LAW OF TRADEMARKS

Archana K.
Assistant Professor in Law
KSLU’s Law School
Dharwad
• Trade Mark is a sign or symbol which is used by
a person to distinguish his goods or articles
from the goods or articles of others.
• Trade Mark has been recognized as a very
valuable form of Intellectual Property, because
it is associated with quality and consumer
protection in a product or service.
 Purposes of trademark

Trade mark protection serves two purposes-

o To protect business reputation and goodwill.
o Secondly, to protect consumers from deception to
prevent the buying public purchasing inferior goods
or services in the mistaken belief that they originate
from or are provided by another trader. No one
should encash upon the goodwill and reputation of
the prior user. Reputation is not gained within a day.
It is gained over the years and at the huge cost of
advertisement.
 FUNCTIONS OF TRADE MARK

• TM may be used to indicate that the goods are of

a particular maker
• It serves the purpose of identifying the source of
origin of goods.
• Trade Mark is essentially adopted to advertise
one’s product and to make it known to the
purchaser.
• Trade mark gives an indication to the buyers or
prospective buyers as to the identity of
manufacturer or quality of goods or source from
which goods have come.
• Originally, marks were placed on objects to
identify ownership and to deter would be
thieves. By this way the ancient people tried to
control low quality goods, and as the maker of
the product was identified automatically the
infringers were punished.
• The more a trademark came to be known the
more it inspired confidence in the goods and
services to potential clients.
• When a mark was placed it meant that any other
third party other than the manufacturer did not
have any right over it, in a large way it helped
deter people with vested interest.
• In the middle ages two basic kinds of marks
could be found:-
o Merchants Mark
o Production Mark
• The Merchants Mark indicated ownership
whereas the Production mark indicated the
Origin. Production marks were used by guilds
to guarantee quality and to control entry to
particular trade
• Prior to 1940 there was no official trademark
Law in India.
• Numerous problems arouse on infringement, law
of passing off etc., and these were solved by
application of section 54 of the specific relief act
1877(perpetual injunction order) and the
registration was obviously adjudicated by
obtaining a declaration as to the ownership of a
trademark under Indian Registration Act 1908.
• To overcome the difficulties the Indian Trademarks
Act was passed in 1940, this corresponded with the
English Trademarks Act, 1938
• After independence there was an increasing need for
more protection of Trademarks as there was a major
growth in Trade and Commerce.
• Further the Act of 1940 was not suitable to India.
Hence the Trademark enquiry committee was
constituted by the government of India in November
1953.
• The members of the committee had divergent
opinion.
• later Mr. Justice Rajagopala Aiyangar was appointed
by the government of India to examine the
Trademarks Act, 1940 with reference to the report
made by the committee
• He had to recommend the necessary changes to
be made to the existing law
• On the basis of report of Mr. Justice Ayyangar the
replacement of the Act was made and the new
Act was enacted, known as the Trade and
Merchandise Marks Act 1958.
• The Act consolidated the Trademarks Act, 1940,
the Indian Merchandise Marks Act, 1889 and the
provisions relating to Trademarks in the Indian
penal code.
• The Act was brought in to force on 25th
November 1959
• This Act was made
– to provide for registration and better
protection of Trademarks
– for prevention of the use of fraudulent marks
on merchandise.
– This Law also enables the proprietor of the
trademark to get legal right to exclusively use
the trademark.
• Certain minor amendments were carried out by
repealing and amending the Act in 1960
• The process of enacting a new legislation for
trademark protection started as there was a
tremendous change in the trade and business
sector.
• The Trademarks Bill 1993 was introduced in 1993
in the Lok Sabha on 19th May 1993 and it was
passed by the Lok Sabha on the lines
recommended by the standing committee
• But the Bill failed to get through Rajya Sabha and
before re–submission, the Lok Sabha got dissolved
• To have compliance with the TRIPS obligation on
the recommendation of the World Trade
Organisation, Government of India introduced a
new Bill titled as Trademarks Bill, 1999 in Rajya
Sabha and eventually passed by both the Houses
of the Parliament and named as ‘the Trademarks
Act, 1999’
• Object of the 1999 Act is to confer the protection
to the user of the trademark on his goods and
prescribe conditions on acquisition, and legal
remedies for enforcement of trademark rights.
• Special features of the Act are-
i. Protection of service marks
ii. provision of registration for collective marks,
iii. differentiating well known trademarks and
trademarks in general, and
iv. special treatment and rights are envisaged for
well known trademarks.
v. The Act of 1999 also gives police the right to
arrest in case of infringement.
 Definition of trademark
Section 2(1) (zb) defines Trade Mark as-
“Trade Mark means a mark capable of being
represented graphically and which is capable
of distinguishing goods or services of one
person from those of others and may include
shape of goods, their packaging and
combination of colours”.
 Requirements of Trademark

