Using IP Manuals to Navigate Filing Procedures - Part 1

This article is part 1 of a 2-part series that will explore intellectual property practice and procedure manuals released by the government to shed light on the process of filing an application for registration of various intellectual properties in India. In this part, we will take a closer look at the intellectual property practice and procedure manuals with respect to the following:

1. Copyright - including the manuals for artistic works, literary works, cinematograph films, musical works, and sound recordings;

2. Trademarks; and

3. Geographical Indications (“GIs”).

What is a Practice and Procedure Manual for Intellectual Property?

A ‘Practice and Procedure Manual’ for intellectual property is a document that describes the general practices and procedures of different intellectual property offices concerning the process of examination and registration of intellectual property. The Office of the Controller General of Patents, Designs, and Trademarks (“CGPDTM”) has drafted practice and procedure manuals for patents, designs, trademarks, and GIs. The Copyright Office has drafted the practice and procedure guidelines for works subject to copyright protection including artistic, literary, and musical works, cinematograph films, and sound recordings.

Are Practice and Procedure Manuals Different from Acts or Rules?

Practice and Procedure Manuals do not have the force and effect of law. The purpose of the manual is to clarify any ambiguity by explaining practices and procedures involved in intellectual property examination and registration according to the provisions of the applicable Act and Rules.

The following sections contain a summary of the key topics covered under the different practice and procedure manuals.

I. Practice and Procedure Manuals - Copyright

The Copyright Office has published five practice and procedure manuals, one for each different type of work under the Copyright Act, 1957 (“Copyright Act”) (excluding dramatic works) - namely, artistic, literary, and musical works, cinematograph films, and sound recordings.

Overall, for any type of work, the prerequisite for registration is to submit an application in Form XIV with the declaration, statement of particulars, statement of further particulars, and two copies of the work. The manuals contain a detailed description of how Form XIV, statement of particulars, and statement of further particulars need to be filled. In addition to the foregoing, an applicant should submit a power of attorney (if they are filing through an advocate), and a no-objection certificate from the authors, or other right-holders involved in the creation of the work, as applicable.

Upon submission, the application will go through a formality check, and a waiting period for objections prior to registration. The manuals also enumerate the application fee payable for each type of work. Certain work-specific requirements are enumerated respectively in the table below.

Sl. No.	Type of Work Manual	Key Topics Covered
1.	Artistic Works Manual (Available here*)	Definition of ‘Artistic Work’, ‘Work of Architecture’, ‘Photograph’, ‘Engravings’, and ‘Work of Sculpture’ under the Copyright Act. The applicant must submit a search certificate issued by the Trade Mark Registry along with the application. Examples of copyrightable subject matter - works neither used nor capable of being used in relation to goods or services, works used or capable of being used in relation to goods or services, cartoons and animation characters, board or card games, photographs or portrait of a person, etc.
2.	Literary Works Manual (Available here*)	Definition of ‘Literary work’, ‘Computer Programme’, and the difference between literary and dramatic works under the Copyright Act. Adaptations and translations must be a subset of works provided in Section 13 of the Copyright Act to be registered. Protection Prerequisites - originality, copyrightable authorship, and subject matter, publication. If the application is for a computer programme, the applicant should submit 2 copies of the source and object code in a digital medium. Examples of copyrightable subject matter - books, e-books, novels, plays, stories, song lyrics, poems, tables, judicial pronouncements, compilations, comic books, translation/adaptation of literary works, etc. Examples of non-copyrightable subject matter - single word, titles, slogans, blank forms, flow charts, screenshots, etc.
3.	Cinematograph Film Works Manual (Available here*)	Definition and term of protection of a ‘Cinematograph Film’ under the Copyright Act. Contents of no-objection certificates to be obtained from various right-holders whose works are incorporated in the cinematograph film. Contents of an assignment or licensing agreement with various right-holders. Meaning of publication of a cinematograph film. Difference between author, owner, and publisher to clarify who should be the applicant. Commonly observed issues - submitting a single CD/flash drive with multiple videos, redacting consideration amount from agreements, mismatch of title, whether film names can be copyrighted, etc.
4.	Musical Work Manual (Available here*)	Definition, author, and term of protection of ‘Musical Work’ under the Copyright Act. Adaptation of musical work as per the Copyright Act. Arrangement or transcription of musical works. Difference between musical work and sound recording under the Copyright Act. When submitting the application, the work should be submitted in the form of graphical notations including western notations, swaras, etc.
5.	Sound Recording Work Manual (Available here*)	Definition and term of protection of ‘Sound Recordings’ under the Copyright Act. Contents of no-objection certificates to be obtained from various right-holders whose works are incorporated in the sound recording. Contents of an assignment or licensing agreement with various right-holders. Meaning of publication of a sound recording. Difference between author, owner, and publisher to clarify who should be the applicant. Commonly observed issues - submitting a single CD/flash drive with multiple sound recordings, redacting consideration amount from agreements, mismatch of title, filing sound recording works under the category of musical works, the language of a purely instrumental sound recording, whether the title of the song can be copyrighted, etc.

