INTELLECTUAL PROPERTY RIGHTS

PROJECT
ON

Registration of Trademarks

Submitted to:

Dr. Sajid Z. Amani

Assistant Professor
Faculty of Law
Jamia Millia Islamia

Prepared by:
SAAD SAEED
B.A. LL.B.(Hons.)
Faculty of Law,
Jamia Millia Islamia.

TABLE OF CONTENTS

1. Acknowledgment..................................................................................................................3
2. Research Methodology.........................................................................................................4
3. Fundamentals of Trademarks................................................................................................5
4. Registration of Trademark...................................................................................................10
5. Registrability of the mark as Trademark.............................................................................15
6. Identity or Similarity of Marks.............................................................................................22
7. Deceptively Similar..............................................................................................................24
8. Passing Off...........................................................................................................................24
9. Infringement under the Act.................................................................................................26
10. Well-known Trademark.....................................................................................................28
11. Bibliography......................................................................................................................34

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ACKNOWLEDGEMENT

The success and final outcome of this project required a lot of guidance and assistance
from many people and I am extremely fortunate to have got that all along the
completion of my project work. Whatever I have done is only due to such guidance
and assistance and I would not forget to thank them.
I owe my profound gratitude to our Intellectual Property Rights teacher Dr. Sajid Z.
Amani, who took keen interest in my project work, guided me all along, till the
completion of my project by providing all necessary information for the project report.
I am thankful and fortunate enough to get constant encouragement, support and
guidance from all teaching staff of Faculty of Law, Jamia Millia Islamia which helped
me in successfully completing my project work. Also, I would like to extend my
sincere regards to all the non-teaching staff of Faculty of Law, Jamia Millia Islamia
and Indian Law Institute.
I would also not forget to remember my friends for their unlisted encouragement and
more over for their timely support and guidance till the completion of my project
work.

SAAD SAEED

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RESEARCH METHODOLOGY

This research was conducted using the Doctrinal method of research.

Doctrinal legal research, as conceived in the legal research domain, is research about
what the prevailing state of legal doctrine, legal rule, or legal principle is. A legal
scholar undertaking doctrinal legal research, therefore, takes one or more legal
propositions, principles, rules or doctrines as a starting point and focus of his study.
I located principles, rules or doctrines in statutory instrument(s), judicial opinions
thereon,

discussions

thereof

in

legal

treatises,

commentaries,

textbooks,

encyclopaedias, legal periodicals, and debates, if any, that took place at the formative
stage of such a rule, doctrine or proposition. Thereafter, I read them in a holistic
manner and made an analysis of the material as well as of the rules, doctrines and
formulated my conclusions.
Doctrinal legal research, thus, involves: (i) systematic analysis of statutory provisions
and of legal principles involved therein, or derived therefrom, and (ii) logical and
rational ordering of the legal propositions and principles.

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Fundamentals of Trademarks
Trademark is a symbol that allows a purchaser to identify goods or services that have
been proved satisfactory and not to buy goods or services that have not been
satisfactory. Trademarks serve mainly three purposes viz. (i) encourage the production
of quality products; (ii) reduce the customers costs of shopping and (iii) help the
customer to make decisions on purchasing products.
Trademarks help promote economic efficiency. If trademarks are not allowed to be
registered with the manufacturers it may eventually take away the incentive of
trademark owning manufacturers to make investments in quality control. There would
thus be no healthy competition among the manufacturers leading to the loss of vitality
of the economy. If we do not have a system of having trademark a manufacturer
would get nothing by improving his products quality. And consumers would not be in
a position to identify high or low-quality products. In such a situation a manufacturer
who reduce the price by reducing quality may pocket the benefit of the market. The
consequence would be attempts to produce inferior quality products rather than
competition to produce better quality products.
Today the uniformity of quality of products in the marketplace is the result of the use
of trademarks rather than the inherent nature of production or the reflection of
altruistic motives of manufacturers or distributors. In a system wherein trademarks are
allowed to be infringed, all may take a free ride on the successful sellers trademark
and reputation, there would be no incentive to distinguish ones own goods and
services.
Trademarks reduce the customers cost and agony of acquiring information about
products and service. If a person knows by his experience or experience of others that
a product is of good quality he would go for that brand without much search. With
reference to the question of new trademarks if the customers are willing to pay for the
new brand to establish itself through advertising then the rational potential entrant will
have incentive to enter the market and enjoy success. It is for the customers to do the
needful.
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Trademarks are universal phenomena. The legal systems of free market economies as
well as that of the socialists economies recognize some form of identification of the
source and quality of goods.
The law of trademark is a branch of unfair competition or unfair trade practices. In
other words, trademark law is a part of the generic law of unfair competition.
Trademark infringement is a commercial tort and all persons who infringe a trademark
are liable as joint tortfeasors.
Trademark infringement law and unfair trademark law a different. The essential
element of a trademark is the exclusive right of its owner to use a word or device to
distinguish his products. On the contrary a claim of unfair competition consider the
total physical image given by the product and its name together. In giving protection
to trademark, the law is imposing ethical and moral norms on the competitive process.
It is view that the unethical and unfair to allow one two appropriate goods which a
competitor has built up by quality control and advertising in a trade symbol.
Trademark infringement is regarding as an unacceptable access in the heat of
competitive rivalry.
In a sense the law of trademarks reflects the societal view that certain forms of
competitive behaviour in business practices are unfair. Today there is consensus that
gaining customers by the use of confusingly similar to trademarks is contrary to all
concepts of commercial morality ethics and fairness.
The logic underlying protection of trademarks seems to be the fairness involved in the
first user being given the recognition, as he is the first to appreciate the value of the
mark who had gone through the efforts necessary to establish the mark as a
meaningful symbol. To permit others to exploit the first users efforts is unjust. From
the customers standpoint this conduct is an unfair trade practice inasmuch as it
deceives the purchaser. In that sense, it is a fraud on the public, which acquires a right
in course of time to get a particular brand. It had been argued by many scholars that
the trademark like a patent or copyright served to differentiate the product with which
it is associated and thus leads to control over a segment of the market.
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Many judges and writers have later however restricted the contention that trademarks
partake of the essential aspects of monopoly. Perhaps Judge Franks conclusion is
appropriate to appreciate the question in proper perspective. He said that judges
should keep in mind the basic common law policy of encouraging competition and
the fact that the protection of monopolies in names is but a secondary and limited
policy.1
It is argued by many that trademarks actually create a barrier to entry to the market. It
does not appear to be correct. In fact when consumers have the benefit of price
advertising retail prices are dramatically lower than without advertising. Advertising
may reduce, not raise the cost of products/services. However, when such barriers exist
it may be noted that they exist because consumers prefer the brand with the favourable
representation and are willing to pay a higher price for them.
Trademarks are symbols representing essential element of the competitive process.
The Senate Committee in America while reposting the bill that became the Federal
Trademark Act of 1946 (Lanham Act) explains the fundamental basis of trademark
protection thus: Trademarks, indeed, are the essence of competition because they
make possible a choice between competing articles by enabling the buyer to
distinguish one from the other.
Trademarks encourage the maintenance of quality by securing to the producer the
benefit of the good reputation which excellence creates. To protect trademarks,
therefore, is to product the public from deceit, to foster fair competition, and to secure
to the business community the advantages of reputation and goodwill by preventing
their diversion from those who have created them to those who have not.
Trademark confers a right to exclude a limited exclusive right. In this view it can
be said that trademark is a form of property. The property parameters of a trademark
are defined very differently from any other kind of property. The exclusive property
right in the trademark is defined by customer perception. Trademark owners has a
property right only in so far as is necessary to prevent customer confusion as to who
1

