By Ankita Aseri

Advertising plays a significant role in today’s world due to the availability of wide range of products. To attract the customers different advertising techniques are used. One such form is Comparative Advertising i.e. advertising of product by comparing it to its competitors’ goods. It may highlight similarities or differences or set the competitor good as a benchmark. The hurdle of Comparative Advertising is the thin line difference between fair or unfair trade practice which would attract legal consequences. Comparative Advertising in India is governed by Section 29(8)[i] and Section 31(1)[ii] of Trademarks Act, 1999. Section 36A of Monopolies and Restrictive Trade Practices Act, 1969[iii] (MRTP) lists down several unfair trade practices which was later repealed by Section 66 of Competition Act, 2000[iv] which is parimateriato MRTP Act. A regulatory body, Advertising Standards Council of India (ASCI)was established to provide guidelines for ethical advertising and to deal with complaints against false and misleading advertisements. Puffery and denigration can be classified as two forms of Comparative Advertising.

The essentials of honest practices, dilution, disparagement are not clearly defined in the Trademark Act. The Court while relying on the case of De Beers[v]in Reckitt & Colman f India Ltd. v. M.P. Ramchandram[vi] held that the producer can declare his goods to be the best or even better than his competitors but while doing so he cannot make any statement which might lead to disparagement of his competitor’s good. Disparagement can be defined as an advertisement which undervalue, brings discredit or dishonour upon the competitor’s goods.[vii]In the disp[viii]ute between AMUL and Hindustan Unilever Limited, it was observed that Amul’s impugned advertisement was disparaging to an entire class of products, i.e. Amul’s ‘real ice-cream’ against ‘frozen desserts’ which were depicted as allegedly harmful to consumers due to the presence of ‘vanaspati/vanaspatitel’.[ix]In the recent controversy of Patanjaliwhich stated that the soaps ‘Lifejoy’, ‘Tears’ and ‘Dhitol’ are ‘chemical based’, and impliedly Patanjali’s soaps are not and these assertions might deceive or potentially deceive customers who might give an impression that all soaps with any ‘chemicals’ are harmful, thereby influencing to buy Patanjali’s soaps which by alleged comparison is not “chemical based”.[x]Therefore, Delhi High Court barred the advertisement of Patanjali soap. In the recent judgement of Procter & Gamble Home Products Pvt. Ltd. v. Hindustan Unilever Ltd., the Court held that Comparative Advertising per se does not amount to disparagement and the fetters placed by ASCI are that the consumers should not be mislead and the advertisement must not unfairly denigrate or discredit other products.[xi]

The trend of Comparative Advertising in India is shifting to a more aggressive form i.e. direct Comparative Advertising where a product is directly compared to its competitor by taking the name of competitor. The latest occurrence of direct Comparative Advertising is the advertisement of Samsung mobile that mocks Apple user.[xii] The advertisement is titled as ‘Growing Up’ where an Apple fan finally shifts to Samsung Galaxy 8 after using iPhone from 2007 to 2017. Another incident was the advertisement of Bajaj Auto where it mocks Royal Enfield for riding an ‘Elephant’ and pokes fun by stating ‘Haathi Mat Palo’.[xiii] These occurrences demand stronger laws to prevent disparagement of the brands/products. ASCI is a non government body and it only creates psychological pressure on companies since the decisions are not legally binding. There is no specific legislative mechanism regulating Comparative Advertising in India. Therefore, the interpretations given by the Courts need to be followed while adjudicating matters. Though the Court usually rule in favour of liberty to advertise but they do not hesitate in granting injunctions and imposing damages against the infringers. The status of Comparative Advertising is more liberal in foreign countries like U.K. and USA where the producers are not allowed to make superlative claims about their products without providing any evidence. Similar trend can be adapted in India. If the claim made by a party with respect to its competitor’s product is true, it should be allowed as it will provide consumers with a rationale to choose a better product and it will promote healthy trade practice as the competitor will improve the quality of its goods and will not resort to unfair and misleading means to advertise its product.

[i]§ 29(8), Trademarks Act, 1999.

[ii]§ 31(1), Trademarks Act, 1999.

[iii]§ 36A of Monopolies and Restrictive Trade Practices Act, 1969.

[iv]§ 66 of Competition Act, 2000.

[v]De Beers Abrasive Products Ltd. v. International General Electric Co. of New York Ltd., 1975 (2) All ER 599.

[vi]Reckitt & Colman f India Ltd. v. M.P. Ramchandram, 1999 PTC (19) 741.

[vii]Pepsi Co. v. Hindustan Coca Cola Ltd., 2001 (21) PTC 722.


[ix]Hindustan Unilever Ltd. v. Gujarat Co-Operative Milk Marketing Federation Ltd., 2017 SCC OnLineBom 2572.

[x]RasulBailay, Delhi High Court stops Patanjali soap advertisement, Economic Times (Sept. 08, 2017; 10:40 AM,),

[xi]Procter & Gamble Home Products Pvt. Ltd. v. Hindustan Unilever Ltd.,(2017) 238 DLT 585.

[xii]Tom Warren, Samsung returns to mock iPhone X buyers, The Verge (Nov. 6, 2017; 3:46 AM),

[xiii]DipayanDutta, Bajaj makes fun of Royal Enfield, Financial Express (Aug. 14, 2017; 12:53 PM),


Are Copyright protected on Instagram & Facebook

By Aman Tolwani


21st century, the age of digitisation when everything around us is in digital mode, a well written thought by a renowned author fits this scenario, ”today we’re trying soo hard to capture each and every moment, that we are actually forgetting how to live every moment” we’re posting our whole life on social media, as well as life of others which in turn raises issues, which are not allowed by the law but is being allowed by tricky terms and conditions, which allow these social platforms to use our or someone else original work to be used by them, as they have acquired “non-exclusive transferable, sub-licensable, royalty-free, worldwide license” rights meaning thereby, for what you could have easily earned money now you are giving it for free, but at least someone is earning commercial gains.

Before going any further into the topic let’s have brief idea what copyright is all about, Copyright is a legal right that seeks to protect original works of authorship, such as books, music, film, video and art. Generally, copyright protects original expressions such as words or images. It does not protect facts and ideas, although it may protect the original words or images used to describe an idea.[i]

The copyright policies on Instagram and Facebook are such that, they can be changed as to whenever they deemed it fit, situation to situation, issues are raised as to why their policy is not permanent, for each new issue new policy is being introduced. Instagram can make money from advertisers that want to use someone’s face or pictures on any advertising (TV, web, magazines, newspapers, etc.) and never pay a penny to them!  Even worse, if someone is under 18 (meaning thereby that they don’t have the legal capacity to enter into a contract) yet they are making a contractual agreement that they have asked their parents or guardians permission to agree to the Instagram terms.  This not only is a idiotic position, but defies logic as well, Instagram acknowledges that minors can’t enter into a contract, but nevertheless for the under 18, force them to agree by (unenforceable) contract that they have permission anyway.  Go figure!

Social media, like Facebook, Twitter, and Instagram, allow online posting of material that may be copyrighted. The social media site does not own the work that has been posted on their site; the copyright is still retained by the owner. But by agreeing to post works on the site, you sign an agreement that gives the site a license to use the work. In these cases, the license is given without payment.[ii]​​

This research article deals with how copyright is being violated and how it can come how be protected, or at least the know how of what people have been giving their rights for.