• Definition of Mark
• Section 2(1) (m) of TM Act, 1999 defines ‘Mark’ as:
• “Mark includes a – Device, brand, heading, label, ticket,
name, signature, word, letter, numeral, shape of goods,
packing or combination of colours or any combination
thereof.”
• Device Marks are:
• Heading:

Label:

• Ticket:
 Name, Signature, Word, Letter,
Numeral
• Examples for name marks: Deepam Oil, Bindu Mineral water,
Bajaj Home appliances, Mahindra etc.
• Signature marks:

• Word Marks: Yahoo!, Bata, Prestige, etc.

• Letter Mark:

• Numeral Marks:
• A word or grouping of letters is the most common type of
mark. Which includes brand names also. Examples are:
Colgate, Bata, NBC, etc.
• Shape of goods:

• Packing:

•
• Combination of colours:
• Combination:
A trademark might be a combination of
letters and a design, such as:
 Graphical representation
• While Graphical representation enables authorities to identify
the goods, the visual representation enables the consumer
and the courts distinguish the goods of manufacturer from
that of the others.
• Two main components to identify goods are:
i. Vertical Identity- it means nomenclature of the
company or the trade name of the manufacturer
ii. Visual Identity -means the mark used by the
manufacturer/trader to distinguish his goods from goods
of others.
• Three ways of identifying visual identity are :
a. Identity created out of letter (name, signature, word, letter)
b. Symbol (brand, logo, device, label, ticket)
c. Physical appearance of a product (shape, colour or packaging)
 3. Distinctiveness
• Distinctiveness under the Act implies that the mark
should be so adapted so as to distinguish the goods
from those of the other manufacturers or trademark
proprietor
• This implies the underlying justification of source
determination and advertising functions of the mark
• Distinctiveness means some quality in the trade mark
which earmarks the goods so marked as distinct from
those of other producers of such goods.
• Distinctiveness may be class dependent.
• What is distinctive in relation to one class of goods
may not be so in relation to another class of goods.
• The TM may be united wholly to one or more specified
colours and this colour combination may become the
distinctive character of the particular mark.
• Distinctiveness may be inherent or acquired.
Inherent distinctiveness means that the mark or
get up is distinct in itself from everything else and no
one can justifiably claim the right to use it.
• E.g. ‘RIN’, ‘ZEN’.
• Acquired distinctiveness means –
Distinctiveness through use.
Concept of Distinctiveness

• There are some basic principles or concepts

required in trademark law. They are-
• Arranged in the order of increasing eligibility for
registration, there are five classes of trademarks –
1. Generic
2. Descriptive
3. Suggestive
4. Arbitrary or
5. Fanciful
Generic
• A genericized trademark or proprietary eponym, is
a trademark or brand name that, because of its popularity
or significance, has become the generic term for, or
synonymous with, a general class of products or services,
usually against the intentions of the trademark's owner.
•
For example:
• Apple is a generic name if used to apples but with
respect to computers the same has acquired a secondary
meaning. Hence it is protectable
• Descriptive

• The term is descriptive if it forthwith conveys on

immediately to one seeing or hearing it knowledge
of the ingredients, qualities or characteristics of the
goods or services with which it is used
• For example:

Cold for Ice creams

Fit for shirts

Glass for Spectaculars
• In Hindustan Development Corporation Ltd. v. The
Deputy Registrar of Trade Marks, the Calcutta High
Court held that the word ‘character’ or ‘quality’ of the
goods meant their nature or peculiarity or quality and
not merely their composition.
• Descriptive words are different from suggestive words.
• A trade mark is descriptive if it imparts information
directly.
• However if it stands for some idea which requires some
imagination to connect it with the goods it is
suggestive. Descriptive words are not registrable,
whereas suggestive words may be registered as trade
mark provided they have distinctive character.
• Suggestive Marks
• A mark is suggestive of imagination, thought or
perception is required to reach a conclusion on the
nature of the goods or services
• The test for determining whether a term is suggestive is
when it requires using imagination thought and
perception
• These marks are entitled for registration without proof of
secondary meaning
• But the same is not easy to prove. Mere proof of non
descriptiveness itself would entail negative arguments .
• Example:

Ideal Ice creams

• Arbitrary or Fanciful Marks
• Also known as “technical trademarks”.
• These marks may be registered without any proof
of any secondary meaning , i.e., without any
demonstration that the public in fact recognises
these terms or symbols as indications of the
source of the goods or services.
• Example:
Secondary Meaning/ Acquired Distinctiveness

• Proof of secondary meaning is not necessary to

establish legal protection for all kinds of trademarks
• Marks that are inherently distinctive are capable of
functioning immediately upon use as a symbol of
origin i.e., as trademark
• Inherently distinctive marks are given legal
protection immediately upon adoption and use
• But, in spite of the absence of a sufficient
distinguishing characteristic in the mark itself,
distinctiveness could be acquired by appropriate
user thereby overcoming a negative quality in the
mark
 Basic requirement of trademark law

1. Distinctiveness
2. Non- functionality
3. Non-Dilution
Doctrine of Functionality

Functionality is another criterion to determine

whether a trademark is registrable one or not
• The job of trademark law is not to grant
protections that patent law is given charge of.
• If the same were made possible the law would
enable that without complying with patent
specifications a manufacturer could get a
trademark protection for his inventions
• This would enable trademark law that is aimed at
inhibiting unfair competition to be used to
proliferate and advance the same sought to be
inhibited
• Hence before granting protection one has to find
out the difference between the product and a
trademark and only the trademark can determine
the source of the product
• This concept entails utilitarian element- implying
superior in function by virtue of that feature
• There are two branches of the functionality
doctrine:
• Utilitarian Functionality; and
• Aesthetic Functionality.
• The rationale behind functionality doctrine is that
product markets would not be truly competitive if
newcomers could not make a product with a
feature that consumers demand.
• The trademarks should represent the identity of
the proprietor and nothing else.
Utilitarian Functionality
Courts will look to the following factors when
determining utilitarian functionality:
• A feature is essential to the use of the product; or
• A feature changes the cost or quality of the product;
or
• Granting trademark registration for the product
feature would put competitors at a significant
disadvantage.
• In other words, the more essential the product
feature is to the functioning of the product the more
likely the feature will not be granted trademark rights.
• Colors can be trademarks, the color orange for a cone
cannot be a trademark because orange serves a
functional purpose, i.e. so people can more easily see
the cone.
 Aesthetic Functionality

• The “functionality” doctrine exists to stop a

party from obtaining exclusive trade dress or
trademark rights in the functional features of
a product or its packaging.
• When the aesthetic development of the good
is intended to enhance the design and make
the product more commercially desirable,
trademark protection may be denied because
the consumer is drawn to the design.
• The underlying theory as aesthetics become
integrated with functionality, the resulting
product strongly resembles product design,
which may receive no trademark protection
absent secondary meaning.
Doctrine of Dilution