Eastern Wine Corp. v. Winslaw Warren-Ltd., 137 F.2d 955

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produced the goods and to facilitate differentiation of the trademark owners products.
As a property right marks can be alienated like any piece of property. Trademarks
can be bought, sold and licensed.
Trademark has no existence apart from the goodwill of the product or service it
symbolizes. In a sense a trademark is a property only in the sense that it is a symbol
of the goodwill. When an article bearing a trademark is sold, the goodwill that
trademark signifies is a factor in making the sale. The goodwills existence is in the
minds of the buying public. In fact goodwill is a business interest that reflects the
basic human tendency to continue purchasing things from a seller who has offered
goods that the customer develops a liking in course of time. The goodwill together
with its symbol the trademark are classified as property. It is non-tangible and nonphysical. When alienated together, trademarks and their goodwill are subject to
ownership like any other form of intangible property rights. Even though trademarks
and goodwill are forms of non-physical property they can be carried on in the books
as an asset of the company.
While free competition is a goal, it does not override protection for the goodwill
established by a user for though the goodwill name and reputation of the producer
remains his private property and may not be traded upon and exploited by the
competitors.

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Trademark Infringement as Unjust Enrichment

A trademark that has attained consumer recognition has an inherent value and should
be protected from invasion by those how would like to profit from advertising
expenditure that they did not make. In this sense trademark infringement is an undue
enrichment. Trademark law insures that the brand information received by consumers
is accurate. They in fact reduce losses caused by deceit and thus help the consumers.
In this sense it can be said that protection of trademarks is only a facet of consumer
protection.
Historically, trademark law grew up as a branch of the tort of fraud and deceit, unfair
competition of which trademark infringement is a part, is, founded on the right of both
dealer and the purchasers to be protected from fraud of which both are victims.
Sometimes, the private rights of trademark owners conflict with the right of the public
to know the truth about the significance of a trademark.
A trademark not only symbolizes the goodwill behind the physical products but also
the penumbra of psychological factors that surround the product. These factors of
merchandising the legal issues of likelihood of confusion and dilution of the
effect of a given trademark. Sometimes people confuse trademarks law because of
irrational purchasing decisions of consumers, but this confusion is not justified
inasmuch as trademarks are neutral symbols insofar as advertising and a products
usefulness is concerned.

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REGISTRATION OF TRADEMARK
PROCEDURE FOR REGISTRATION
1. Application for Registration
Section 18 of the Trade Marks Act 1999 says that any person, claiming to be the
proprietor of a trademark used or proposed to be used by him, who is desirous of
registering it shall apply in writing to the registrar in the prescribed manner for the
registration of the mark.
Essential Ingredients for registration:
(i) Any person
Any person includes individual, partnership firm, association of persons, a company
whether incorporated or not, a trust, Central or State Government. It does not allow
the representative of the proprietor to apply in his own name.
(ii) Claiming to be proprietor
A person may obtain proprietorship in a trademark either by use or by registration
under this Act. He may also acquire proprietorship by assignment or by inheritance. In
case of unregistered mark but in use, proprietorship will be the person who first used it
in case of two rival claims whereas in case of proposed use of mark, which comes up
for registration, the designer or the originator will be the proprietor in case of any
controversy. Between two rival claims of user of the mark and designer of the mark
the former will be preferred. At this stage of making application, the proprietor has to
show his bona-fide claim. If the mark is not mistaken on the face of application and
also there is not objection to the claim, the registrar is entitled to accept the
application.
In case of manufacturer having a trademark abroad has made goods and imported
them into this country with foreign mark on them, the foreign mark may acquire
distinctive character and in such circumstances, the same or colourably similar mark