In today’s global village or shall I say interconnected world, most of us are to some extent authors and publishers, and the apparent transience of material that appears briefly on Instagram or on Facebook and then fades from memory (just because you deleted the content or limit it’s visibility) is actually an illusion. Anything that makes it to the internet, whether it’s a web site, a photograph or sound file, or a one-line email, takes on a life of its own, now imagine since how long you have been using internet and how much part of your life is blindly devoted to internet. Even when you or the originator (if someone else) deletes it, the chances are that there’s a copy of it somewhere out there in the cloud. In principle, someone still owns it.

Policy as available and Copyright Act.

As it’s well known fact that Facebook and Instagram are widely used social media of this generation. An average person will spend more than five years of their lives on social media, according to a study by influencer marketing agency Mediakix.[iii] Mediakix calculated average time spent per day on YouTube (40 minutes), Facebook (35), Snapchat (25), Instagram (15) and Twitter (one) and projected those figures out over a lifetime, arriving at a total of five years and four months.[iv]

Let’s take a look what our favourite social media site got us agreeing to, a better look at Facebook terms & conditions, which we all tend to overlook in order to chat with someone first or to post some content, herein as follows;

For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it.[v]

Now let’s see, what are the rights of copyright holder in India:

  • Right of Reproduction: This right authorizes the person having such copyright to make copies of the protected work in any form.[vi]
  • Right to Distribute: The person who owns the copyright owner may distribute his work in any manner he deems fit. The owner is also entitled to transfer the whole or some rights in favor of any other person while retaining others.[vii]
  • Right to make Derivative Works: The copyright has the right to use his work in various ways, for instance making adaptations or translations.[viii]
  • Right of Paternity: The Right of Paternity or Attribution gives the copyright owner a right to claim authorship of the work.[ix]

As the copyright owner, you have certain rights under the law to stop others from copying or distributing your work, or creating new works based on your work. Copyright infringement generally occurs when a person engages in one of these activities without the copyright owner’s permission.[x]

What this basically means is, the copyright holder has an exclusive right over the distribution of his copyrighted material and that if in any case someone infringes such a right he/she shall be held liable for infringement of such copyrighted material. Herein above the content that you are uploading on Facebook even if a copyrighted material but with an exception, you are giving facebook “non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License)”[xi]. Meaning thereby facebook has the permission and rights to use your copyrighted material in any manner and you can’t do a thing about it, because you have already agreed to it’s terms & conditions. That’s not just it, the story doesn’t end here, the material whatever you have posted online once even if you delete it after only a minute, it’ll always be available on Facebook on it’s own recycle bin, which they of course don’t show as of now.

“The essence of the Facebook service is to facilitate on your behalf the sharing of the content you choose to share, subject to the control it allows you over where and to whom it is shared. That licence agreement is what Facebook deems necessary to enable it to provide that service. And it is an agreement: if you’re using the service, you’ve agreed to it, even if you haven’t read it. That’s how contractual obligation works.”[xii]

When it comes to possible infringement of IPR  in post made by users of Facebook, the onus is clearly on them and not on Facebook.

“Anyone who uses Facebook owns and controls the content and information they post, as stated in our terms. They control how that content and information is shared. That is our policy, and it always has been.”[xiii]

Let’s have a look on the terms & conditions framed by Instagram;

Instagram does not claim ownership of any Content that you post on or through the Service. Instead, you hereby grant to Instagram a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to use the Content that you post on or through the Service.[xiv]

Herein as well Instagram even though not owing the content that we are posting on their application or via their service, but they still have or if I may say, I grant Instagram a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to use the Content that I post on or through the Service. According to them we cannot violate copyright laws and we shall not post any such content. But in reality these services themselves violates the very basic rights of copyright holder, of distribution, sub-licensable rights. That in plain words signifies that even if they are the one who violates your rights as a copyright holder, you actually cannot sue them for such a violation.

Strictly speaking, when users upload an image to Instagram, they do not forfeit their copyright. Instead, Instagram’s Terms of Use operate so as to give the social media platform a non-exclusive, fully paid and royalty-free transferable, sub-licence to use the content. This means that Instagram can license images from the site to others including other Instagram users who can ‘Regram’ images (repost photos) from accounts that they follow without infringing copyright.[xv]

 Similarly, Instagram’s Terms of Use enable the company to select images that users have posted on the site and sell them to a third party marketing company, even if at a later stage issue arises the person whose picture was posted will go after the marketing company and marketing company is going to go after Instagram but nothing can come out of it, as the usear have already provided non-exclusive, fully paid, royalty free transferable rights to Instagram, ‘seems like a close ended loop’. However, the company would engage in such behaviour as it would alienate users.[xvi]

When someone uploads a photograph to Instagram, they retain the copyright to the image. Instagram, however, does gain a non-exclusive, fully paid and royalty-free transferable, sub-licence to use the content uploaded to its platform, but are unlikely to license a posters’ image for profit as doing so would put users offside. This means that Instagram can use the content as it chooses and can also licence the content to third parties.

Recent Policy changes

With Instagram and Facebook one thing is guaranteed, that what terms and conditions you read today you might not find those same when you log in the next time. It’s not the first time that Facebook and Instagram have changed their terms & conditions overnight, even in their policy another thing is mentioned that, they can make changes in their terms & conditions or policies anytime they deem fit, they will just notify users once about changing their terms & conditions which you have to accept, and users do so without even reading what it’s written in their service contract, basically it’s a service which users must read but tend to ignore in order to reach their home page as fast as possible.

Facebook and Instagram both recently have launched a great feature of ‘Live’ wherein you can go ‘live’, as in ‘on air’ from wherever in the world you are sitting whatever you might be doing. It does sounds a good feature probably people might be even getting ideas when to go ‘Live’ during reading this as well, but this great tool of Instagram and Facebook might pose a great threat to IPR holders.

Unlike other media sharing sites like YouTube and SoundCloud, Facebook did not seem to have a mechanism for detecting copyrighted material inside of a streaming video, because of the ‘liveliness’ of the live video.[xvii]

Take for instance Person A is sitting in a stadium watching a cricket match Virat Kohli playing his 200 International Match, now this person A has started ‘Live streaming’ to post the content on his wall, that he’s live watching cricket match, that means for free of cost he’s broadcasting that cricket match because of that great feature, and the companies like Star sports, Ten Sports they are paying God knows how much money to broadcast this match on their channel so that people will watch it on their channel. Even if the feature is great in it’s every aspect but it’s causing infringement of copyright holders. With the rapid technological progress and popularity of this ‘Live’ feature of Facebook, the developers are clearly having issues with the protection of intellectual property online, especially when it comes to broadcasting live sports events or an artistic produc[xviii]tion like a concert or movie.[xix]

In a recent verdict, (The Football Association Premier League vs. John Doe), the Supreme Court of Israel held that the owner of a site which offers the viewing of sporting events through ‘streaming’ technology has infringed copyright laws (i.e. Facebook & Instagram in our case). The main question that came in front of the court was, whether ‘streaming’ technology contains a transmission of information, as per the requirements of the general copyright law. The answer which came forth was a bit complex, because the transmission of information was defined as information leaving location A and arriving at location B. In case of live streaming, apparently there is no transfer of information. Consequently, the court ruled that streaming is actually much more similar to the basic infringement of ‘broadcasting’ allowing the viewers to view a production without having a copy of the production stay in the possession of the viewers at the end; this is quite different from illegal copying or downloading of infringing material.[xx]


Facebook recently introduced a new feature called Rights Manager, basically it aims at protecting the rights of person holding their copyright, although it says to keep a check on ‘live streaming’ as well, but let’s wait till some other new feature comes up. Rights Manager is for publishers that publish content on Facebook, and also those that don’t publish on Facebook, but want to protect their content.[xxi]

All things considered, to handle the copyright issue Facebook has as of late actualized ‘Image and audio matching’ frameworks that assistance hail copies of existing substance. Be that as it may, this upgrade brings up an intriguing issue, as an artist now you need to transfer your unique artistic work and everything on Facebook first, since the tech requires a current substance to coordinate and check a copy keeping in mind the end goal to report encroachment and ensuing takedown. This can be an understood compulsion on the artist and app makers to work together or share everything of their manifestations just to get copyright assurance. The problem still remains, and with the appearance of new specialists in video gushing, securing licensed creative rights online will without a doubt be a critical issue in coming days.

