Also, copyright in artistic work includes conversion of 2D work into 3D work. So, when a drawing or sketch of a dress is converted into an actual dress, it would still enjoy the protection of Copyright.

The problem starts with Section 15 of the Copyright Act which provides that there cannot be any dual protection of design. It means that one cannot protect his design under Copyright Act as well as Design Act. If an Applicant wants Copyright protection for his design, he needs to submit an affidavit stating that the design is not enjoying protection under the Designs Act. The clause 2 of the said section also states that a copyright in any design which has not been registered under the Designs Act will cease as soon as the Article is reproduced more than 50 times by an industrial process.

Hence, the dilemma starts. Whether the work of fashion should be protected under Copyright Act or Designs Act? There is no definite answer to this. Some may prefer Copyright registration as it gives protection for more years than what Designs Act could give. On the other hand, some feel that there could be no purpose of registering a fashion work under the Copyright Act if it cannot be reproduced more than 50 times.

Another pitfall with copyright registration is that fashion is all about trends. It phases out every season. Getting a copyright registration takes its own time and there is a possibility that by the time the creator gets the registration, the fashion trend phases out.

In the case of Tahiliani Design Pvt. Ltd. v. 2008 PTC (38) 251, Delhi High Court deliberated the engagement of the regime of copyright and design law to decide an infringement suit. It was India’s first full-fledged battle on creative integrity. The Court held that intent of the Legislature is clear from the words of the Act. There is a deliberate exclusion of ‘artistic work’ from the definition of ‘design’ under the Designs Act, 2000. Further the Court held that “uniqueness not only in conceptualization but also in creation and presentation are sine qua non of haute couture.”

The other case which deliberated on the same issue was Microfibres v. Girdhar & Co.2009 (40) PTC 519 where the Division Bench of Delhi High Court held that the Legislature has always treated commerce and art as different things. The activity which is commercial in nature has to be granted lesser period of protection and hence Section 15(2) of the Copyright Act exists.

France currently is the only country having strong copyright laws for protecting fashion works. The statutory protection comes in the form of Article L. 112-2.73 in the Code de la Propriete Intellectuelle. The Code lists “the creations of the seasonal industries of dress and articles of” as a protected subject matter, and “uniform protection is given to original fashion designs automatically on the date of creation, regardless of registration, unlike different protection schemes given to registered and unregistered designs under the European Union regulations.”

There is another theory in IP protection and fashion works. Some feel that the weak IP protection to fashion works are boon. It encourages people to be more creative and think out of the box. If there were strong protection, no one would have thought of coming out with aluminium or steel plated boots. To think of, replicating or creating counterfeits of such steel-plated boots would be impractical as the essence lies in the material itself. Reproducing in a cheaper material would make the fashion useless and hence is secured without IP protection. But the question remains standstill. What about other designers whose designs could still be counterfeited with cheaper materials? A slight change in the material or patterns are still enabling infringers get away easily from the legal hands.

Recently, Designer Sabyasachi Mukherjee was awarded the National Intellectual Property Award 2018 in the field of designs and commercialisation for holding the copyright on more than 700 of his designs. His was the first design house to receive the award. In an interview he said, “It is expensive to register every single design, but it helps us to break the notion that the fashion industry is frivolous and doesn’t understand such complexities.”

On the issue of Copyright and fashion works, FDCI President Sunil Sethi stated that the Nandi bull by Designer Rohit Bal cannot be copyrighted. But the interpretation of embroidery makes the difference. By copyrighting such works, there will be better awareness and signature recall which will make imitation difficult in the fashion industry.

Author:  – Esha Himadri, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnil@khuranaandkhurana.com.





[4]Tahiliani Design Pvt. Ltd. v. Rajesh Masrani, 2008 PTC (38) 251 (Del.)

[5] Microfibres Inc. v. Girdhar & Co. &Anr., 2009 40 PTC 519 (Del)

[6] http://www.dailypioneer.com/vivacity/bal-protects-his-original-line.html

Ownership Of Third Party Content On A Website/ Social Media/ Blogs Etc.

We all know that the copyright of any literary/dramatic/artistic work lies with the author of the work even if the copyright is not registered provided, it is original. According to this, the creator of the website is the copyright owner of the same (subject to some exceptions) provided the text, photographs, videos etc., used in the website are not copied works. Now a question arises as to who owns the copyright of the content posted by third parties on a website/ social media/ blog etc. Because individually the owner of the website and the owner of the content posted by third party are different. The answer to this question lies in the terms of the medium one is using to post its content.

Any website has its own terms and conditions that the user must adhere with, without agreeing to those one cannot have access to their services. Generally, public do not take efforts to read these terms and conditions and blindly agree to them, therefore, leading to bunch of all the problems. The terms and conditions are usually drafted in legal language making it difficult for people of non-legal background to understand them. But it is said that one sided efforts are of no use because it is said that one sided efforts go in vain i.e. though efforts are being taken by the website owners to make them easy to understand, people are not taking any efforts to read and understand them before accepting.

In terms and conditions of most of the websites it is mentioned that the owner of the work that is posted through their medium is the author himself, but they give free licence to the owner of the website to use the content anywhere else or even sub licence it to others. This gives them permission to share the content with others also without giving you even a penny. This means that one cannot earn anything out of the efforts one puts in making the work uploaded on the website. Some of the ways to avoid this is reading and understanding the terms and conditions, getting a copyright registered, not relying on only one medium, having a blog of our own in short being aware and alert of one’s rights, terms and conditions of the website.