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cannot be registered not because it is registered abroad but because it lacks

distinctiveness.
(iii) Used or proposed to be used
The law permits registration of a mark, which has been or is being used or is proposed
to be used. In case of proposer of the mark, he must have definite and present
intention to use the mark as on the date of the application. Definite and present
intention is different from the general intention to use the mark sometime in future to
something, which he may think desirable later on. Definite and present intention
means a real intention to use the mark for resolved and settled purpose. In case of used
mark, the use in itself is not sufficient but is to be accompanied with real intention
continue with the use.
The proposed use of the trademark must be normal and fair, which, however, may
include variations in presentation or colour difference but such variation should not
stretched to far so that the used form will be totally different from the one sought to be
registered. If proprietor does not have the real and present intention to use the mark,
and try to register is for some mala-fide intention, such as to block the mark, it would
amount to registration in bad faith, which is a serious form of commercial fraud.
The application for registration of the mark must be filed with the Registrar in the
prescribed manner who has been conferred the discretion either to accept or reject or
accept with amendments, modifications, conditions or limitations.2 The Registrar must
communicate his decision in writing with the applicant and is under obligation to give
the reasons in cases of rejection or acceptance on conditions or with modification. 3
2. Withdrawal of Acceptance
In case the Registrar decides to accept the mark for registration, but before actual
registration, the Registrar may withdraw his acceptance under certain circumstances
under section 19 of the Trade Marks Act 1999. For example, if the Registrar is
satisfied that the application is being accepted in error or that circumstances are such
2
3

Section 18 (4)
Section 18 (5)

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that such registration should not be granted, he has been empowered to withdraw the
acceptance of application.
This power can be exercised subject to certain conditions. Registrar has to issue a
notice, specifying the objections, which has led him to think that the application has
been accepted in error or why the mark should not be registered, to the applicant and
give him an opportunity of being heard by requiring him to show cause why
acceptance should not be withdrawn.4
3. Advertisement of Application
Once the Registrar for registration has accepted the application, he shall get the
application advertised in the prescribed manner after acceptance. However, the
application shall be advertised before acceptance if the application is related to a
trademark to which section 9(1) and 11(1)(2) apply or in any other case as it seems
expedient to the Registrar.5 The purpose of advertisement is give information to the
public at large in respect of the trademark advertised and afford an opportunity to
oppose the registration of the mark on given grounds. So the advertisement must be
complete in all respects and otherwise the very purpose of advertisement will be
frustrated.6 If there is incomplete or incorrect information in the advertisement, it
would amount to misrepresentation, which deprives a prospective opponent of the
opportunity to get full information and of filing an effective opposition.7
4. Opposition to Registration
Section 21 of The Trade Marks Act 1999 allows any person to oppose an application
for registration. Any person need not be only a prior registered trademark owner.8
Even a customer, purchaser or a member of the public likely to use the goods may
object to the registration of a trademark in respect of such goods on the ground of
possible deception or confusion. The period within which opposition to the

Tikam Chand and Another v Dy. Registrar of Trade Marks, 1998 PTC 542 (Del)
Section 20
6
Virendra Sethi v Kundan Das, 20002 (25) PTC 50 (Del)
7
Ashoka Dresses v Bonns Shirts & Another, (2000) RPC 507
8
P. N. Mayor v Registrar of Trademarks, AIR 1960 Cal 80
5

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application for registration can be filed is three month from the date of advertisement,
which can be extended by Registrar not exceeding one month on application made to
him and on payment of the prescribed fee. So the period cannot exceed four months in
Toto.
The grounds of opposition should be based upon the specific provisions of law. The
grounds based on section 9, 11, 12, 13, 18, 24, 33, 35, 36(2) etc. would be suitable to
challenge the application of registration. However, the grounds based on section 11(2)
and (3) are available only to the proprietor of earlier trademark.
On receiving the notice of opposition, the Registrar is under obligation to send a copy
of the same to the applicant for registration. Upon receiving such notice, the applicant
is given two months time, from the date of receipt of the notice, to file counter
statement together with the prescribed fees to the registrar. This copy of counter
statement shall be sent to the person who has filed opposition under section 21 (3).
The applicant and the opponent are given the opportunity to adduce evidence in
support of their claims and may also be given an opportunity to be heard if they so
desire under Section 21 (4).9 However the onus is on the opponent to allege and prove
the existence of facts, which may lead the tribunal to assess the existence of likelihood
of confusion in the minds of the public, which includes likelihood of association with
the earlier mark. But this does not relieve the applicant of his onus to satisfy the
Registrar or the court that there is no reasonable probability of confusion, in respect of
all goods coming within the specification applied for and not only in respect of the
goods on which he is proposing to use it immediately.
5. Registration
Subject to Section 19 the Registrar is under obligation to register the Trade Mark
under section 23 if he decides in favour of applicant after listening to the opposition.
However, Central Government may direct otherwise on certain grounds. The mark can
also be registered jointly for two or more persons under section 24 if two or more
persons agree to work jointly. In such cases, the registrar shall require a copy of joint
9

Hemla Embroidery v Hindustan Embroidery, FAO No. 21 of 1968

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venture agreement to satisfy himself because none of them is entitled to use the mark
independently. The section in its earlier part specifically precludes the Registrar from
registration of two or more persons who use the trademark independently or propose
to use it independently. The registration shall be made as of the date of the application
and the applicant shall be issued a certificate of registration. However the registrar is
empowered U/S 23 (4) to amend the register or certificate of registration for the
purpose of correcting a clerical error or an obvious mistake. The applicant must
complete all formalities within one-year time period or within such time as may be
given in the notice. If defaulted, the application may be treated as abandoned after the
registrar gives notice in this regard to the applicant.
Section 25 provides that Registration shall be for a period of ten years but may be
renewed from time to time in accordance with the provisions of this act. Renewal can
be made before the expiration of the registration. In case of default in renewal before
expiration, the act provides for the grace period of six months from the date of
expiration for renewal on payment of prescribed fee. However, before expiration of
the last registration of a trademark, the Registrar shall send notice in the prescribed
manner to the registered proprietor of the date of expiration and conditions as to the
renewal. If the proprietor does not file for renewal, the name of the mark will be
removed from the register. However, the Registrar is entitled to restore the mark in
register if it is just to do so after six month but before one year from the expiration of
the last registration, on the receipt of application and on payment of the fee by the
proprietor. Such restoration shall be for another ten years to period.