Still the researcher firm belief is that, the old ways are still best in order to protect your copyright from being infringed. “Don’t upload everything online” after all our safety is in our hands only.

With it’s the researcher concludes this research, that the content we post on Instagram and Facebook although being a copyrighted content we share our rights with Facebook & Instagram, even though the policy, terms & conditions are ambiguous.

So either don’t upload your content or deal with the

[i] Facebook Rights Manager, Introduction (November 3, 2017)

[ii] Jean Murray, The Balance on Copyright and Social Media Issues (July 07, 2016),

[iii] David Cohen, Adweek on How Much Time Will the Average Person Spend on Social Media During Their Life? (Infographic), (March 22, 2017),

[iv] David Cohen, Adweek on How Much Time Will the Average Person Spend on Social Media During Their Life? (Infographic), (March 22, 2017),


[v] Facebook, Statement of Rights and Responsibilities, (November 3, 2017)

[vi] Sudhi Ranjan Bagri, iPleader on what are the rights of copyright owner, (April 11, 2016)

[vii] Sudhi Ranjan Bagri, iPleader on what are the rights of copyright owner, (April 11, 2016)

[viii] Sudhi Ranjan Bagri, iPleader on what are the rights of copyright owner, (April 11, 2016)

[ix] Sudhi Ranjan Bagri, iPleader on what are the rights of copyright owner, (April 11, 2016)

[x] Facebook, Copyright on what rights do I have as a copyright owner, (November 3, 2017),

[xi] Supra., at p. 4

[xii] David Harley, Copyright and Social Media, (December 8, 2015), 02:46 PM,

[xiii] David Harley, Copyright and Social Media, (December 8, 2015), 02:46 PM,

[xiv] Instagram, Instagram help center on Terms of use (January 19, 2013),

[xv] Legalvision, Who owns the Copyright in an Instagram Image, (April 6, 2017),

[xvi] Legalvision, Who owns the Copyright in an Instagram Image, (April 6, 2017),

[xvii] Shyikh Mahdi, Daily Observer on Facebook Live: The new Frontier of Copyright Protection, (October 26, 2016),


[xix] Shyikh Mahdi, Daily Observer on Facebook Live: The new Frontier of Copyright Protection, (October 26, 2016),

[xx] Shyikh Mahdi, Daily Observer on Facebook Live: The new Frontier of Copyright Protection, (October 26, 2016),

[xxi] Ibid., pp1

Case comment on Hindustan Unilever Ltd (HUL) v. Gujarat Co-operative Milk Marketing Federation Ltd

By Sadhana Madhavan

The Intellectual Property Rights protect the creators of intellectual property like patents, trademarks, designs, geographical indication, copyrights and industrial designs. This gives the creator a monopoly over the product for a certain period.

Trademark protects brands or marks and prohibit others from duplicating or replicating the owner’s mark. Trademark has been defined under Section 2(1)(zb) of the Trademarks Act, 1999 as a “mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from others and may include shape of goods, their packaging and combination of colors”. In short, trademark is helpful in creating a distinction between products.

But trademark laws are infringed because of comparative advertisements in certain cases. Comparative advertisements, as the name suggests literally means comparing one’s product/ service with another’s in the same field. The comparison usually focuses on the price, durability and quality of the two products. This helps in making the product popular and catches the attention of the consumers which results in increased profits. Question arises on how this results in trademark infringement? Many a times, we have come across a lot of advertisements where two products are being compared and one product is blurred to prevent the consumers from recognizing the product. It is generally noticeable that when one product is compared with another, the consumers immediately recognize the two different products (which are generally trademarked).[i] If a comparative advertisement confuses the consumer, it results in trademark infringement. The courts have this as the rationale when judging a case.

In this case, Hindustan Unilever Ltd (HUL), filed a suit against Gujarat Co-operative Milk Marketing Federation Ltd alleging trademark infringement. HUL accused Amul (which is a product of the defendants) of disparaging frozen desserts in their advertisement. Their contention was that the Kwality Walls (the product of the petitioner) was disparaged in this case as the petitioner had tried to imply that they were made with Vanaspati oil or hydrogenated oil which is bad for health. The Bombay High Court granted an injunction HUL’s plea for an injunction against the Amul Ads.[ii]


Settled Law in India:

Section 29(8) of The Trademarks Act, 1999 enunciates the situations when the use of a trademark in advertising can constitute infringement.[iii]Section 30(1) of the Trademarks Act, 1999 clearly states that if it a) is in accordance with the honest practices in industrial or commercial matters, and b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark, then it is not infringement. But it is considered trademark infringement if the advertisement falls under any of the categories mentioned under Section 29 (8) of the Act.[iv] The Trademarks Act also protects well known unregistered trademark so as to prevent the action of passing off.

The other act that prohibits comparative representation is mentioned in Section 36A(1)(x) of Monopoly and Restrictive Trade Practices Act (MRTP). It prevents the practice of making any statement, whether orally or in writing or by visible representation that gives false or misleading facts disparaging the goods, services or trade of another person.

Global Practices on Comparative Advertisements:

  1. Council Directive of 10 September 1984[v]that deals with relating to the approximation of the laws, regulations and administrative provisions of the Member States concerning misleading advertising, in particular, Section 3(a)[vi] of the directive permits comparative advertising if it doesn’t deceive anyone or it isn’t likely to deceive the consumers[vii]. This very clearly indicates that comparative advertising cannot be permitted if it discredits the trade mark or trade name of the competitor.[viii] The situation in UK regarding comparative advertising with reference to trademark infringement has become clear after the O2 case[ix]. The ECJ had taken the traditional stand and held thatwhere the comparative advertisement aimed at promoting the goods and services of the advertiser and used the competitor’s trademarks, it could be prevented by the Trade Marks Directive, if it met the relevant criteria.[x]
  2. Under U.S. law, use of a competitor’s trademark in accurate and non-deceptive comparative advertising is legal. This does not constitute trademark infringement. Truthful comparative advertisements are considered to be informational for consumers and beneficial to competition, provided that the competitor’s mark is accurately depicted.[xi] In the case of infringement, the affected party can approach the Court through Lanham Act, 15 U.S.C. §1125(a). The Civil Courts have also held that while usage of competitors’ trademark is allowed, they are not allowed to modify or show the trademark in a negative light.[xii]

Judicial Pronouncements in India:

Previously, this concept has been discussed by the Courts in various cases. In Reckitt & Colman of India Ltd. v. M.P. Ramachandran and Anr[xiii], the plaintiff had filed a suit against the defendants for broadcasting an Ad claiming that their blue whitener, Ujala and in the process disparaging the plaintiff’s blue whitener named Robin Blue by showing a bottle similar to that of Robin Blue and also mentioned the price as Rs.10. During that time, Robin Blue was the only whitener available for that price. The Court based its decision on the sole mention of the price and held that the defendants intentionally disparaged the petitioner’s product and issued an order restraining the advertisement.

