Registration of trademarks in India

This article tries to explain the detailed procedure on registration of

trademarks in india, why it is necessary and it's importance by referring to
the two legislations on trademarks i.e The Trade Marks Act, 1999 and The
Trade Marks Rules, 2002 and amendment rules 2017.

Introduction
Intellectual property is a category of property that includes intangible
creations of the human intellect. Intellectual Property (IP) has been
traditionally categorized into Industrial property and Copyright. The term
Industrial Property includes patents, trademarks, industrial designs, and
geographic indications of source. Copyright protection is granted to protect
literary, artistic and musical works. Intellectual property rights are generally
said to be a bundle of exclusive rights granted to the lawful owner. In this
paper will discuss in detail about Trademark its importance, types and
process of registration.1

Trademark is a type of intellectual property. It can be a word, device, name,

symbol or any combination which is acquired by any institution or company
to show the difference between their product and the products of other
companies. It can also be known as the brand name. Trademark can be
owned by any business organization, individual or any legal entity. Rules and
regulations of trademarks are governed by The Trade Marks Act of 1999, The
Trade Marks Rules of 2002, and The Trade Marks (Amendment) Rules of
2017.

History of Trademarks
The first official trademark law was passed in 1940. However due to its
limitations and non-use, it was replaced by the Trade and Merchandise Act,
1958. In 1994, India became part of the TRIPS Agreements which set basic
standards for intellectual property rights. To meet these basic standards, a
number of amendments were introduced to the trademark laws in India. The
Trade and Merchandise Act, 1958 was revised by the latest Trademark Act of
1999. The main purpose of this act was to improve trading and commercial
practices and develop the globalization of trade and industry. The Trademark
Act, 1999 was governed by the Trademark Rules of 2002.2
Meaning And Definition Of Trade Mark;
Mark has many meanings according to the context in which it is used.
Dictionary meaning is �a sign affixed or impressed for distinction�. The
mark must be used visually and not orally and legally, a trade mark is
recognized as intellectual property. It has no meaning unless it is used in
relation to some goods. The life of a trade mark depends on its use and
continued non-use may lead to its eventual death.

Statutory Definition
The Trademarks Act 1999 came into force with effect from 15-09-2003.
Section 2 (1) (2b) defines trademark as �Trade mark means a mark capable
of being represented graphically and which is capable of distinguishing the
goods or service of one persons from those of others and may include shape
of goods, their packaging and combination of colors.3

Essential Features Of A Trade Mark

A trade mark is visual symbol used in relation to any goods or services to
indicate some kind of trade connection between the goods or services and
the person using the mark. In order to bring it within the scope of the
statutory definition, a trade mark should satisfy the following essential
requirements;

1. It must be a mark that is a device, brand, heading, label, ticket, name

or an abbreviation of a name, signature, word, letter or numeral
shape of goods, packing or combination of colors or any combination
thereof.
2. It must be capable of being represented graphically.
3. It must be capable of distinguishing the goods or services of one
person from those of others.
4. It must be used or proposed to be used in relation to goods or
services.
5. The use must be of a printed or other visual representation of the
mark.
6. In relation to services, it must be the use of the mark or availability or
performance of services.
7. The use must be for the purpose of indicating the connection in the
course of trade between the goods or services, and some person
having the right to use the mark either as proprietor or by way of
 permitted user as the case may be. It is not necessary that the person
using the mark should reveal his identity.4

Importance of trademarks 5
Importance and justification of trade mark in present global business
environment are:

i. Economic justification
From the economic point of view, a trade mark is merely a symbol
that allows a purchaser to identify goods or service that have been
satisfactory in the past and distinguish the goods or service that have
failed to give satisfaction. Trade marks perform two important market
functions:

i. They encourage the production of quality products and

ii. They reduce customer's cost of shopping and making
purchase decisions.