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REGISTRABILITY OF THE MARK AS TRADEMARK:

Any mark, which is not hit by the definition and section 9, qualifies for registration.
However, a mark qualified under section 9 has to meet the positive objections under
section 11 to be finally registered. Section 11 is the qualification of section 9. Mark
having crossed the threshold under section 9 is capable of getting the protection of the
Trademark Act subject to section 11. It deals with prohibition on registration but does
not hit the inherent capability of mark as to its registrability. The marks prohibited
under section 11 may not be desirable based upon public policy considerations.
Under The Trademark Act, 1999, trademark is defined as to mean, inter alia, a mark,
which can be represented graphically and is capable of distinguishing the goods or
services of one person from those of others.
In a way, the definition itself prescribes two features to be present in any mark to be a
trademark:
Capability of being represented graphically;
Capability to distinguish the goods or services of one person from those of
others.
Absolute Grounds for Refusal of Registration under Section 9
Whereas Section 9 of The Act lays down the ground for on the basis of which, the
registration of the mark can be denied absolutely. One of the grounds is if the mark is
devoid of distinctive character.10 The phrase distinctive character implies the
incapability of the mark to distinguish the goods or services of one person from that
of the others. It also implies that the mark in itself should be distinctive in certain
cases. For example, common word of dictionary or the name of the place can not be
registered unless it is shown that the common word or the name has become
distinctive of his goods or services in the mind of the purchasing public, but if he
succeeds, then he will be entitled to protect his mark by registration.

10

Section 9(1)(a)

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Another ground11 for refusal to register the mark is that the mark should not indicate
the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of services or other characteristics of the goods
or services. In addition to these, a mark stands disqualified from registration if
represents the shape of goods results from the nature of the goods themselves or shape
of the goods necessary to obtain a technical result or shape which gives substantial
value to the goods.12
Yet another ground13 is that the mark must not be consisted of the marks or
indications, which have become customary in current language or in the bona fide and
established practices of the trade it is not desirable to monopolize such marks.
These are the grounds, which are specific to the mark that means, if the mark is
affected by any of these characteristics, it cannot be registered. But this is not the end.
The mark not affected by any such disqualification, has to pass what can be called as
the effect test. That means, the mark should not deceive the public or cause confusion
or hurt the religious susceptibilities of any class or section of the citizens or be
scandalous or obscene.14 The section 9 lays down the pre-requisites of qualification
for the protection of trademark law.
Capability to Distinguish Section 9(1)(a)
In National Bell Co. v Metal Goods MFG. Co.15, Supreme Court of India observed
that distinctive in relation to the goods or services as meaning adapted to distinguish
goods with which the proprietor is/ may be connected. Whereas in Davis v Sussex
Rubber Co. Ltd.16, the Court of Appeal drew the distinction between capable of
distinguishing and adapted to distinguish by saying that capable of distinguishing
seems to have a somewhat wider import than the expression adapted to distinguish
as it embraces marks which have not at the date of the application, but which, if used
11

Section 9(1)(b)
Section 9(3)
13
Section 9(1)(c)
14
Section 9(2)
15
(1970) 3 SCC 665
16
(1927) 44 RPC 412; (1927) 2 Ch 345
12

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long enough, may become distinctive of the goods of the proprietor of the mark. The
court in this case, observed that capable of distinguishing might perhaps refer to the
future, in the sense that a word may be able to distinguish although at the moment of
time at which the application is made it may not have become fully effective to
distinguish. However, the Court of Appeal observed that the general considerations,
which have to be taken into account in construing the expression capable of
distinguishing, are the same as in construing adapted to distinguish. 17
In determining the capability to distinguish, the authority must take into consideration
both inherent capability and factual capability to distinguish. Inherent capability may
mean that irrespective of the peculiarities of the trade or the practice of other traders,
the mark is shown to possess the capability of distinguishing the goods to which it is
applied. For example, a mark having direct reference to the character or quality of the
goods is considered as inherently not capable of distinguishing. However Indian
Trademark Registry takes the view that if the reference to the character or quality is
only indirect or suggestive, the mark can be considered. The factual capability to
distinguish depends upon the facts and circumstances of each case. In each particular
case, it become a subject of inquiry whether the mark by virtue of its being use or any
other circumstances, it is in fact is capable of distinguishing the goods. The Supreme
Court in National Bell case observed that in determining the distinctiveness, regard
must be had whether it is inherently distinctive or is inherently capable of
distinguishing and by reason of its use or any other circumstances; it is in fact adapted
to distinguish or is capable to distinguishing the goods.
Indicating Nature or Characteristics under Section 9(1)(b)
Section 9(1)(b) lays down the other ground of disqualification of the mark for
registration. It says that the mark consists exclusively of marks or indications, which
may serve in trade to designate the kind, quality, quantity, intended purpose, values,
geographical origin or the time of production of the goods or rendering of services or
other characteristics of the goods or services. In addition to these, a mark stands

17

Electrix Lds., Appl., (1958) RPC 176

Page | 17

disqualified from registration if represents the shape of goods results from the nature
of the goods themselves or shape of the goods necessary to obtain a technical result or
shape which gives substantial value to the goods.18
The expression kind includes the name or size or type of the goods or services. This
is based on the public policy of not affording registration to the generic description of
the goods which are the only available method of description of the goods would not
be having a capability to distinguish. E.g. words like extra, small, big, liquid, solid etc.
Any mark indicating the quality of the goods or services is the property of
everybody and no one can be allowed to monopolize it. e.g. superior, best, No. ! etc. .
Such words are found to be devoid of distinctiveness.
Indications of quantity or standard weights or measures or numbers of contents such
as kilograms, litres, gallons, grams etc are not allowed, as these are needed by every
trader in respect of all the goods and services.
Words describing intended purpose or the primary functions of the goods or
services such as giving soothing effect or giving absolute cleaning. For example, word
SAFFO19 was not given registration for cleaning powder and liquids on the ground
that word was too close to the descriptive of SAFF mean clean.
Similarly words indicating value or worth of any product are incapable of getting
registration such as Moneysworth.20
Marks indicative of place of manufacture or sale of goods or time of production are
not allowed for registration. E.g. Punjab basmati or Talvandi rice or prepared in one
day etc.

