WORLD TRADE
ORGANIZATIONIP/C/W/326/Add.3
12 November 2002
(02-6216)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from India to the questions posed by Australia, the European Communities and their
member States, Japan and the United States and to the follow-up questions posed by the European
Communities and their member States and Switzerland
Addendum
By means of a communication from the Permanent Mission of India, dated
16 September 2002, the Secretariat has received a copy of the following responses to the questions
posed by Australia, the European Communities and their member States, Japan and the United States,
as circulated in documents IP/C/W/328, 320/A dd.1, 322, 316, and responses to follow-up questions
posed by the European Communities and their member States and Switzerland as circulated in
documents IP/C/W/320/Add.3 and 315/Add.1, respectively.
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AUSTRALIA
C. PROTECTION OF UNDISCLOSED INFORMATION
11. Does the law providing for the protection of undisclosed information as required by
Article 39.2 of the TRIPS Agreement apply to government and government-linked agencies?  If
not, to whom does it apply?
Section 5 of the Official Secret Act provides that unauthorised disclosure of official secrets is
a punishable offence.  This provision is also applicable to government employees.
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS – T HE SEMICONDUCTOR
INTEGRATED CIRCUITS LAYOUT -DESIGN ACT 2000
39. Please explain how your legislation implements Article 50 of the TRIPS Agreement.
Please refer to the replies to questions No. 5 & 10 made by India in the Checklist of Issues on
Enforcement (IP/N/6/IND/1 the 29th November 2001).IP/C/W/326/Add.3
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H. UNDISCLOSED INFORMATION
40. Please explain whether or not your legislatio n grants a defined period of time for the
protection of undisclosed information.  If so, please give the time span.
The test data submitted for seeking marketing approval for a pharmaceutical or agricultural
chemical product is not disclosed to a second or subsequent applicant.
41. Please explain how your legislation defines "undisclosed information".
There is no definition of undisclosed information.  Also please refer to reply to question
No. 23 from the United States (IP/C/W/316).
42. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
There is no specific definition given in the Drugs & Cosmetics Act or the Insecticides Act of
the data submitted to government or government agencies.
JAPAN
D. PROTECTION OF UNDISCLOSED INFORMATION
5. Please explain how legislation of your country provides for the protection of
"Undisclosed Information" as required by Article 39.1 and 39.2 of the TRIPS Agreement.
Please explain in detail and please cite the relevant provisions of your country's law.
The protection of undisclosed information against unfair competition is provided through the
provisions of Law of Torts and the Indian Contract Act, 1872.  Breach of confidence or breach of trust
gives rise to a cause of action in torts for which damages may be sought (Mrs. Manju Bhatia V/s
NDMC, JT 1997 (5) S.C. 574).  For breach of contract, remedies are available under the Indian
Contract Act, 1872 by way of compensation and injunction.
UNITED STATES
H. PROTECTION OF UNDISCLOSED INFORMATION
23. Please describe in detail how the laws of India provide for the protection of undisclosed
information as required by Article 39.2 of the TRIPS Agreement and provide citations to therelevant provisions of law.
The protection of undisclosed information against unfair competition is provided through the
provisions of Law of Torts and Indian Contract Act, 1872.  Breach of confidence or breach of trust
gives rise to a cause of action in torts for which damages may be sought (Mrs. Manju Bhatia V/sNDMC, JT 1997 (5) S.C. 574).  For breach of contract, remedies are available under the Indian
Contract Act, 1872 by way of compensation and injunction.
25. Are other applicants for ma rketing approval for their own versions of a previously
approved pharmaceutical or agricultural chemical products permitted to rely on data submittedIP/C/W/326/Add.3
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by the earlier applicant?  If so, how long a period of exclusivity is given to the earlier applicant
before such reliance becomes possible.
The date submitted by the applicant for seeking marketing approval of a pharmaceutical or
agricultural chemical products is not disclosed to a second or subsequent applicant.