Trade marks play a crucial role in own free market economic system.
�

ii. Quality Justification

An important purpose underlying trade mark law is the protection of
the trade mark owner's investment in the quality of the mark and the
quality of the goods or service, which the mark identifies. A certain
amount of image differentiation also helps consumers select products
of high quality and reliability. It motivates producers to maintain
adequate quality standards.
�
iii. Advertising Justification
A trade mark is species of advertising, its purpose being to fix the
identity of the product and the name of the producer in the minds of
the people, who see the advertisement for marketing decisions. If the
trade mark owner succeeds in creating a favourable image for the
trade mark in the market place, the mark itself can become a
significant factor in stimulating sales. The ability of a mark to generate
goodwill through advertising has also gained recognition under the
law of trade mark.
Advantages of Registering a Trademark
There are many advantages of registering a trademark. Some of them
are:
Trademarks make it easier for your customer base to find you: Trademarks
distinguish your services and products from those of your competitors. This
identifies you as the source and indicates a consistent level of quality of your
services and products. Trademarks also increase brand awareness and
goodwill.

Trademarks help prevent marketplace confusion: Trademarks prevent

confusion as to the source of the goods and services.

Trademarks are economically efficient tools: Trademarks create a face value

in the market among competitors. Furthermore, they give your business a
monopoly over the brand name.

Types of Trademarks 6
Various types of trademarks are registered under the Trademarks Act,
1999:
Product Mark
A product mark is a type of trademark which is used on a business good
rather than on service. This trademark is mainly used to identify the origin of
the product and helps in maintaining the reputation of the business. For
example, Nestle, Amul, etc.

Service Mark
A service mark is quite similar to the product mark but service marks are
used to identify the services of the entity rather than a product. These are
used to identify the proprietors from the owners of other services. For
example, the trademark for network and broadcasting services as they help
the service provided. Applications that are filed under trademark class 35-45
represent the service mark. For example, Apple, Google, etc.

Collective Mark
A collective mark is registered in the name of groups or organizations. These
are used to inform the public about the group during commercial activities.
When a group of individuals protects a service or goods collectively, this mark
is used. Any association or any public institution or a Section 8 Company can
be a mark holder. A common example of a collective mark in India is the
Chartered Accountant designation. For example, Reliance Communications,
Tata Sons, etc.

Certification Mark
This mark is a sign which shows the origin of the product, quality, material or
any other specific details of the product issued by the proprietor. The main
use of this mark is to standard and worth of the product. Certification marks
are commonly seen on packed foods, toys, and electronics. For Example, ISI,
ISO, etc.

Registration of trademarks
The registration process in India is a �first to file' basis. Therefore, it is
important to apply for registration as soon as possible. A trademark usually
takes 2-3 years to get registered, if the trademark is not being opposed by a
third party.� Trademark applications are handled by the Office of the
Controller General of Patents, Trade Marks, Industrial Designs and
Geographical Indications. Branches for these offices are available in Mumbai,
Kolkata, Ahmedabad, Delhi and Chennai. The application must be filled as per
territorial jurisdiction. And as per provisions of trademarks act,1999 section
18.

To register a trademark in India the following steps must be followed:

Select a trademark agent in India: Proprietors are only allowed to file a

trademark application if their place of business is in India. If this is not the
case, the right holder must file a trademark application through an agent or
attorney. The agent or attorney usually takes care of the trivialities such as
searching, preparing, filing and prosecution of the trademark.

Determination of the eligibility and availability of the trademark: The agent

usually starts the registration process by determining whether the trademark
is eligible for registration and conducting a clearance search to see if there is
a similar mark in the office of the controller general.

Completing the application form and filing: If the trademark agent has the
power of attorney from the right holder he can complete and file the
application form. The form will require details such as name and address of
the proprietor, a description of the goods and services associated with the
mark, whether the mark is in use and a copy of the mark.

Review by the trademark office: The trademark office reviews the application
to see if it is complete and then allots the application a number. If the
trademark is registered, this number becomes the registration number.

Preliminary approval and publication, show cause hearing or rejection of the

application: The trademark association determines if the application is barred
from registration either on absolute or relative grounds for refusal as
prescribed in the Trade Marks Act, 1999.

Objection
After the examiner has scrutinized the mark up for registration he may object
to its registration. In this case, the status of the application will show
�Objected�.

At this point, the applicant has the chance to put forward his case to the
examiner. Usually, the objection is either raised under Section 9 or 11 of the
Act.

Objection under Section 9

Section 9 of the Act gives absolute grounds for refusal of registration. Section
9 rejects any mark that is:

 descriptive,
 generic,
 deceptive of origin of goods or services,
 deceptive about the nature of the goods or services,
 deceptive about the quality of the goods or services

Objection under section 11

Section 11 of the Act provides for relative grounds for refusal. If the examiner
objects under this section it will be due to the mark having similarities with an
already registered trademark. In this case, the examiner will attach the
conflicting parts of the mark as well as the trademarks that it is conflicting
with. At this point, the applicant has to overcome the objections placed by the
examiner. This has to be done according to the section under which the
objection has been raised.