18

Section 9(3)
Chef TM, (1979) RPC 143
20
Moneysworth Trade Mark, (1976) RPC 317.
19

Page | 18

Marks common to trade Section 9(1)(c)

Section 9(1)(c) prohibits the registration of marks that consists exclusively of marks of
indications which have become customary in current language or in bona fide and
established practices of the trade. This is to protect the free use of indications or
marks, which are already in use in the trade, from being monopolized as a trademark.
Moreover such marks lack distinctive character. Words or indications common to
trade are open to everybody for use. E.g. generic names notified by the WHO as nonproprietary names, are open to the trade to use.
Proviso to Section 9(1)
The proviso to Section 9(1) provides that any mark or name, which though is not
distinct, nevertheless may be registrable if it is shown that it has by virtue of use
acquired a distinctive character. That means, as a result of use, the mark has become
distinctive of the goods or services of the proprietor. In an well-know case in
Registrar of Trade Marks v Hamdard National Foundation (India) 21 the Delhi High
Court gave approval of the registration of the mark SAFI by holding that words
having direct relation to the character and quality of the goods, sometimes lose their
primary meaning and acquire secondary or good specific meaning of a particular
manufacturer. If it happens then such marks may be registered as trademark.
In English case, Cycling ISTM Applications22 the Court laid down the test to
determine the distinctiveness on the basis of use by holding that
Right view to take of a particular sign may well depend upon the use (if any) that has
been made of it and more generally upon the usage of persons involved in the relevant
field(s) of commercial activity.

21
22

AIR 1980 Del 180 (DB)

(2002) RPC. 37, 729

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Marks deceiving the public or cause confusion: Section 9 (2)(a)

Section 9 (2) (a) seeks to prevent the registration of marks, which are of such nature as
likely to deceive the public or cause confusion.
Generally deception or confusion might arise by reason of similarity between the
proposed mark and another existing mark or might result from the nature of the mark
itself or nature of the use of the mark. For example, Deception in the nature of the
Mark may be in the form of misrepresentation as to the characteristics of the goods or
services or to the effect that they were made in a specified geographical region or
place, when in fact not so made. Deceptive use may involve where mark contains false
or misleading information. E.g. use of word Regd. when the mark is actually not
registered.
Section 9(2)(a) is intended to apply where the deception or confusion arises from the
nature of the mark itself and not to the questions based upon the similarity of the mark
with other existing mark which is a ground of refusal under section 11 which deals
with relative grounds of refusal for registration. Hence, a mark not deceptive or
confusing may qualify for registration even if the mark has resemblance or identity
with other mark but is distinct.
Section 9 (2) (b) forbids registration if the mark contains or comprises of any matter
likely to hurt the religious susceptibilities of any class or section of the citizens of
India. But this does not forbid the use of name or pictures of God or Goddess or
religious heads as trademarks that are not offending. Examples of offending use may
be use of Hindu Gods in respect of beef or meat or Muslim Saints for port products
etc. however, the perception and the practice is that usually symbols relating to
religion, gods or goddesses, place of worship should not be registered even if it is not
hurting but because these are part common heritage and should not allow any
monoplization.
Section 9 (2) (c) prohibits the registration of mark if it is scandalous or obscene.
Whether the mark is scandalous or obscene or not depends upon the current religious,
social and family values.
Page | 20

In addition to all these ground for refusal of registration of a mark under section 9(3)
on the ground of shape will not be entertained for registration. The shape of the goods
resulting from its nature23 or giving substantial value to goods or shape of goods
necessary to obtain technical results would disqualify the mark for registration.
Whereas the definition of the mark itself provides that mark includes shape of goods
or packaging. However generally the shapes would not be allowed registration unless
it is shown that the shape is distinctive of the goods or services.
Relative Grounds for Refusal of Registration under Section 11
While Section 9 provides for absolute grounds for refusal of an application for
registration of trademark, section 11 provides for relative grounds for refusal to
register any trademark. Subsection (1) of section 11 provides that a mark shall be
refused registration if it is identical with an earlier trademark covering similar goods
or services as are covered by earlier trademark. Also refusal can come if the mark is
similar to the earlier trademark covering identical goods or services as are covered by
the earlier mark. The register is under obligation to refuse the registration on the
ground of likelihood of confusion on the part of the public. Earlier trademark need
not necessarily be registered. If the trademark is having earlier priority date or is
entitled to protection by virtue of being well-known trademark, it would sufficiently
be an earlier mark for the purposes of this section.
So the Registrar before refusing the register a mark that has come up for registration
has to function at three levels. One, he must find out the identity or similarity of mark.
Two he must look for identity or similarity of goods or services to which the mark is
going to be applied. And three, he must check out whether there is any likelihood of
confusion on the part of the public.

23

Philips Electronics v Remington, [1999] RPC 809

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Identity or Similarity of Marks

Test for determining Identity or similarity of Marks
For determining the identity or similarity, the rules of comparison are developed over
the years and which J. Parkar aptly explains in Pianotist Company Ltd.s Application24
case.
According to him one must judge the two marks both by the look and by the sound;
consider the goods to which the mark is to going to be applied; consider the nature and
kind of customers who are likely to buy the goods; consider as to what would happen
if both the marks are used in the normal way as a trademark for goods of the
respective owners of the mark. After considering all these circumstances, if one comes
to the conclusion that there will be confusion, registration must be refused.
While comparing, one must not take a part of the word rather consider the whole and
compare it. Supreme Court25 while recognizing it further observed that the approach
to comparison should be from the point of view of a man of average intelligence and
of imperfect recollection. Whether to such a man, the overall structure and phonetic
similarity or similarity of the idea in the two marks is reasonably likely to cause a
confusion between them, is the test.
Search Procedure
To determine the identity or similarity with the earlier mark, the Registrar needs to go
through the search procedure before registration. Search is confined to a particular
class in which registration is applied for. However, search should be carried on
amongst the marks not only for identical goods but also for similar goods.
[Schedule IV to the Trade Marks Rules provides for classification of the goods and
services in 45 classes goods being classified in classes 1 to 34 and services included
in classes 35 to 45. For international classification of goods and services published by
WIPO, one can visit www.wipo.org earlier trademark is one that is already registered
24
25