From the above discussion we may conclude that nobody can take away the ownership right of a work from the copyright owner (subject some to exceptions) i.e. the ownership of the copyright of the work created lies with the author himself even after uploading it on a third party website but by agreeing to their terms and conditions we give them free licence to use our work in a way they want to make use of it.

Author: M. Sai Krupa, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at anirudh@khuranaandkhurana.com.


[1] https://www.socialmediatoday.com/content/who-owns-your-content-online



[4] http://www.mondaq.com/india/x/607438/Copyright/Copyright+Protection+Of+Online+Content


Violation Of Moral Right In Light Of ‘Ghar Se Nikalte Hi’- Will This Be An Eye Opener For The Trend Of Remixes?

Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.” [1]

The foundation of this concept was laid in the case of Amarnath Sehgal v. Union of India[2]. This was a landmark judgement delivered by the Delhi High Court thereby setting precedent and contributed in increase in understand and scope of moral rights given under Section 57[3] of the Indian Copyright Act, 1957. Moral rights are generally meant for protecting the work of the author and maintaining its integrity which essentially means preventing it from getting mutilated or distorted or altered in any undesired manner which may result in hampering the image of the author or its use in such a way that it may hurt the sentiments of the author.

The latest Bollywood glitch between Javed Akhtar and Armaan & Amaal Malik has been with respect to the same. The renowned Bollywood lyricist Mr. Javed Akhtar has issued legal notice against Armaan & Amaal Malik and Super Cassettes Industries Pvt. Ltd., for violation of his moral rights by recreating the song ‘Ghar Se Nikalte Hi’. It is alleged by Mr. Akhtar that the newly created version has used the original “mukhda (first stanza)” of the song repetitively. Although it is combined and mixed with different composition and different lyrics, the essence of the song remains the same. Mr. Akhtar further claims that the new version infringes his “moral rights” under Section 57 of the 1957 Act and aggrieved by the fact that ‘Kunaal Verma’ has been credited as sole author for the recreated version denying Mr. Akhtar, his statutory right of authorship.

There is no doubt that ‘Mukhda’ is the soul& essence of a song to which we all shall agree and so Mr. Akhtar has every right to be identified and credited for the same, especially when the original track bears his name in bold. Further, the fact that his right to royalty (Section 18[4] and 19[5]of the 1957 Act) in respect of using of lyrics which were originally given by him, has been jeopardized as they will not be able to receive royalty without the recognition of authorship. Even the Apple’s Itunes does not recognize him as the original lyricist which has further aggravated the entire situation.

However, the anomaly which can be observed in this notice is that it has been issued to Armaan Malik, who merely is the performer and singer and had nothing to do with the authorship of the song and in my opinion,

it should have been issued to lyricist of the new version who has in fact distorted the entire song. Other shortcomings of the legal notice may be that-

  • There was no legal notice issued to Apple’s Itunes for having failed to mention Mr. Javed Akhtar as the lyricist of the song, although they have specifically violated Section 52-A[6].
  • Legal Representative of the author can exercise the rights conferred upon the author of a work, other than right to claim authorship of the work. The proper body to allege on the recreated version as trying to escape the payment of royalty is IPRS (Indian Performing Rights Society), to whom Mr. Akhtar has assigned his rights.
  • Notice issue to Armaan Malik for simply making a public comment on You Tube page in which he failed to acknowledge the original authors seems senseless and baseless.

There have been several cases with respect to moral right &recreated versions, but a penumbral area exists as nowhere the term ‘recreation’ has been defined in the 1957 Act per se, but if we go by the definition of the word ‘adaptation’, Section 2(a)includes in relation to any work, any use of that work involving in its alteration and rearrangement. Section 14 also confers such type of right to the owner of any literary, dramatic artistic or musical work. If we comply with these provisions, then T-Series, being the owner of the original work has the right to make an adaptation or recreated version. But the question arises that whether recreation of original work amounts to violation of moral rights of the original authors of that work?

Section 57[7]of the 1957 Act provides two rights to the author i.e., of paternity (right to claim authorship) and integrity (to claim damages for any mutilation, distortion, modification of the work prejudicial to his honor or reputation). These rights are also protected under Article 6bis[8] of the Berne Convention where under the right to Paternity, author can claim due credit for any of his work.

But the catch here is that Section 57 protects the right of authors only when it is established that the alteration or modification of the work is prejudicial to author’s reputation and also there is some relation between the original and recreated work. This view has been reiterated by the court in Manu Bhandari v. Kala Vikas Pictures.[9]

From Amarnath Sehgal’s case[10] the Indian Copyright legislation has moved further on broadening the scope of artist’s reputation and interest and the outcome of present matter will also add up to it.

With respect to integrity rights, I am of opinion that on comparing and reading the lyrics of original and recreated version there is nothing dishonorable or prejudicial which can damage the reputation of the original authors. If this is treated as violation of moral rights, it would send a signal of warning for music industry and the trend of making remixes. As nowadays with increase in number of remixes or recreated versions, this issue of moral right will be one of the major debates in India and even though it remains unsettled, it is essential to protect the interest of original writers so that their music does not wither away with the modern remixes.

Author: Prashant Arya, Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.


[1]Universal Declaration of Human Rights, Article 27(2)

[2]Amarnath Sehgal v. Union of India,2005 (30) PTC 253

[3] https://indiankanoon.org/doc/1710491/

[4] https://indiankanoon.org/doc/1703533/

[5] https://indiankanoon.org/doc/262036/

[6] https://indiankanoon.org/doc/588136/

[7]Supra, fn.4

[8] Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.

[9]Manu Bhandari v. Kala Vikas Pictures,AIR 1987 Del 13

[10]Supra, fn.3