Section 9 of the Act

To counter this objection the applicant has to prove that the mark of the
applicant can be easily distinguished by the consumer pertaining to the
goods or services provided.

For example Apple the electronic company has the trademark of an apple
and therefore can be deceptive on the product sold by the company. Even so,
it can be proved that the mark has since acquired a distinctive meaning and
is easily recognizable by consumers as to the products sold are electronics.

Section 11 of the Act

Here the applicant has two options:
Contest that the mark is different from the conflicting mark. In this case, he
must prove that his mark is distinctively different from the conflicting mark
and can definitely by distinguished as two separate marks.

Get a no objection affidavit from the owner of the conflicting registered mark.

After this, they issue an examination report within a period of one month.
The applicant has to reply to the examination report within one month.
Depending on the examination report the registrar of the trademark
determines whether the application must be accepted, rejected or put up for
�show cause. During a �show cause hearing' subject to the facts an
application might be rejected, accepted or accepted with certain limitations. If
the application is rejected, the applicant can appeal at the Intellectual
Property Appellate Board within 3 months of issue of rejection order from
the registrar.

Whereas, if the application for registration has been accepted by the registrar
after examining the report issued by the examiner then the mark will be
published in the official gazette, the Trademark Journal as per the provisions
of Trademark Act, 1999 under section 20 i.e advertisement of application.

Upon publishing it on the Journal within 4 months, will be open for the public
or third parties to object to the registration of the trademark. If there are no
objections then the trademark will be registered and the applicant will be
given the registration certificate as under section 23 of Trademark Act, 1999
and he will be protected for ten years from the date the application was filed
as under section 25 for renewal from time to time in accordance with the
provisions of the section.

However, if the application for registration of trademark has been opposed

by the public or any third party during the period of 4 months then begins
the opposition proceedings.

Opposition Proceedings
Section 21 of the Trade Marks Act, 19999 deals with opposition to registration
and is read in conjunction with The Trade Marks Rules, 2002, rule 42 to 4710
deals with the same.

Rule 42. Notice of Opposition:

A notice of opposition to the registration of a trademark under sub-section
(1) of section 21, with such particulars as specified in Rule 43, shall be filed in
form TM-O within four months from the date of publication of the trademark
journal in which the application for registration of the trademark was
advertised or re advertised.

Rule 43. Requirements of Notice of Opposition.- A notice of opposition shall

contain:

a. in respect of an application against which opposition is entered,

b. in respect of the earlier trademark or the earlier right on which the
opposition is based,
c. in respect of the opposing party,
d. The grounds on which the opposition is based.
�

Rule 44:
The counterstatement required by sub-section (2) of section 21 shall be sent
on Form TM-O within two months from the receipt by the applicant of the
copy of the notice of opposition from the Registrar and shall set out what
facts, if any, alleged in the notice of opposition, are admitted by the applicant.
A copy of the counterstatement shall be ordinarily served by the Registrar to
the opponent within two months from the date of receipt of the same.

Rule 45. Evidence in support of opposition:

 1. Within two months from� service of a copy of the counterstatement,
the opponent shall either leave with the Registrar, such evidence by
way of affidavit as he may desire to adduce in support of his
opposition or shall intimate to the Registrar and to the applicant in
writing that he does not desire to adduce evidence in support of his
opposition but intends to rely on the facts stated in the notice of
opposition. He shall deliver to the applicant copies of any evidence
including exhibits, if any, that he leaves with the Registrar under this
sub-rule and intimate the Registrar in writing of such delivery.

If an opponent takes no action under sub-rule (1) within the time mentioned
therein, he shall be deemed to have abandoned his opposition.

Rule 46. Evidence in support of application:

1. Within two months on the receipt by the applicant of the copies of

affidavits in support of opposition or of the intimation that the
opponent does not desire to adduce any evidence in support of his
opposition, the applicant shall leave with the Registrar such evidence
by way of affidavit as he desires to adduce in support of his
application and shall deliver to the opponent copies thereof or shall�
intimate to the Registrar and the opponent that he does not desire to
adduce any evidence but intends to rely on the facts stated in the
counterstatement and or on the evidence already left by him in
connection with the application in question.� In case the applicant
adduces any evidence or relies on any evidence already left by him in
connection with the application, he shall deliver to the opponent
copies of the same, including exhibits, if any, and shall intimate the
Registrar in writing of such delivery.