(1906) 23 R.P.C. 774

Corn Products v Shangrila Food Products Ltd., AIR 1960 SC 142

Page | 22

or subject of a convention application of an earlier priority date or is one which is

entitled to protection as a well known trade mark.
Identity or similarity of goods or services
To determine the identity or similarity, the Registrar needs to go through the search
process before registration. Search is to be done in the specific classes of goods and
services in which the proposed mark falls is going to fall. However, search would
include not only amongst the identical goods but cover similar goods.
For this purpose, it is advisable that applicant should be precise in stating the
specification of goods or services for which the mark is sought to be registered.
However, the specification, if indefinite, may be a bar to the registration. If the
applicant gives unnecessarily wide specification, there are greater chances that he may
found a prior registration in same or similar mark in that class which may result in an
objection to his registration. Moreover, even registrar may object to wide specification
of goods under rule 25(15) of Trademarks Rules.
One thing is to be made clear here that classification of goods and services is not the
criterion for determining whether two sets of goods or services are of the same
description. Indeed, goods comprised in same class may include goods of a different
description and different description of goods may fall in the same class. [Schedule IV
to the Trade Marks Rules provides for classification of the goods and services in 45
classes. For international classification of goods and services published by WIPO, one
can visit www.wipo.org
Likelihood of confusion [Section 11(1)]
Section 11(1) of the Trade Marks Act 1999 says that if because of the identity or
similarity of marks or goods or services, there exists a likelihood of confusion on the
part of the public, which includes the likelihood of association with the earlier
trademark, the mark shall not be registered save as otherwise provided in section 12.

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Laying down the test in Amritdhara Pharmacy case 26 the Supreme Court observed:
for deceptive resemblance two important questions are: (1) who are the persons
whom the resemblance must be likely to deceive or confuse, an (2) what rules of
comparison are to be adopted in judging whether such resemblance exists. As to
confusion, it is perhaps an appropriate description of the state of mind of a customer
who, on seeing a mark thinks that it differs from the mark on goods, which he has
previously bought, but is doubtful whether that impression is not due to imperfect
recollection the question has to be approached from the point of view of a man of
average intelligence and imperfect recollection.
The risk of likelihood of confusion is considered as the most in cases where both the
mark and goods and services are identical of the existing mark and lesser where either
of them is identical. Whereas in the instance of similarity of mark and good or
services risk is considered lesser than in case of identical marks. The provision in
section 11(1) is mandatory on the Registrar and therefore when this section hits an
application, the Registrar is bound to refuse registration. The issue under this section
can be raised by the Registrar, prior to acceptance of the application, and by any
person after the mark is advertised. In the absence of any attack on the registration of
the earlier trademark, it is to be assumed that there has been notional use of the earlier
trademark. The reason for this is that unless one assumes notional use of the earlier
trademark, the question whether later on the trademark, proposed to be registered, will
be give rise to a likelihood of confusion on the part of the public will become difficult
to answer. At the same time, ordinary practical business probabilities having regard to
circumstances of the case should be considered rather than constructing imaginary and
unlikely cases.
In Dalip chand case27 an application to register Escorts for electric iron, etc was
opposed by Escorts Ltd. The Assistant Registrar dismissed the objections on the
ground that applicant had established prior use and honest concurrent use. On appeal,
Delhi High Court set aside the orders of the AR and held in this particular case that it

26
27

Amritdhara Pharmacy v Satyadeo Gupta, AIR 1963 SC 449

Dalip Chand Aggarwal v Escorts Ltd., AIR 1981 Del 150

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should be considered whether the mark has come to be known and associated with the
name of the opponent, not necessarily with the particular goods of the same
description but generally with its goods. In this case, it could be shown that the mark
escorts has been quite extensively used in the market by the respondent with the result
that any goods which may be marketed under this mark will be associated with the
name of the respondent, so that people buying may feel that it is product of the
respondent. This is sufficient justification for refusing the application of a similar
trademark.
DECEPTIVELY SIMILAR
Section 2(h) of the Act defines mark, which can be called deceptively similar.
According to the definition, a mark shall be deemed to be deceptively similar to
another mark if it so nearly resembles that other mark as to be likely to deceive or
cause confusion.
The act does not lay down any criteria for determining what is likely to deceive or
cause confusion. So every case of deceptive similarity depends upon the facts and
circumstances of each case after applying the test, which has been laid down by
judiciary through cases. In H. C. Dixon28, the Court held that likely to deceive is a
question largely one of first impression and not necessary to prove the intention to
deceive. It is sufficient if the ordinary user entertains a reasonable doubt29 as to the
source of the product. It is the likely hood of deception and not the actual deception,
which is the deciding factor.
PASSING OFF
With the tremendous growth in trade and commerce, the competitors or other traders
tend to imitate the well known or reputed trademarks by imitating colour scheme or
get up or packaging with a view to pass off such goods as goods of the genuine owner.
In cases of registered trademarks, the owner can move the court under this Act for the
infringement whereas in cases of the unregistered trademarks, the Act recognizes the
28
29

H.C. Dixon & Sons Ltd. v Geo Richardson & Co. Ltd., 50 RPC 36, p. 374
Jellinecks Appl., (1946) 63 RPC 59. P. 78

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Common Law remedy of passing off. The tort of passing off is based upon the
principle that no man is entitled to represent his goods as being the goods of another
man; and no man is required to use any mark, sign or symbol, device or means,
whereby without making a direct representation himself to a purchaser who purchases
from him, he enables such purchaser to tell a lie or to make a false representation to
somebody else who is the ultimate purchaser.30
The purpose of this remedy is three fold:
(i) Protect the interest of the trademark owner in his advantageous relations he has
created in the market place
(ii) Protect the interest of the consumer or purchaser of goods against acts tending to
create false impressions and to deceive or confuse him by inducing the belief that the
business or products of one manufacturer or trader are those of another
(iii) Protect the social interest by promoting fair dealing in the market place and
prevent unethical and unfair practices in trade.
The plaintiff, in an action of passing off, has to establish that his business or goods has
acquired the reputation and that his mark has become distinctive of his goods among
the public at large. He has to establish that there is likely hood of deception or
confusion int eh minds of the public. He, however, does not have to establish the
fraudulent intention on the part of the defendant. Thirdly, he has to establish that
confusion is likely to cause damage or injury to the reputation, goodwill and fair name
of the plaintiff. He need not prove the actual loss or damage in an action of passing
off.
The probability of deception is a question of fact, which depends upon a number of
factors as held by Supreme Court in Cadila Healthcare case31:
(i) Nature of the mark
(ii) Degree of resemblances between the marks.
30
31

Singer Manufacturing Co. v Loog, (1880) 18 Ch. D. 395, p. 412.