In Pepsi Co. Inc. and Ors. v.Hindustan Coca Cola Ltd. and Anr[xiv], the court held that generic disparagement of a product  is objectionable even if the name of the product is not mentioned.


In the instant case, the Court based its judgement not on the fact that the word ‘Vanaspati’ was used but on the whole advertisement. The advertisement seen as a whole seems to indicate that the frozen desserts are unhealthy and bad for children. They are impure and inferior to ice creams. This was the reasoning given by Justice Kathawalla.[xv]

This seems to be a reasonable observation as the impugned TVCs (one contains the word Vanaspati and the other contains the word Vanaspati Tel), clearly indicates that frozen desserts use Vanaspati oil which is an incorrect statement in itself. Under FSS regulations, both ice cream and frozen dessert are classified as dairy based desserts. The composition of icecreams include milk/milk solids and milk fat or vegetable fat. As per Indian Regulations, the products that contain nondairy fat come under the category of frozen desserts. So, the difference between the two is that icecreams must have over 10 per cent milk fat, whereas frozen desserts musthave over 10 per cent total fat (i.e. milk fat and/or edible vegetable oil). Restof the ingredients are the same.[xvi]

Coming to the difference between Vanaspati oil[xvii] and Vegetable oil[xviii], it is very important to know that while Vanaspati has been perceived bad for health, Vegetable oils are not considered bad for health. Edible vegetable oil contains lower saturated fat and doesnot contain any trans-fat or cholesterol, whereas Vanaspati contains higher saturated fat and trans-fat which is bad for health and increases the risk of coronary heart disease.

The court has also discussed the law laid down in (i) Godrej Sara Lee Ltd vs ReckittBenkiser (I) Ltd (ii) Dabur India Ltd vs Colgate Palmolive (iii) Annamalayar Agencies vs VVS & Sons Pvt Ltd. & Ors (iv) Godrej Consumer Products Limited vs Initiative Media Advertising (v) Eureka Forbes Ltd vs Pentair Water India. All the aforesaid cases clearly reiterate on the point that generic disparagement is an offence.[xix]

In Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd, the Court laid down five principlesregarding comparative advertisement. The fourth principle clearly states that while a person can state that his goods are best, he cannot state that his competitors’ goods are bad which results in slander.[xx] In the instant case, it is clear that GCMMF while declaring Amul as the best ice cream has also told that frozen desserts are bad.

The defendants also failed to prove that the petitioners use Vanaspati oil to make their frozen desserts and have solely relied on a single manufacture (which goes by the name ‘Heritage’) which uses Vanaspati to make their frozen desserts.[xxi]

Based on the above points discussed, it is clear that the decision or reasoning of the Court is right as generic disparagement or slander of goods of the product category of Diary based Desserts referred to as ‘frozen desserts’ has occurred here. The petitioners own about 51.3% of the market share in the area of frozen desserts. They are considered to be one of the top contenders in this field. The advertisement though did not mention the name of the product, it clearly defames the product that they manufacture.


The judgement given by the Court in this case is reasonable. In the past also the judiciary has played an active role in India with respect to trademark infringement because of comparative advertisements.[xxii] Comparative advertisements are beneficial to the consumers as it gives them a fair idea and creates awareness. But there should be some regulatory authority that checks if the comparative advertisements are accurate and true rather than allowing the advertisers to call their products as the best.

The laws followed in USA are no doubt progressive. They allow comparative advertisements if the claims are true and accurate. This is done to ensure that the consumers get a clear idea and they can base their opinions on honest claims rather than on false claims. But the question that arises here is if the blind adoption of USA laws help Indian society.

In India, chances are high that the advertisers will openly start using the trademarks of their rivals without proper evidences or base to their accusations. This will in turn result in a lot of defamatory cases and trademark infringement which will be a burden on the judiciary.

The legislature should constitute a proper authority to check and regularize the Comparative Advertisements and provide adequate checks so that trademark infringement is prevented and the consumers’ rights are protected at the same time.

[i] (24 September 2017)

[ii] (25 September 2017)

[iii] (26 September 2017)

[iv] ibid

[v] (84/450/EEC)

[vi] Article 3: In determining whether advertising is misleading, account shall be taken of all its features, and in particular of any information it contains concerning: (a) the characteristics of goods or services, such as their availability, nature, execution, composition, method and date of manufacture or provision, fitness for purpose, uses, quantity, specification, geographical or commercial origin or the results to be expected from their use, or the results and material features of tests or checks carried out on the goods or services;

[vii] Article 2(2) of the Council Directive (84/450/EEC)

[viii] (23 September 2017)

[ix]O2 Holdings and O2 (UK) Limited (together, O2) v Hutchison 3G UK Limited (H3G)

[x] (25 September 2017)


[xii]Deere & Co. v. MTD Prods, Inc., 41 F.3d 39 (2nd Cir. 1994)

[xiii] 1999 PTC (19) 741

[xiv] 2003 (27) PTC 305 (Del)(DB)

[xv] (25 September 2017)

[xvi] (22 September 2017)

[xvii]Hydrogenated vegetable oils: 1. Vanaspati means any refined edible vegetable oil or oils, subjected to a process of hydrogenation in any form. It shall be prepared by hydrogenation from groundnut oil, cottonseed oil and sesame oil or mixtures thereof or any other harmless vegetable oils allowed by the Government for the purpose.

Refined sal seed fat, if used, shall not be more than 10 per cent of the total oil mix….” (emphasis supplied)

[xviii] “Vegetable oils” means oils produced from oilcakes or oilseeds or oil bearing materials of plant origin and containing glycerides.

[xix] Even if there is no direct reference to the product of the plaintiff and only a reference is made to the entire class of products in its generic sense, even in those circumstances, disparagement is possible.

[xx]4. He, however, cannot while saying his goods are better than his competitors’, say that his competitors’ goods are bad. If he says so, he really slanders the goods of his competitors. In other words he defames his competitors and their goods, which is not permissible.

[xxi] (24 September 2017)

[xxii]Dabur India Ltd. v. Emami Ltd., IA No. 2124/2004 in CS (OS) 453 of 2004; Reckitt & Colman of India Ltd. v. M.P. Ramachandran and Anr., 1999 PTC (19) 741; Pepsi Co. Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr., 2003 (27) PTC 305 (Del)(DB);Wander Ltd. and Anr. v. Antox India P. Ltd., 1990, Supp. SCC 727



All for a Snapshot – Analysing the Creativity Requirement for Photographs under Copyright Laws

                               By Chandni Ghatak

The primary objective behind the formation of the copyright regime worldwide, was two-fold in nature. First, it was to essentially protect and grant exclusive rights to the one who made such work possible. Second and perhaps a subtler aim in this regard was to identify and reward the exercise of creative skill used by the creator/author in the making of such protected work. In this essay, the author shall draw attention to the second element of the two-fold objective as described, considering photographs. Photography, as a skill has witnessed considerable amount of progress, be it in the way it is treated as an art or in the immense value it holds in creative fields of fashion and film making, amidst many more.