If an applicant takes no action under sub-rule (1) within the time mentioned
therein, he shall be deemed to have abandoned his application.
Rule 47. Evidence in reply by opponent:
Within one month from the receipt by the opponent of the copies of the
applicant's affidavit the opponent may leave with the Registrar evidence by
affidavit in reply and shall deliver to the applicant copies of the same
including exhibits, if any, and shall intimate the Registrar in writing of such
delivery.
Rule 50. Hearing and decision. - The Registrar, after the closure of the
evidence, shall give notice to the parties of the first date of hearing. The date
of hearing shall be for a date at least one month after the date of the first
notice.
The registrar may call for a hearing between the two parties. He then will
then rule based on the submissions of the two parties. If he rules in favour of
the applicant the trademark will be registered. If he rules in favour of the
opposing party, the trademark will be removed from the Journal and the
application for registration will be rejected.

Appeal
The Trade Marks Act, 1999 under section 9111 deals with appeal to appellate
board.
If the registration is refused the applicant has the final option of appealing to
the Intellectual Property Appellate Board (hereinafter referred to as IPAB). An
appeal to the IPAB must e filed within three months of the date of issuance of
the refusal order by the registrar. This time limit may be extended if the
appellant can show reasonable cause as to why he could only approach the
IPAB after the time limit.

Appeal to the IPAB has two different processes depending on the type of
trademark registration that was sought after by the applicant/appellant. The
appeal must be filed in the prescribed manner following the Trade Marks
(Applications, Appeals and Fees to the Intellectual Property Appellate Board)
Rules.

Once the case is registered the IPAB will hear the case. The place of the
hearing will be decided upon the jurisdiction under which the case falls
according to rule 2(m). A date will be given for the hearing of the case. The
hearing will follow as such.

The IPAB will decide on the case based on the submissions made by the two
parties.
If one party fails to present themselves on the day of the hearing, the IPAB
can:
Rule on the merits of the case
Give an order ex parte (in the absence of one party)

Dismiss the case

If the case is dismissed or is ruled ex parte a period of 30 days from the date
of the ruling is given to file a petition against the earlier order.

The case will be heard and the order passed by the IPAB will stand. If the
applicant is aggrieved by the order passed by the IPAB he still has the option
to file an appeal to the corresponding High Court. Further appeal can also be
filed to the Supreme Court of India.12

Conclusion
At the end of this paper we now understand how important it is to register
your trade and what is the procedure to register the trademark which
protects your companys goodwill. Trademarks are the exclusive rights which
a person enjoys with respect of his good and services. It allows the owners to
have the benefits from their works when these are exploited commercially. A
party who holds the rights to a certain trademark can sue other parties for
trademark infringement.

What Is The Procedure To

Register A Trademark In
India
A trademark is a symbol, name, word, device or any combination
which is adopted by a company to distinguish their products from
the rest. It is often referred to as brand name. The Trade Marks
Act, 1999 and Trade Marks Rules, 2002 governs the laws with
respects trademarks.

History of Trademarks
The first official trademark law was passed in 1940. However due
to its limitations and non-use, it was replaced by the Trade and
Merchandise Act, 1958. In 1994, India became part of the TRIPS
Agreements which set basic standards for intellectual property
rights. To meet these basic standards, a number of amendments
were introduced to the trademark laws in India. These
amendments were made by replacing the former act with the
Trade Marks Act, 1999 and the Trade Marks Rules, 2002.

Advantages of Registering a Trademark

There are many advantages of registering a trademark. Some of
them are:-
  Trademarks make it easier for your customer base
to find you: Trademarks distinguish your services and
products from those of your competitors. This identifies
you as the source and indicates a consistent level of
quality of your services and products. Trademarks also
increase brand awareness and goodwill.
 Trademarks help prevent marketplace
confusion: Trademarks prevent confusion as to the
source of the goods and services.
 Trademarks are economically efficient
tools: Trademarks create a face value in the market
among competitors. Furthermore, they give your
business a monopoly over the brand name.