Cadila Healthcare Ltd. v Cadila Pharmaceutical Ltd., (2001) 5 SCC 73

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(iii) Nature of goods in respect of which they are used

(iv) Similarity in the nature, character and performance of the goods of the rival
traders.
(v) Class of purchasers, who are likely to buy the goods bearing the marks, their
education and intelligence and a degree of care they are likely to exercise.
(vi) Mode of purchasing
(vii) Any other surrounding circumstances which may be relevant.
Before that, Bombay High Court in Hiralal Prabhudas v Ganesh Trading Company 32
laid down various factors to be considered, some of which are as follows:
(i) Marks are remembered by general impressions or by some significant details rather
that by a photographic recollection of the whole. So over all similarity is the
touchstone.
(ii) Marks must be compared as a whole, microscopic examination being
impermissible
(iii) The broad and salient features must be considered for which the marks must not
be placed side by side to find out the difference in design.
(iv) Marks must be looked apart from the first impression of a person of average
intelligence and imperfect recollection
(v) Overall structure, phonetic similarity and similarity of idea are important and both
visual and phonetic tests must be applied.
In addition to the these factors, the nature of commodity, the class of purchasers, the
mode of purchase and surrounding circumstances must also be taken into
consideration.

32

AIR 1984 Bom 218

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INFRINGEMENT UNDER THE ACT

The registration gives the proprietor exclusive right to use the trademark in relation to
goods or services in respect of which the registration is being made under section 28
of the Act.33 This right of exclusive use shall be subject to conditions and limitations
with which the registration is made. A registered trademark is infringed when a
person, not being a registered proprietor or permitted user, uses in the course of trade,
a mark, which is identical with or deceptively similar to the registered trademark, in
relation to goods or services in respect of which the trademark is registered. 34 Section
29 gives instances of what shall constitute infringement. The gist of the offence of
infringement is that the mark is deceptively similar and is likely to cause confusion on
the part of the public.
In cases of infringement, the plaintiff does not have to prove that he is the user. Mere
registration on his part is enough to give him the right to sue unlike in cases of passing
off wherein the plaintiff has to prove that he is user of the mark, which has become
distinctive of his product.
In cases of infringement, there may be instances whereby the defendant does not use
the exact mark but the get up is similar that he is likely to be deceived, such
circumstances would warrant for an injunction is a recognized way back in 1970 by
the Supreme Court in Ruston case.35 In TorrentPharmaceuticals36 the Court held that
the test to determine the two mark identical or resemble each other or is likely to
deceive or cause confusion is the test of an average person with imperfect recollection.
In Dyechem Ltd.37 case the Supreme Court traced the legal principles applicable to
cases of infringement with reference to the dissimilarities in essential feature of a
mark. The Apex Court observed that the question of resemblance of two marks could
be determined by considering the leading characters of each. Yet the sameness of
most leading elements in each may give very different impression. On the other hand,
33

Revlon Inc. and another v Hosiden Laboratories (India) and others, 2001 PTC 595
Section 29
35
Ruston & Hornby Ltd. Zamindara Engineering Co. Ltd., AIR 1970 SC 1649
36
Torrent Pharmaceuticals Ltd. v The Welcome Foundation Ltd., (Guj) 2001 (2) CTMR 158
37
S. M. Dyechem Ltd. v Cadbury (India) Ltd., (2000) 5 SCC 573
34

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critical comparison of the two marks might disclose numerous points of difference and
yet the impression which would remain with any person seeing them apart at different
time might be the same. Thus it is clear that a mark is infringed if the essential
features or essential particulars of it are copied.
It is more so, when any distinctive arrangement or unusual features of the common
elements are copied. The apex court further recognized that under other laws,
emphasis is laid on the common features rather than on essential features and held that
where common marks are included in the rival trade marks, more regard is to be paid
to the parts not common and the proper course is to look at the marks as a whole but at
the same time not to disregard the parts, which are common.
Thus the Supreme Court lays down three-prong test to determine the infringement:
(i) Is there any special aspect of the common feature, which has been copied?
(ii) Mode in which parts are put together differently, i.e. whether dissimilarities are
sufficient to make the mark dissimilar?
(iii) Paying more regard to the parts which are not common while at the same time not
disregarding the common parts.
Relying upon the Dyechem case, Delhi High Court held in Peshawar Soap case38 that
for determining the comparative strength of infringement in favour of plaintiff, regard
must be had to the essential features. Ascertainment of essential features is not by
ocular test alone by excluding sound of words forming part of the whole mark. In
cases of word mark, resemblance is important, but in cases of devices and composite
marks dissimilarity in essential features is more important than similarity. The leading
characters, both orally and visually, in each as a whole would be the relevant indicia.
In cases of similar marks, the dissimilarities would be relevant to adjudge the
impression left on the mind. The ascertainment of distinctive arrangement of common
elements is also relevant to determine infringement. The Court further observed that

38

Peshawar Soap & Chemicals Ltd. v Godrej Soap Ltd., 2001 PTC 1 (Del.)