It arguably has travelled beyond the simple exercise of capturing moments to becoming a major contributor in the artistic appeasement the aforementioned industries thrive upon. Copyright protection for this bunch of work then becomes even more necessary, however, the element of creativity which copyright protection aims to protect in most jurisdictions witnesses a bare minimum standard in the case of photographs. The forthcoming parts of this essay shall lay down the position of law in this regard in India & other jurisdictions, while moving onto more contemporary issues arising in this discussion.

Where do I see the Creativity – Exploring Jurisdictions:

As pointed out earlier, the threshold of creativity appears to be low with respect to photographs. When one analyses the Indian position on this point, we find photographs to be included within the ambit of ‘artistic works’[i]. Upon a bare reading of the Copyright Act, 1957 (India) [Act], one can further infer that for such work to be protected in India, any kind of artistic quality as such is not an essential parameter upon which such protection rests.[ii] Therefore, it appears that even if a person boasting of no particular skill takes a photograph, it may still be protectable under the Indian regime. Does this then in a way, take away the vital element upon which copyright protection is based i.e. rewarding a certain degree of creativity? The author would answer in the affirmative as strangely enough, in the Indian regime if a same object has been photographed by two different individuals, in two different angles/lighting etc., both these individuals have a strong claim for seeking copyright protection due to the labour and skill requirements, upheld largely by Indian Courts.

Comparatively, in USA initially especially with respect to fine arts, if such work exhibited a ‘distinguishable variation’ from other works, thereby showcasing a personal imprint of the author’s persona, such work would be said to possess a certain level of creative merit.[iii] This can be said to have been the opinion echoed in an EU Council directive[iv] which stated that for a photograph to enjoy protection, it must be an intellectual creation indicating the author’s persona. However in the US, this approach changed in light of the judgments rendered in the cases of Feist Publications etc.[v] While this judgment mainly dealt with the case of compilations, it emphasised on the presence of a minimum degree of creativity, in order to claim copyright protection.[vi] However, with the recent question of the famous David Slater’s Monkey Selfie case reaching the Ninth Circuit [vii], pertinent questions of evaluating this question of creativity in light of photographs have re-emerged.

In the United Kingdom, from where majority of India’s copyright jurisprudence is inspired, the sweat of the brow doctrine has been extensively relied on when evaluating whether works deserve copyright protection. In the case of Ladbrooke (Football) Ltd v. William Hill (Football) Ltd[viii]., the Court reiterated the basic principle that so long the work concerned originated from the said author, showcasing a degree of labour, judgment and skill, it would be entitled to copyright protection. Therefore, gauging the significance of the work becomes an immaterial consideration while answering this question of providing copyright protection. This is in fact a position that has evidently found agreement in the Indian context too.

A relevant observation in this regard is that while professional photography in general requires an understanding of lighting, angles etc; to take a perfect shot of a certain location or object, the Indian copyright regime specifically does not concern itself with these factors. For it, so long as the shot taken is original, copyright automatically rests with the author unless an agreement to the contrary prevails.[ix] This as per the author appears as unfair since the acknowledgement of creativity factor as described in the beginning of this essay is lost, when the threshold is kept this basic. In the forthcoming section, the author shall point out certain problems emerging due to the low threshold of creativity maintained with respect to photographs, under the copyright regime.

Click, Click – Where lies the Problem?

The major anomaly that arises with respect to most of the copyright regimes is the fact that photographs are recognised in the wide ambit of artistic work. This is not only an issue of nomenclature, since for instance, the Act includes even painting & sculptures in the same category as a photograph.[x] A sculpture or a painting naturally entails far more labour along with the exercise of creative skill in its production, whereas it can be argued that a photograph is essentially a reproduction of some pre-existing original work.[xi] The flipside to this argument may be that even in such reproduction, there has been an exercise of a certain degree of skill and labour, however regardless of the argument, the ultimate result arising is that of a general overlap of copyrights, that of the photographer and that of the author creating the work being photographed. Another dimension to this problem is that works which evidently lack any modicum of creativity will continue to be granted protection. This simply would open the door for further confusion.

A more recent event, pointed out earlier, is that of the question emerging out of the Monkey Selfie Case. This bizarre case has opened doors for discussion on this issue of determining not only whether the photograph in question has showcased any extent of creativity but also who is the actual creator of this photograph. The issue of revisiting the interpretation of who constitutes an ‘author’ as per US law has naturally come about, considering that if the ruling is made that the monkey was in fact entitled to seek copyright protection, the future of artificial intelligence enabled systems and copyright would become more complicated. Further, on the point of creativity, if the usual sweat of the brow doctrine was to be relied on also by the US in this instance, the outcome would appear as a complete disregard to the element of creativity in such works. However, the problem does not get solved even if the US Court were to rely on the Fiest[xii] ruling, for evaluating the creative skill of an animal is a challenge in itself.

While the author notes that the above instance is one formed out of peculiar circumstances, it only becomes crystal clear that there requires to be a set standard, preferably a higher one in measuring the creative extent of photographs. Otherwise, as is the present case, even a mere scan of a painting etc; would be entitled to an individual copyright.[xiii] This not only removes an incentive to create for the creator of such painting or other work but also defeats the basic premise of copyright law which is to protect original, creative work.


Creativity, as a parameter for granting protection is a necessary evil in any copyright regime. The author is of such opinion, due to the fact as illustrated above that in case a creative calculation is not made while determining whether a work deserves copyright protection, the premise on which such protection has been founded upon shall stumble. This is not only due to the utilitarian argument of encouraging the progress of creative industries such as that of photography itself but also avoiding frivolous claims being made in this regard. If the threshold is kept at such a low degree as it is presently in several jurisdictions including India, it makes way for a flood gate of trivial litigation to arise. Granted that considering there exists an unaware public who may accidentally create something require protection, the standard for evaluating whether or not a work may be truly deserving should not be lowered. While it is undeniable that determining a standard of creativity is one which equips a panel or bench immense discretion, what it majorly would do is assist in the process of making the law more accessible and efficacious to those who deserve it. Creative work, as we know is one which emerges not only as a result of a successful combination of skill and labour but also that of a talent, rare amongst the general population anywhere. As the law of intellectual property is one dealing with individual rights, this sense of individuality translating into creative expression cannot then stand ignored.




[i] § 2(c)(i), The Copyright Act, 1957 (India).

[ii] Id.

[iii] Bleistein v. Donaldson Lithographing Co.,188 U.S. 239 (USA).

[iv] EU Council Directive 93/98/EEC (1993).

[v] 499 U.S. 340, 342 (1991) (USA).

[vi] Analysis of Doctrines: ‘Sweat of the Brow’ & ‘Modicum of Creativity’ vis-à-vis Originality in Copyright Law, India law, available at ( Aug 17, 2017 at 20:33 PM).

[vii] Kieren McCarthy, Hey, remember that Monkey Selfie copyright drama a few years ago? Get this- It’s just hit the US Appeals Courts, available at ( Aug 17, 2017 at 21:08 PM).


[viii] [1964] 1 W.L.R. 273 (UK).

[ix] Copyright Protection for Photographers in India, Selvam & Selvam, available at ( Aug 17, 2017 at 21:19 PM).

[x] § 2(c), supra note 1.

[xi] Serge Planteureux, Copy, Copy Copyright, L’oeil De La Photographie, available at ( Aug 17, 2017 at 20:42 PM).

[xii] Supra note 4.

[xiii] Serge, supra note 9.