SWITZERLAND
A. PATENTS
Ad response to question 5:
In your answer you indicate that according to your present patent legislation (Patents
Act 1970), importation of a patented product is not considered as working a patent.  Please
confirm whether, under the new law (Patents Bill, 1999, second Amendment) importation will
be considered as working a patent in accord ance with Article 27.1 of the TRIPS Agreement.
The obligation under Article 27.1 of the TRIPS Agreement have been implemented by
replacing Section 48 of the Patents Act through the Patent(Amendment) Act, 2002.  The new Section
reads as under:
"48. Subject to the other provisions contained in this Act and the conditions specified in
section 47, a patent granted under this Act shall confer upon the patentee-
(a) Where the subject matter of the patent is a product, the exclusive right to prevent
third parties, who do not have his consent, from the act of making, using, offering forsale, selling or importing for those purposes that product in India;
(b) Where the subject matter of the patent is a process, the exclusive right to prevent third
parties, who do not have his consent, from the act of using that process, and from the
act of using, offering for sale, selling or importing for those purposes the product
obtained directly by the process in India;
Provided that the product obtained is not a product in respect of which no patent shall be
granted under this Act".
Further, the condition relating to "patentee to ma nufacture in India to an adequate extent..." as
a ground of granting of compulsory licence has been omitted by the Patents (Amendment) Act, 2002.
B. P
ROTECTION OF UNDISCLOSED INFORMATION
Ad response to question 9:
Referring to the issue of unfair commercial use of test data submitted by an application
to the responsible State Agency in the procedu re for market authorization of a pharmaceutical
or of an agricultural chemical product, please specify whether the responsible State Agency willrequire the same amount of data from a second  applicant requesting market authorization for a
similar or identical product as from the first applicant.IP/C/W/326/Add.3
Page 4
If yes, does your law provide for a time period after the expiration of which a second
applicant can refer to the data of the first applicant and will therefore not have to submit these
data in his own application for market authorization?
The test data submitted for seeking marketing approval for a pharmaceutical or agricultural
chemical product is not disclosed to a second or subsequent applicant.  Also please refer to reply to
Question No. 40 from EC  (IP/C/W/315/Add.1).
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. GENERAL PROVISIONS
Follow-up question on question 1:
The answer to our question 1 remains outstanding.  Please describe if your legislation
includes measures to protect public health and nutrition, and to promote the public interest insectors of vital importance to your socio-economic and technological development as mentioned
under Article 8 of the TRIPS Agreement.  If yes, please explain how such measures are
consistent with the provisions of the TRIPS Agreement.
The Patents Act, 1970 as amended by the Patents (Amendment) Act, 2002 contains
provisions for protection of public health and nutrition and to promote public interest in sectors of
vital importance to socio-economic and technological development.  These measures have been
incorporated taking note of flexibility provided in Articles 7, 8, 30 and 31 of the TRIPS Agreement
and supported by the Doha Ministerial Declaration on TRIPS and Public Health.
B. T
RADEMARKS
Follow-up question on question 13:
In the light of your reply to question 13, in which it is said that "identity" implies
identical, same, similar or deceptively similar ma rk, please explain then why Section 11(1) of the
Trade Mark Act, 1999 makes a distinction between (a) identity and (b) similarity.  The purpose
of our initial question was rather to verify wh ether the term 'identity' covers only but strict
identical signs.
Section 11 of the Trade Marks Act, 1999 deals with relative ground for refusal of registration
of a trade mark.  According to Section 11(1)(1), a trade mark is not to be registered subject to
Section 12 if because of its "identity with an earlier trade mark" and similarity of goods or servicescovered by the trade mark there exists a likelihood of confusion on the part of the public.
Section 11(1)(b) further provides (subject again to Section 12) that a trade mark shall not be registered
if because of its "similarity to an earlier trade mark" if on account of identity or similarity of goods or
services covered by the trade mark, there is likelihood of confusion.