Types of Trademarks
Under the Trade Marks Act, 1999 the different types of trademarks
that can be registered are:-

 Product Trademarks: They are trademarks attached to

identify the business’s products.
 Service Trademarks: They are used to identify the
services of the entity. For instance, the trademark for
network and broadcasting service. They help advertise
the service provided.
 Collective Trademarks: These trademarks are
registered in the name of groups or organizations. They
help people associate members with the group during
commercial activities.
 Certification Trademarks: They are certifying
trademarks which help people judge the quality, material
used, origin and other specific features of goods and
services.

How to Register Trademarks

The registration process in India is a ‘first to file’ basis. Therefore,
it is important to apply for registration as soon as possible. A
trademark usually takes 2-3 years to get registered, if the
trademark is not being opposed by a third party[1]. Trademark
applications are handled by the Office of the Controller General of
Patents, Trade Marks, Industrial Designs and Geographical
Indications. Branches for these offices are available in Mumbai,
Kolkata, Ahmedabad, Delhi and Chennai. The application must be
filled as per territorial jurisdiction. To register a trademark in India
the following steps must be followed:-

 Select a trademark agent in India: Proprietors are

only allowed to file a trademark application if their place
of business is in India. If this is not the case, the right
holder must file a trademark application through an
agent or attorney. The agent or attorney usually takes
care of the trivialities such as searching, preparing, filing
and prosecution of the trademark.
 Determination of the eligibility and availability of
the trademark: The agent usually starts the registration
process by determining whether the trademark is eligible
for registration and conducting a clearance search to see
if there is a similar mark in the office of the controller
general.
 Completing the application form and filing: If the
trademark agent has the power of attorney from the right
holder he can complete and file the application form. The
form will require details such as name and address of the
proprietor, a description of the goods and services
associated with the mark, whether the mark is in use and
a copy of the mark.
 Review by the trademark office: The trademark office
reviews the application to see if it is complete and then
allots the application a number. If the trademark is
registered, this number becomes the registration
number.
 Preliminary approval and publication, show cause
hearing or rejection of the application: The
trademark association determines if the application is
barred from registration either on absolute or relative
grounds for refusal as prescribed in the Trade Marks Act,
1999. After this, they issue an examination report within
a period of one month. Depending on the examination
report the registrar of the trademark determines whether
the application must be accepted, rejected or put up for
 ‘show cause ‘ During a ‘show cause hearing’ subject to
the facts an application might be rejected, accepted or
accepted with certain limitations. If the application is
rejected, the applicant can appeal at the Intellectual
Property Appellate.
 Registration: Within the term of three months
publication in the Trademarks Journal, if not opposed by
a third party, the trademark will proceed for registration
and the trademark authority will proceed to give a
registration certificate.

Conclusion
Trademarks are a cost effective of way of advertising your
business. It is important to register a trademark as soon as
possible.
Procedure of Registration and
Protection of Trademark in India
Introduction:
India, with its blooming entrepreneurship programmes and
national projects like “Make in India”, has increasingly widened the
scope of various small as well as big business and with that the
necessity of trade mark registration comes as a corollary. But, the
legislation to regulate the trade mark is not a new concept before
this Government which is proved by the enactment of The Trade
Marks Act, 1999[1] and India’s participation in Madrid
protocol[2] in 2013.

As the Hon’ble Supreme Court interprets the object of trade Marks

Law in India that the law of Trademark is to secure those
businessmen and proprietors who sells their goods and services
with distinct registered trademark and protect them against any
business malpractice with the intention of harming or taking
advantage of the previous businessman.[3]

In this context, this article put forward an exhaustive compilation

of the procedure of registration and protection of the registration
in India as well as in trans-border platform.

Procedure for registration of trademark:

Under Section 6[4] of the Trade Marks Act, 1999, a register, either
in papers or digital form shall keep the records, wholly or partly, of
all trade marks with the names, address, description of the
proprietor’s notifications and assignments, except any trust and be
kept at every office premises of the Trade Marks Registry.