Image source: Photo available at


Trademark Rules 2017 New Trademark and other changes


                                                                                                                        By Aman Tolwani


The right to trademark is a common law right. An owner of trademark can always protect such right independent of any statutory provision.[i]

In India the first enactment on the subject of trademark was the Trademarks Act, 1940 (Act V of 1940). The courts have however always kept in mind the independent nature of rights in trademark. [ii]  In Consolidated food corporation v Branden and Co private Ltd, the Bombay High Court has held:[iii] “a trader acquires a right of property in distinctive mark merely by using it upon or in connection with his good irrespective of the length of such user and the extent of his trade”.[iv]

In the context of globalisation, the 1999 Act was enacted and came to be known as the Trademark Act, 1999. After almost 18 years on 6th March 2017 the new trademark rules were introduced, the changes were long overdue. The new Rules have made the procedure for the prosecution of the Trademark in India a little bit less confusing. There is a special focus in the Rules to make Indian Trademark Office, a paperless Office.[v] Before the introduction of 2017 rules the method of filing of a Trademark was a bit hasty procedure, tons of forms were to be filed before a trademark is to be registered. With the introduction of new rules the number of forms which are to be filed are considerably reduced from 74 to 08. That means the process became less time consuming. The move to reduce Forms will certainly make the process for a laymen little bit less confusing. The forms available for the online filing are very much interactive in nature and a person with limited knowledge can certainly file an application for the registration of trademark without any help of a professional. [vi]

Salient feature of the 2017 Rules

The introduction of new rules of 2017 brought some of the major changes in the Trademarks Act, the major changes are discussed below:

Non-Conventional Mark (Sound Mark):

The introduction of 2017 Trade Mark Rules gave a sigh of relief to many users who have been waiting to get that sound mark registered under the Trademarks Act. There is a reason why Sound mark was not registered earlier as a trademark because they does not fall under the catogery of conventional mark. Trademark has been defined under section 2 (1)(zb) of the Act, as any mark which is distinctive, i.e. such as capable of distinguishing goods and services of one undertaking from another, and capable of being represented graphically. The definition thus, lays down two broad criteria that a mark has to satisfy in order to become a trademark. The definition of mark is an inclusive one, and therefore non-conventional marks can very well fit into the ambit of trademark if they satisfy the criteria of both distinctiveness and graphical representability.[vii]

The second problem is the graphical representability of the mark to be registered, especially in case of sound mark. Before the addition of sound mark as a trademark a few sound marks were still awarded as a registered trademark like “The MGM Lion” sound, “the 20th Centuary Fox FanFare” sound among some a few notables ones were denied their sound mark registration as well like Harley Davidson sound “Potato-Potato-Potato”.

For a sound mark to get registered it shall be uniquely identify the commercial origin of the product or service.  Sounds marks were accepted in India under Rules of 2002 but same were not specifically mentioned anywhere under the Rules. The new Rules of 2017, have now specifically mentioned the procedure for filing a sound mark Under Rule 26 (5) of 2017 Rules.[viii]  The new Rules have an express provision for filing applications of sound marks which must be submitted in an MP3 format, not exceeding 30 seconds in length. This is also to be accompanied with a graphical representation of the sound notations. In this regard, the definition of “graphical representation” has also been revised to include representation in digitized form.

Counterstatement filed in response to Notice of Opposition available online obviates its official service requirement:

The Opposition proceeding under the Rules 50 to 52 of 2002, had provisions identified with the expansion of time however the same are presently discarded, under the new Rules of 2017. There are no provisions identified with the augmentation of time for recording evidences in the Opposition proceedings consequently if a gathering to the proceeding does not record evidences or neglected to insinuate the Registrar that he wishes to depend on the reports as of now documented, inside stipulated day and age gave under the Rules 45 to 47 of new Rules of 2017, at that point it will be regarded that he has surrendered his application/Opposition.

The prerequisite of authority administration of the Notice of Opposition (NOP) by the Trade Marks Office now stands explicitly abstained from in those situations where a Counter explanation has just been documented by the candidate in light of the NOP as accessible on the authority online records. This blocks the excess of administration of the NOP in this way facilitating opposition proceedings in such cases.

Limitation as to seeking adjournments:

The 2017 Rules have are done with the provision of extensions in relating to evidences in support of opposition/application for the speedy disposal of opposition proceedings. It a special focus on the speedy redressal of disputes among the parties to a dispute for trademark, hence under the new Rules (rule 50 of 2017), it is mentioned that, no party shall be given more than two adjournment and each adjournment will not be more than thirty days. This in turn will help in speedy disposal of the oppositions which usually had a lengthy and time consuming process.

Removal of fee for additional classes while filing application recordal of assignment in a multiclass application:

As per new Rules(2017), Official fee for filing recordal of assignment in a multi class application will bear fee for only one class and fee for additional class which was required to be paid under old Rules of 2002 is now not applicable.

For example, if a trademark is registered under 5 classes through a multiclass application and same is assigned by the original owner. The Assignee in this case requires filing application for the recordal of assignment to enter his name as the owner of the trademark in Register. As per new Rules of 2017, the Assignee has to pay a fee of Rupees 10000 only and not for additional classes as happened earlier under Rules of 2002.


The Registered proprietors (Trademark users) can now file renewal requests within one year before the date of expiration as opposed to six months which was the earlier position (2002 Rules). As per the earlier Rules of 2002, a registered trademark becomes due for renewal six months before the expiry of the trademark. Now under new Rules of 2017, a trademark becomes due for renewal before one year from the date of expiry of renewal. Now there is an opportunity of one year to file a renewal for the registered trademark without any surcharges. Therefore as per new Rules, a renewal can be filed for a trademark from the beginning of 10th year of registration of a trademark and will be valid till the expiration of 10th year. Although the fee for the renewal of Trademark is also doubled, i.e. under the new Rules fee has increased subsequently from Rupees 5000 per class to Rupees 10000 per class.

Procedure for recognition of a well-known trademark:

The provisions for determining and declaring a trademark as a “well-known” have been incorporated in the new Rules (2017). More particularly, a proprietor can now submit a request to the Trademarks Office along with a statement of case and relevant evidence, which support the claim of the mark’s well-known status. The official fee for such a request has been fixed at Rupees 100,000 (approx. USD 1500). Under well known mark such marks are included which are common in public at large, for example the ‘M’ of Mac’Donalds, it’s a well known Trademark or the half eaten apple on the back of an Apple iPhone. As per the new Rule (124 of 2017), until now, a trademark can be recognized as a well-known trademark by a court in a proceeding related to trademark infringement. An owner of trademark can file an application to this effect along with all the evidences and documents on which the Applicant wants to rely in support of his claim. The Registrar on acceptance of a trademark as a well-known trademark will publish it in Trademark Journal.

Consideration of Communication through email as official communication:

As per the new Rules, Indian Trademark Office has also introduced email communication as the official mode of communication. For the same, an Applicant/Agent has to provide an email address at the time of filing of an application and all the official communication will be sent to the on that email. The deadline to respond to the Official communication will be counted from the date of communication of email to the Applicant/Agent. This is also a step in the direction of making Indian Trademark Office a paperless office as an Applicant can also file replies to the examination report and other communication from Indian Trademark Office through online portal of Indian Trademark Office. In order to promote a rather paperless system in India with the Digital India campaign and disincentivize dependency on paper, any physical filing of an application or document with the Trade Marks Office shall entail an additional fee of approximately 10% and in some cases thus, the electronic mode of filing and correspondence will be the call of this era.