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defendant couldnt take a plea that his mark contains besides the plaintiff mark other
matters also, though this is not an absolute proposition.
WELL-KNOWN TRADEMARK
Article 6 of The Paris Convention provides for protection of well-known mark by
mandating the member countries to prohibit the use of a trademark, which constitutes
a reproduction, an imitation, or a translation liable to create confusion of a mark
considered by the competent authority of the country of registration or use to be wellknown mark in that country as being already the mark of a person entitled to the
benefits of the convention. Neither the Paris Convention nor TRIPS agreement
contains any definition of well-known mark, which is defined, for the first time, under
Section 2 (1) (zg) of Indian Trade Marks Act 1999. Section 2 (1) (zg) defines:
Well-known trademark in relation to any goods or services, means a mark which has
become so to the substantial segment of the public which uses such goods or receives
such services that the use of such mark in relation to other goods or services would be
likely to be taken as indicating a connection in the course of trade or rendering of
services between those goods or services and a person using the mark in relation to the
first-mentioned goods or services.
Section 11 (6) to (11) deals with the matters relating to Well-known trademark.
Subsection (6) lays down the list of factors to be taken into account by the Registrar
while determining Well-known trademark. It is mandatory for the registrar to look
into these aspects, which includes:
(i) Knowledge or recognition of that mark in the relevant section of public including
knowledge in India obtained as a result of promotion of the trademark.
(ii) Duration, extent and geographical area of use of that mark
(iii) Duration, extent and geographical area of any promotion of the mark, including
advertising or publicity and presentation, at fair or exhibition.

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(iv) Duration and geographical area of any registration of or any publication for
registration of that mark, to the extent they reflect the use or recognition of the mark.
(v) Record of successful enforcement and the extent to which the mark has been
recognized as a Well-known trademark by any court or Registrar.
It must be mentioned here that these factors are only indicative and illustrative and by
no means exhaustive. Registrar is not precluded from taking into consideration other
factor, if found relevant. Also it is not necessary that all the criteria mentioned in the
subsection (6) must be complied with. However, it is mandatory for the Registrar to
take into consideration all these factors and cannot ignore any.
The protection afforded to a well-known trademark is on territorial basis. So the
person seeking protection and enforcement of well-known trademark has to adduce
evidence regarding duration, extent and geographical area of any use of the wellknown trademark. The kinds of evidence may include consumer surveys and opinion
polls, promotion of the mark through advertising in both print and electronic media
etc.
However subsection (9) of section 11 forbids the Registrar to ask for the following as
condition precedent to determine a trademark as well-known trademark. Particularly
that the mark has been used or registered or filed for registration in India or outside
India or that the trademark is well-known to the public at large in India are
specifically excluded from consideration.
Subsection (7) of section 11 indicates the factors to be taken into account by the
Registrar while determining whether a trademark in known or recognized in relevant
section of the public. The inclusion of this phrase indicates that a mark to become a
well-known trademark requires the knowledge on the part of public of relevant section
and not the general public at large. The factors to be taken into account are as under:
(i) Number of actual or potential consumers of the goods or services.
(ii) Number of persons involved with the channels of distribution.

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(iii) Business circles dealing with the goods or services to which that trademark apply.
The number of actual or potential users may vary depending upon the nature of goods
or services. What the Registrar is supposed to do is not to count the numbers of person
physically but to take into account the concerned section of users of those goods or
services. As far as the distribution channels are concerned there has been sea change
in the tradition mode of distribution and supply. The recent growth of super malls has
changed the mode of distribution that must not be lost sight of. The third factor
business circles may include importers, wholesalers, franchisees and other dealers
interested in dealing with the goods or services to which the mark applies.
Sub-section (8) of section 11 says that the determination of trademark as well-known
trademark by any court or judicial authority amongst at least one relevant section of
the public in India shall be taken as well-known mark by Registrar.
Subsection (10) of section 11 casts an obligation on Registrar to protect well-known
trademark while considering the application for registration of any mark and its
opposition thereto. The protection to well known trademarks is afforded against the
identical or similar trademarks39, which may come up for registration to the Registrar.
The underlying principle for according protection to well-known cases is to prevent
traders taking free ride.
They may tend to take advantage of the good will of the well-known trademark
without doing efforts. Thus the Registrar is obliged to take into consideration bad
faith40 while balancing the interests of the parties (both applicant and opponent)
involved in the enforcement of the well-known trademark.
The term bad faith is also read through implication under section 18(1) of the Act,
which provides that any person claiming to be the proprietor of a trademark used or
proposed to be used by him shall apply for the registration of his trademark in a
prescribed form. Thus there is an implication that he intends to use the mark in the
manner applied for and which is nothing but normal and fair use. If the applicants use
39
40

Section 11(10)(i)
Section 11(10)(ii)

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or propose use of the mark in not normal and fair that would bring upon him the
charge that the mark proposed has been applied for in bad faith.
Act does not define the expression bad faith and is left to the Registrar to decide in
each case based upon the facts and circumstances. Bad faith as interpreted by the
courts in India connotes the breach of faith or wilful failure to respond to ones known
obligations or duty. It imports a dishonest purpose or some moral obliquity and
implies conscious doing of wrong. 41 The allegation of bad faith is a serious form of
commercial fraud, which should not be taken lightly.
Subsection (11) of section 11 forms the exception to the subsection (6) to 10 in the
sense that it protects the prior use or prior registration in good faith before the
commencement of the act, of an identical or similar trademark as against well-known
trademark. To get the benefit of this provision, one must show that the prior use or
registration was in good faith. Once this is proved, the right to use the mark cannot be
taken away on the ground that the mark is identical or similar to a well-known
trademark.

41

Bhupinder Singh v State of Rajasthan, AIR 1968 Pun 406 at 411

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BIBLIOGRAPHY

P. Narayanan, Intellectual Property Law, 8th Edition, 2009

W.R. Cornish, Intellectual Property: Patents, Copyright, Trademarks and
Allied Rights, 4th Edn, 2004
S. Venkateswaran, The Law of Trade Marks and Passing-Off, 21st Edition,
2012
B.L. Wadhera, Law Relating to Patents, Trade Marks, Copyright, Designs &
Geographical Indications, 11th Edition, 2012

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