II. Manual of Trade Marks Practice and Procedure

The CGPDTM has published the ‘Manual of Trade Marks Practice and Procedure’ which enumerates the processes involved with respect to filing, examination, and registration of a trademark application. The table below highlights the key topics covered in the six chapters contained in the manual.

Sl. No.	Title of Chapter	Key Topics Covered
1.	Filing of Documents in Trade Mark Registry	General filing requirements include the form, content, and manner of filing documents, the signature on the document, providing an address for service, applicable fee, the filing process, and non-compliance with filing requirements. Additional requirements such as the nature of the applicant and registered proprietor, information required in the application for different types of marks, and specification of goods and services in relation to the trademark are also provided.
2.	Examination of Applications Filed for Registration of Trademarks	The following key aspects of the application are examined: nature of the application, name of the applicant, submission power of attorney, applicant’s principal place of business, submission of adequate priority documents (if applicable), classification of goods and services, relative and absolute grounds for refusal of the application. Upon examination of the application, the examination report is issued to the applicant which may include objections or acceptance of the application.
3.	Post Examination Disposal of Applications Filed For Registration of Trademarks	After the examination report is issued to the applicant, disposal of the application may include consideration of the applicant’s reply to the examination report, conducting a show-cause hearing, publication of the application in the trademarks journal, withdrawal of acceptance, or treating the application as ‘abandoned’ if the applicant does not file a reply to the examination report.
4.	Tribunal Section (Opposition & Rectification Proceedings)	The next stage is the opposition stage and the manual describes how an opposition proceeding can be initiated. The formality requirements, mode of evidence, and scheduling of the hearing after the completion of evidence by both parties are also provided. This chapter also covers the rectification of a registered trademark and the review of decisions.
5.	Pre-Registration Amendment	Prior to registration, correction of errors or amendment of an application can be made according to the procedures prescribed in this chapter.
6.	Renewal, Assignment/ Transmission, Registered User, and Post Registration Changes of Registered User	Upon registration of a trademark, procedures with respect to renewal, assignment, or transmission of a registered trademark are provided in this chapter. It also covers registered users and amendments post-registration.

The full text of the Manual of Trade Marks is available here*.

III. Manual of Geographical Indications Practice and Procedure

The CGPDTM has also published the ‘Manual of Geographical Indications Practice and Procedure’ which enumerates the processes involved with respect to filing, examination, and registration of a GI application.

This manual covers key aspects such as:

1. Definitions - ‘Geographical indication’, ‘Goods’, ‘Registered Proprietor’, ‘Authorised User’, ‘Graphical Representation’, etc.

2. Filing of GI applications - includes the type of applications, applicable fees, contents of the application, etc.

3. Examination stage - includes preliminary examination, deficiencies, examination of the application, corrections and amendments, acceptance, and advertisement.

4. Prohibition of registration of certain GIs such as - GIs that would deceive or cause confusion, is contrary to law, compromise or contain scandalous or obscene matter, etc.

5. Opposition stage - the procedure with respect to notice of opposition, counterstatement, evidence by both parties, hearing, and decision.

6. Registration - registration of the GI, entry in the register, and provision of certificate of registration.

7. Authorised User Registration - application for GI Authorised User and entry in the register.

8. Rectification - intervention by third parties following registration, rectification by the Registrar of his own

9. Enforcement of GIs - includes acts deemed as offenses, cognizance of certain offenses, etc.

10. Renewal of Registration and Restoration

The full text of the Manual of Geographical Indications is available here*.

Although the manuals are comprehensive, they are lengthy and contain numerous instructions and descriptions of procedures. As a result, it can easily become overwhelming to navigate the manuals thereby defeating the objective with which the manuals were drafted. However, applicants may refer to the practice and procedure manuals for a simplified yet detailed explanation of the process of registration of intellectual property. In part 2 of this series, we will take a closer look at the practice and procedure manuals for patents, and designs.

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References:

1. https://copyright.gov.in/Latest_Notice23.aspx

2. https://copyright.gov.in/Documents/Manuals/Artistic_Manual.pdf

3. https://copyright.gov.in/Documents/Manuals/LITERARY_MANUAL.pdf

4. https://copyright.gov.in/Documents/Manuals/CINEMATOGRAPH_MANUAL.pdf

5. https://copyright.gov.in/Documents/Manuals/MUSICAL_MANUAL.pdf

6. https://copyright.gov.in/Documents/Manuals/SOUND_RECORDING_MANUAL.pdf

7. https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf

8. https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_31_1_manual-of-geographical-indications-practice-and-procedure.pdf

*Links to the respective manuals last updated on 25/11/2023.