Change in Official fee with special focus on popularizing online filing:

The most obvious change brought under the new Rules is the generous increment in the official charge for recording structures and applications wherever pertinent, for example, on account of documenting of exchange check applications (125% expansion), ask for restorations (80% expansion). In any case, a significant discount for Individuals/Startups and little Enterprises has been given to empower and encourage them in securing their brands.

The new Rules of 2017, promotes the online filing and making Indian Trademark Office a paperless office hence there is a discount of 10% on all the online filing in comparison to the over the counter filing. The fee for the filing a new trademark is also categorized on the basis of the type of Applicant. Government of India’s special initiative for

the start-ups is also given importance and hence the fee for small and medium enterprises and startups, is significantly less than that of Corporate.[ix]

Reduction in Number of Forms:

In the Trademark Rules, 2002 there were 75 different forms for the various procedures relating to the trademark registration and prosecution. It includes different types of trademark application, application for the post registration procedures etc.  Whereas in the Trademark Rules 2017, the numbers of forms are reduced to mere 8 types and are divided according to the procedures for which a Form is to be filed. This move to reduce Forms certainly did made the process for a laymen little bit less confusing. The forms available for the online filing are very much interactive in nature and a person with limited knowledge can certainly file an application for the registration of trademark without any help of a professional. The categories of forms after the amendment are as mentioned below:[x]

1 TM-A Application for the registration of trademarks of different categories;
2 TM-M Application/Request for miscellaneous functions in respect of a trademark Application/opposition/rectification under the Trade Marks Act;
3 TM-C Request related to copyright search under rule 23(3) of The Trade Marks Rules, 2017;
4 TM-O Notice of Opposition/application for ratification of the of the registrar by cancelling or varying registration of a trade mark/ counter statement/ Request to refuse or invalidate a trade mark;
5 TM-R Application for renewal /restoration of Trademark;
6 TM-P Applications for the post registration changes in trademark
7 TM-U Application for the Registration/Cancellation/Variation of registered user and notice of intention to intervene in the proceedings in cancellation/variation.
8 TM-G Application for the registration as trademark agents.

These 8 forms made the process of filing a trademark or renewal or cancellation or prosecution, a lot easier than it was before, the earlier process was a hasty one, but with the reduction in number of forms have certainly made the process easy and time saving for a layman.

Allowance of Video Conferencing for Hearings

The provision dealing with hearings (Rule 111) in the 2002 Rules, does not refer to any elements of video conferencing, while the relevant part of Rule 115 (2017 Rules) reads as follows:

“Provide that the hearing may also be held through video-conferencing or through any other audio-visual communication devices and in such cases the hearing shall be deemed to have taken place at the appropriate office.”[xi]

Trademark Rules then and now

The Trademarks Act was officially introduced in the year 1999, and after 3 years of it’s inceptions the Trademark Rules (2002) were brought into picture.

The said rules provided guidelines for the filing of Trademarks (A hasty procedure which was proved) it’s renewal and cancellation, the kind of marks that can be registered and many other things.

The said process was the only set of rules towards guiding of trademark related matters. But the said rules were not able to keep the pace with the advancements in ever changing technology, need arose for the amendments in the said rules for making it more user friendly and less time consuming.

On March 6th 2017 the new trademark rules were officially introduced, which provided relaxations along with a few not so adorable changes as some may contest. The said rules reduced the number of forms to be filled from 74 to a minimum of 08, video conferencing is introduced, along with it the impact of digitization could be seen in the new Rules as well, email facility has been added, forms will now be filled online as well also the fees for start up has been kept low so as to let them promote their brand. A slight change as well the price of filing form offline has been increased by a 125%, well that’s also so as to online filing of forms can be promoted, which is considerably less costly as compared to filing form offline.

Also one of the important addition is the introduction of non-conventional mark as a trade mark (although few have been given trademark prior to this amendment), sound mark can now be registered as a trademark, all the proprietor has to do is record a 30 second clip of the said Mp3 and submit it for further checking, this in turn is definitely going to help many of the fellow musicians to get their sound track registered.


All said and done, the new trademark rules brought various good changes to the Trademarks Act, a lot of improvement from the 2002 rules, introduction of non-conventional marks as trademark is a big step towards broadening the reach of Trademarks Act. In time maybe more non-conventional mark will come within the ambit of Trademarks Act.

The process that is made easy will sure going to help a lot of fellow member proprietors in getting their marks registered, indeed it is a great addition to the Trademarks Act, 1999.



[i] Avinash Shivande, Intellectual Property Manual (LexisNexis 2004)

[ii] Avinash Shivande, Intellectual Property Manual (LexisNexis 2004)

[iii] MANU/MH/0231/1960 Consolidated Foods Corporation vs. Brandon and Co. Private Ltd (23.08.1960 – BOMHC)

[iv] MANU/MH/0231/1960

[v] Singh & Associates, India: Analysis Of New Indian Trademark Rules 2017, on Trademark Rules 2017 (last undated on April 21, 2017)

[vi] Singh & Associates, India: Analysis Of New Indian Trademark Rules 2017, on Trademark Rules 2017 (last undated on April 21, 2017)

[vii] Arka Majumdar, Shubhojit Sadhu and Sunandan Majumdar, The Requirment of Graphical Representability for Non-Conventional Trademarks, (NUJS) Journal of Intellectual Property Rights, Vol 11, September 2006

[viii] Singh & Associates, India: Analysis Of New Indian Trademark Rules 2017, on Trademark Rules 2017 (last undated on April 21, 2017)

[ix] Ibid., p 3

[x] Ibid., p 3

[xi] Government of India Ministry of Commerce and Industry (March 6, 2017)

Image source : Photo available at :


The Book Famine and the Marrakesh Treaty: Providing Access to VIPs

By Apoorv K.C

There has been a perpetual conflict in the arena of Intellectual Property Rights and Human Rights. The world currently is suffering from what the experts call, ‘book famine’. Book famine is, simply speaking, the lack of accessibility of books. Book famine exists on a larger scale for the blind, visually impaired or print disabled persons.[1] According to a few estimates, less than one per cent of the literary works in the developing countries and less than ten per cent of them across the globe is accessible by visually impaired persons.[2] The Marrakesh treaty, in principle, attempted to remove this deficiency of access, i.e.: the book famine. However, even after three years of its inception, the treaty has still not been ratified by the required 20 countries and hence, its current status still remains in a limbo.

The treaty was the culmination of a long process of discussions, deliberations and compromises. A prelude to the treaty was the Convention on the Rights of Person with Disabilities, which came into force in 2008. The treaty marked a shift in approach and, for the first time, considered lack of access as a hindrance to the human rights of an individual. Article 4 of the convention obligates the States to promote the availability of new technologies to people with disabilities. To fulfil the obligations under this convention, the Marrakesh treaty was brought in. The main purpose of the treaty is to harmonise the Rights of authors in Copyright law with human right to have access. However, the path towards formulating a treaty like this was not an easy one.

Under the prevalent TRIPS regime, the limits and exceptions to copyrights are highly restricted. Under the Berne Convention[3], a three step test permits exemptions to copyright in ‘certain special cases’ that ‘do not conflict with normal exploitation of the work’ and ‘do not unreasonably prejudice the legitimate interests of the author.’[4] Hence, in the question of providing limitations to copyright for providing accessibility, two questions have to be examined:

  1. Whether the copyright owners’ market be affected and they would not be able to enjoy the rights under copyright?
  2. Whether the need to provide accessibility overweighs any harm caused to the author’s right?