In the previous reply it was mentioned that "identity" implies identical, same, similar or
deceptively similar.  An earlier trade mark means a registered trade mark or a prior convention
application of a well known trade mark. "Identity to an earlier mark" under Section 11 (1)(a) would
be invoked by the Registrar when the pending trade mark has been used in the market.  The extent of
use and evidence of confusion or deception would be assessed to determine the registerability of themark.  However, Section 11 (1)(b), " similarity  to an earlier trade mark" would be invoked where a
pending trade mark has not been used in the Indian  market and application has to be judged on theIP/C/W/326/Add.3
Page 5
basis of "notional use in a normal and fair manner" and to decide whether the central idea of each
mark is the same.
Follow-up question on question 14:
It is pointed out that the proviso to Section 9(1) of the Trade Mark Act, 1999 that
absolute grounds for refusal of registration shall not apply in the case of well-known
trademarks.  In other words the fact that th e trademark applied for is well-known can be
invoked, as it is the case for acquired distinctiveness through use, to demonstrate
distinctiveness.  Is such provision also  applicable to signs which are deceptive?
Proviso to Section 9(1) of the Trade Mark Act, 1999 exempts such trade marks which are not
registerable on absolute grounds.  This includes trade marks that have acquired distinctiveness
through use or is a well known trade mark.  However, the response to the question posed [whether
signs which are deceptive is objectionable under proviso to Section 9(1)] the answer is in the negative.
Signs which are deceptive are objectionable under Section 9(2)(a) and not proviso to Section 9(1).
Under Section 9(2)(a) deceptive signs can be refused registration on absolute ground.
C. GEOGRAPHICAL INDICATIONS
Follow-up question on question 20:
Does your answer mean that the first registra tion is valid for 10 years and the renewal
entails validity at perpetuity without further fees?
The registration of a geographical indication is valid for the initial period of 10 years and can
be renewed in perpetuity on payment of appropriate renewal fees.
Follow-up question on question 21:
Could you clarify how and which specific pieces  of evidence, for those specific cases, are
required to ensure that the product is linked to the territory?
The scope of provision extends the definition of Geographical Indication to manufactured
goods where "one of the activities of either the pr oduction or of processing or preparation of the
goods concerned that takes place in such region or locality or territory".  This has to be established by
the applicant by specific evidence.  Such evidence may be produced before the Registrar to come
within the ambit of the definition of Geographical Indication.  Evidence could include historical
historical evidence of production, documented details of specifications and the like.
Follow-up question on question 22:
In the light of your answer, could you clarif y whether or not products such as rice or
saris are protected under the Act?
Section 22(2) of the Geographical Indication of  Goods (Registration & Protection) Act, 1999
empowers the Central Government to provide additional protection to certain goods or classes of
goods by notification in the Official Gazette, specifying such goods or class/classes of goods for the
purpose of such protection.  This may include wines and spirits, rice or saris or any other item as may
be decided and notified by the Central Government.  The scope of, a "good" under the Act as per,Section 2(f) extends to agricultural, natural or manufactured goods or handicraft or of industry and
includes food stuff.IP/C/W/326/Add.3
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Follow-up question on question 24:
Please confirm whether the same protection is given to geographical indications that are
registered and those that are not registered under the Act.  Please explain any dissimilarities.  In
particular please explain the scope of  Articles 20(1) and 23(2) of the Act.
Section 20 (1) of the Act provides that no person shall be entitled to institute any proceeding
to prevent, or to recover damages for, the infr ingement of an unregistered geographical indication.
Section 23(1) provides that registration of geographical indication is to be a prima facie evidence of
validity in all courts.  Section 23(2) of the Act provides that nothing in this section shall be deemed to
affect the right of the action in respect of an unregistered geographical indication.
The Geographical Indications of Goods Act, 1999 extends protection to only such goods,
which are registered under the Act.  Therefore, while protection for infringement under this Act would
be available to only those goods, which are registered, un-registered goods can only claim protection
under the law of passing off under the common law.
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