The Registrar shall be liable, under Section 7[5], to classify the

concerned goods and services in accordance with the international
classification of goods and services for the Trade marks
registration. Also, the it would be upon the discretion of the
registrar to decide any question which may arise in deciding the
class in which the goods and services are to fall. Under the Chapter
III of the Trademark Act, 1999 the procedure is dealt with in
multiple steps.[7] The procedures of Registration can be divided
into 4 main heads mainly,

1. Application for Registration

2. Advertisement notice for any opposition

3. Amends and Correction

4. Registration.

1. Application for Registration :

According to the Section 18 of the Act[8], a person or persons who
wishes or jointly wish, as the case may be, to be the proprietor of a
trademark used or supposedly used by him, shall apply in a single
application for its registration for different classes of services and
goods in the office of the Trade Marks Registry, which is situated
within the territorial limits of principle place of business of India
and the person or the person whose name first mentioned in the
case of joint applicants, has his business in India. If the Registrar
believes that there is a ground for refusal or conditional acceptance
of the application and can be the subject of amendments,
modifications, conditions or limitations etc, then it would depend
on valid grounds mentioned by the Registrar. Further, if the
Registrar believes that the application for registration of a
trademark has been accepted under i) in error or ii) in the
circumstances of the case it should not be accepted or is a matter
of limitation, conditions additional or different from the conditions
and limitations of the accepted application, can withdraw the same
application under Section 19[9].
2. Advertisement or Notice in public for
opposition:
After the application has been accepted, with conditions and
limitations, if any, should be advertised according to the provisions
of Section 20 [10]. If, within three succeeding months from the
application, any objection arises from the part of any public the
registrar must consider so and ask the aggrieved party to make a
counter application repealing the previous application in the said
manner and also permit any correction of any error as it may follow.

3. Amendment and correction:

The Registrar, if feels fit, at anything, before or after the acceptance
of the said application for registration under section 18[11], may
permit the correction of any error that may follow under the
Section 22[12].

4. Registration:
Under the Section 23[13], the applications which 1. are not
opposed and time for notice of opposition has expired or, 2. were
opposed but the objection was in favour of applicant, will be
registered. According to sub-clause 2, the applicants will be
provided with a certificate in the prescribed form of registration
after the trade mark registration. Unless the Registration of trade
mark is completed within 12 months of its application, will be
treated as abandoned. Under sub-clause 4, the Registrar is allowed
to permit an amendment the register or the certificate for mending
the clerical mistakes.

In case of Superon Schweisstechnik India v. Modi Hitech India

Ltd.[14] (2018) 250 DLT 308, the question arises whether trade mark
over a abbreviated title can be registered. The plaintiff, with distinct
registered trade mark “Superon” sells goods that of the same as
the defendant, which has very different primary trade mark “GMM”.
While the plaintiff used the “VAC PAC” as an abbreviated form
Vacuum Package and claimed to have ownership on the same and
demanded permanent retainment order in the usage of the same.
Under Section 9(1)(a), which purports absolute grounds for refusal
of registration and Sec 11(3)(a), of the relative grounds for refusal
in addition to law of passing of, the Court determined that merely
abbreviation of words cannot be claimed to have any trade mark
ownership. In the judgment, the Court also considered Godfrey
Phillips India Limited case and came to the conclusion that the
primary trademarks were contrasting in this case and the plaintiff
having no real prospect to succeed, cannot claim the ownership of
trademark on the abbreviated word.

Protection of Trade
mark:
Chapter IV[15] deals with the effect of registration and the
beneficiary protections endorsed in favour of the registered trade
mark.

Under the section 25[16], it is given that the duration for the
registration would be for 10 consecutive years and then, then it has
to be renewed from time to time in accordance to this section.

The registration of trade mark also guarantees some rights

protecting the trade mark which is explicitly mentioned under
chapter IV and some under Chapter II of the same Act.

The registration of Trade mark can absolutely be refused under

Section 9[17], on the ground, that (a)it has no distinctive character
which separates others goods from the concerned goods (b)
includes the mark designating the kind, quality, quantity, intended
purpose, values, geographical origin, or time of the production of
the goods or which also renders the other characteristics of the
goods or services. (c) consists of the marks or indications which has
achieved a status of customary title in the current language or in
the practices thereof.

The registration can also be subject to refusal on the following

relative grounds[18], that (a) it is identical to the earlier trade mark
and similar to the goods and services provided (b) similar to earlier
trade mark and identical to the goods and services. But if the case
arises where (a) the concerned trade mark is identical or similar and
(b) The goods and services concerned are not similar to the goods
and services which were earlier registered, the trade mark can still
be repealed if, the earlier trade gained wide reputation on the
same and using it on the same repute would be unfair advantage
of or detrimental to the earlier trade mark.