Both these questions played a vital role during the formation and the delay being caused in the treaty coming to force. The Copyright owners fiercely opposed the draft treaty and argued that they would be forced to surrender their rights under the provisions of the treaty. The commercial interests of the Copyright holders could have an adverse affect, thereby failing the first test provided under the Berne Convention. The copyright holders argued that the draft treaty would fail the third test too as these exceptions would ‘create doubts about the wisdom of investing in the production of accessible versions for the market.’[5] The treaty was also opposed by publishers of Audio-visual works like Motion Picture Association of America over the long term effect such a treaty could have on Intellectual Property politics.

The biggest opposition towards the treaty was not because of its non compliance towards the earlier treaties, but the shift it creates from limited exceptions regime towards social inclusion regime, in what some media houses claimed to be a ‘bad precedent.’[6] The treaty is the first treaty in the world which mandates countries to have exceptions to the rights given under Copyright law of the countries, under Article 4(1).[7] Article 4(2) further mandates the countries to allow anyone to make an accessible format copy of the work, provided the conditions specified therein are fulfilled.[8] Article 5 mandates states to allow for cross border exchange of accessible format copies and Article 6 mandates for allowing import of accessible format copies, without the license or authorisation from the author.[9]

Though the provisions of the treaty are commendable, the treaty has not been adopted universally as the Copyright- Accessibility debate still continues. However, with time, thw treaty is being taken more seriously by nations. Israel has made laws in compliance with the treaty, though it wasn’t one of the signatories to it.[10] India was the first country to ratify the treaty in 2014 and had already introduced an amendment in 2012 to the Copyright Act, 1957. Section 52(zb) of the Copyright Act permits the conversion of work in an accessible format as an exemption to the general rule of Copyright infringement. There has also been a plan to enhance the National Digital Library and to provide e-books for school curricula.[11] However, there is a lot which needs to be done. Providing accessibility for books finds a small mention in Sugamya Bharat Abhiyan. Also, the implementation of the new National Education Policy, where technology has a big role to play, could be instrumental in improving accessibility.[12]

[1] A print-disabled person is a person who cannot effectively read print because of a visual, physical, perceptual, developmental, cognitive, or learning disability. – See more at:

[2] Accessible Books Consortium Launched, Joins Effort to End “Book Famine” for People with Print Disabilities, World Intellectual Property Organisation, (June 30, 2014), available at

[3] Berne Convention for the Protection of Literary and Artistic Works art. 9(2), Sep. 9, 1886.

[4] id.

[5] Allan Adler, Association of American Publishers Inc, Reply Comments to US Copyright Office, Facilitating Access to Copyrighted Works for the Blind or Other Persons With Disabilities: Notice of Inquiry and Request for Comments, 4 December 2009, 6 ,

[6] P Harpur, N Suzor, Copyright Protections and Disability Rights: Turning the Page to a New International Paradigm, (2013) 36 (3), University of New South Wales Law Journal.

[7] Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled art. 4, June 27, 2013, TRT/MARRAKESH/001.

[8] id.

[9] id. at art. 5-6.

[10] Law for Making Works, Performances and Broadcasts Accessible for Persons with Disabilities (Law Amendments) No 5774-2014 (enacted 19 March 2014) (Israel). See more at:

[11] Surabhi Agarwal, Govt proposes digital e-book versions of school syllabi, Business Standard (Nov. 18, 2014)

[12] New Economic Policy, available at


The Olympic Games and IPR

By Gaurav Saxena

Historically, the IOC has used Olympic IPR to raise funds for the Olympic Movement. While the initial Games were predominantly supported by various National Governments and other private donations, even the first ever games did see a bit of IPR related activity – an important portion of the budget came from the issue and exclusive sale of twelve commemorative stamps. The 1984 Games in L.A. marked a paradigm shift resulting in the beginning of intensified usage of the Olympic IPR to finance the hosting of the Games. Ever since, the primary source of funds for the hosting of the Games has been the proceeds from the marketing program, which effectively depends on commercialising the Olympic IPR.

Association with the Olympic Movement is considerably valuable to many organisations around the world. These organisations are more than willing to pay for such association and the rights that come with it. To maximise the value of such an association with those entities, the IOC has come up with limited licenses that provide exclusivity in different industrial and geographic categories. Among the marketing programs for Olympic IPR is the “The Olympic Partners” program, through which companies endorse the Movement on a global scale and various television broadcast arrangements that allow the live and repeat telecast of the Games. Various National Olympic Committees are also permitted to adopt national level marketing programs licensing the Olympic IPR, so long as they do not clash with the IOC’s marketing efforts internationally.

The main aspect of this agreement with the sponsors is exclusivity. The IOC takes active measures to prevent the unauthorised use of Olympic IP so as to maintain this exclusivity. Firstly, while choosing the Host City, it encourages the NOCs to lobby their legislatures to enact special protective legislation for Olympic IPR. Next, each Host City contract imposes strict requirement on the Organising Committee of the Olympic Games (OCOG) to register and protect, globally, all the trademarks for a particular Games. Finally the OCOGs and NOCs are to work together with the IOC to prevent ambush marketing.

The Olympic Games 2016 took place in Rio de Janeiro, Brazil, from the 5th to the 21st of August. To combat ambush marketing, the IOC enforced the now infamous Rule 40 of the Olympic Charter. Rule 40 is a very intricately created rule, but briefly, this rule prevents non sponsors from creating an undue association with the Games and consequently benefitting from the same. There are ways to work around this Rule, such as ‘Deemed Consent’ or ‘Rule 40 waiver’ which can be granted by the NOCs within a certain time period. But this rule also imposes a ‘blackout period’ (27th July-24th August) where even previously permissible advertisement by non sponsors is not allowed, thereby giving the benefits to its official sponsors. Athletes and sponsors alike contended that this rule placed an unfair restraint on them by preventing them from marketing during the vital period – the duration of the Games. But the IOC contended that this Rule is essential to preserve the unique non-commercial nature of the Games.[i]

Next, the IOC urges the NOCs to enact legislations. The protection offered by these legislations can go beyond what is normally available under IP laws. Under the Brazilion Olympic Act, the Olympic symbols are granted special protection on a temporary basis. Emblems, flags, mottos, mascots and torches used by the IOC are some of the entities that fall under this law. These also include various expressions such as Rio 2016 and Olympic Games, in any language. The protection period for these symbols and terms shall begin from the date of registration with the Brazilian National Institute of Industrial Property (INPI) and extend till 31st December 2016.

The use of these symbols is prohibited even if it is for non-commercial purposes, unless authorised by the IOC. The act goes further and prohibits those terms that, even though they are outside of the list of protected symbols, bear a resemblance to those terms and are able to create any sort of association with the Olympic Movement or the Rio 2016 Games.

During the period of protection i.e. till the end of this year, any request for the registration of trademarks that constitute an imitation or a reproduction of the official symbols or are likely to create an association or cause any confusion with the IOC or the official symbols shall be rejected outright. Furthermore, the INPI will inform the, which is the entity responsible for the registration of domain names in Brazil, of all registered trademarks, so that any requests for registration of domain names containing terms similar to the trademarks be refused ex officio.

IP law relating to the Olympics still has a long way to go. The advent of social media will definitely play a part in the further development of this field of as the current laws in place (Rule 40) start becoming obsolete and maintenance of the Games’ non-commercial nature becomes nigh on impossible.[ii]

[i] The Olympic Games (2016) Retrieved September3,2016 from

[ii] Olympics and IP (2016) Retrieved September 4,2016 from

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