According to Section 28(1)[19], the registration of the trade mark

gives the registered proprietor the exclusive right to use the trade
mark vis a vis the goods and services which were registered under
the trade mark and therefore the conditions and limitations are also
considered. It also to be noted under sub-clause 3, that if a trade
mark is being registered jointly, it does not give exclusive right to
one of the applicants to enjoy against another.

This Act also provides for the protection against any infringement
of the trade mark. For the purpose of understanding the conditions
of infringement, under Section 29(4)[20], it can be categorized into
3 groups, that,

(a) the trademark is identical or similar to the registered trade mark.

(b) the use is made in relation to goods and services which are not
registered under similar registration.

(c) the registered trademark is widely known throughout the

country and using it by others is detrimental to its repute.

So, both, the mark and the goods and services rendered can be
identical, or the former, identical and the latter one, similar, the
latter one identical and the former one similar. This, according to
sub-clause 2 will be regarded as infringement.

In case of Mankind Pharma Limited v. Chandra Mani Tiwari &

Anr.[21] , it was held by the Court that the proprietor can enjoy
absolute monopoly over the registered goods and services only
and cannot exercise this ownership over all kind of goods under
the same class.

The registration, itself provides prima facie evidence of the validity

of the trade mark under Section 31[22]. In case, the registered trade
mark has acquired a distinctive character regarding certain goods
and services before the commencement of any legal proceeding
which challenges the validity, the trade mark cannot be held invalid.

In case of Havells India Ltd. & Anr. v. Amritanshu Khaitan & Ors[23].,
the defendant, Everyday India Ltd. compared their LED with the
defendant’s LED with a statement “check lumens and price before
you buy”. The Plaintiff claimed that it was intended to disparaging
their business by this misleading advertisement. The Court
dismissed the case on the ground that mere trade puffery, even
though enraging the other rivals does not make it infringement of
trade mark.

It is interesting to note that this Act also provides Rights for the
successor of the similar trade mark which is used in relation to the
same goods, if (a) the former proprietor used it prior to the
concerned proprietor in trading the similar goods and services. (b)
earlier used prior to the registration of the trade mark by the
concerned proprietor.

By the virtue of Section 35[24], the registered trademark having

name, address of business or, of the name, or of the name of the
place of the business or any predecessors or any other bonafied
person, in relation to any good or services, is exclusively enjoyed
by the registered proprietor and cannot be interfered by any other
registered trade mark owner.
Further for one’s business to flourish on international platform, it is
required to register the trade mark under one or more international
protocols or treaties. There are multiple resources for the trade
mark to be registered on International horizons and secure it. The
most significant ones are as follows:

1. Paris Convention on trade mark: like the pioneer of Human

Right convention, Paris held the oldest protocol of all conventions
for protection of intellectual property with more than 170
membership and are located in almost all countries.[25]

2. Agreement on Trade Related Aspects of Intellectual

Property Rights (TRIPS): With the initiative of World Trade
Organization (WTO), in 1995 introduced TRIPS agreement with the
intention of smoothing the process of registration of trade mark
out.[26]

3. Madrid system: This protocol was an evolved form of the

Madrid Agreement, 1891 and was enforced in 1995. It provides
cost-effective and efficient way of registering the trade mark and
facilitates the managing of the same and is managed by WIPO[27].

4. European Community Trade mark (EUTM): it is a child of

European Union (EU). With the EU countries, and this institution the
proprietor can easily register his trade mark for his business and
secure his mark on international platform as well[28].

In the landmark judgment regarding the Trans-border Reputation,

the Supreme Court recognized and interpreted the trade mark
regulations and concepts. In N.R. Dongre v. Whirlpool
Corporation[29], it was held that the trademark “Whirlpool” has
obtained reputation through out the country and the whirlpool
corporation has also acquired the goodwill of business and hence,
the trade mark of “Whirlpool” has acquired Trans-border
reputation.
Conclusion: Even though with the growing facilitated
circumstances, the number of new businesses is increasing in the
market, yet the owners of a trade are still unaware of the
legislations and facilities to protect their trade and helping the
business tycoons to steal their ideas of trade.

With the afore-mentioned procedures and institutions to register

and secure the trades, the author wishes to make the general
members of our trading fraternity to become aware and take steps
to secure their creation.