• Use of any mark identical or similar to a registered

trademark is prohibited even if the goods and
services in respect of which the mark is sought to
be used is not connected with the goods and
services for which the senior mark is registered
• It is based on the principle of unfair competition as
per which a party should not be allowed to make
profits on the goodwill and reputation of an
existing mark by the use of another similar or
identical mark
• This doctrine prevents the weakening or reduction of the
ability of a mark to clearly and unmistakably distinguish
one origin of goods and services for the other and
protects the distinctiveness of a mark
• Dilution has two dimensions:
1. Blurring- is the classic or traditional impact of dilution.
• The unique and distinctive significance of the mark to
identify and distinguish one source may be diluted and
weakened.
• There is no confusion as to source, sponsorship,
affiliation or connection
• The following factors are considered by the courts:
1. The degree of similarity between the mark or trade
name and the famous mark.
2. The mark has inherent or acquired distinctiveness.
3. The extent to which the owner of the famous mark is
engaging in substantially exclusive use of the mark
4. Degree of recognition of the famous mark.
5. whether the user of the alleged infringing mark or
trade name intended to create an association with the
famous mark, and
6. Any actual association between the mark or trade
name and the famous mark. Again a survey may be
helpful.
2) Tarnishment –
• The effect of the junior mark is to tarnish,
degrade or dilute the distinctive quality or the
reputation of the senior mark

• The junior mark is used on a product or in a

context which degrades the reputation of the
mark established by the senior user
 Indian cases
• Daimler Benz aktiegesellschaft & Anr. v. Eagle Flask
Industries Ltd. ―Mercedes
• Daimler Benz aktiegesellschaft & Anr. v. Hybo Hindustan –
Benz
• Caterpillar Inc. v. Mehtab Ahmed -

• Honda Motors Co. Ltd. v. Charanjit Singh –

• Honda
• Hamdard National Foundation v. Abdul Jalil-
• HAMDARD
• Ford Motor Co. v. C.R. Borman- FORD
• ITC v. Philip Morris Products - “WELCOMEGROUP” mark
Forms of Trademark
 SERVICE MARK
• Section 2 (1) (z)- service means service of any
description that is made available to any potential
users and includes the provision of service in
connection with business of any industrial or
commercial matters such as banking,
communications, education, financing, insurance, chit
funds, real estate, transport, storage, material
treatment, processing, supply of electrical or other
energy, boarding, loading’ entertainment’
amusement, construction, repair, conveying of news
or information and advertising.
• It is basically useful in distinguishing one service
provider from the other.
• Service Marks do not cover physical goods but only
the provision of services.
• Service marks are used to identify a service, as
Trademarks are used for protection of goods.
• A service mark is generally adopted so that it can
play a crucial role in marketing, promoting and sales
of a product or service, it also plays the role of
referring to a particular quality or standard for
which the service mark is used.
• “Mark” may sometimes be used to refer to both a
trademark and a service mark, because the terms
are nearly but not completely interchangeable.
• Like trademark when choosing a name for a service
mark a full research has to be conducted to make
sure no other firm is using the same name.
 WELL KNOWN TRADE MARK
• Section 2(1) (zg) - Well known trade mark 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.
• The conditions laid down under section 11(6) for the determination
of a well-known Trade Mark are -
(i) the knowledge or recognition of that trade mark in the relevant
section of the public including knowledge in India obtained as a
result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade
mark;
(iii) the duration, extent and geographical area of any promotion of the
trade mark, including advertising or publicity and presentation, at
fairs or exhibition of the goods or services to which the trade mark
applies;
(iv) the duration and geographical area of any registration of or any
application for registration of that trade mark under this Act to the
extent that they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade
mark, in particular the extent to which the trade mark has been
recognised as a well-known trade mark by any court or Registrar
under that record.
 COLLECTIVE MARK
• Section 2(1) (g) -
• “A Trade mark distinguishing the goods or services of
members of an association of persons not being
partnership firm from those of others”
• The proprietor of the mark is the association.
• Collective trademark as per the definition does not
include the mark owned by a company or group of
companies for different types of goods or services.
• Collective marks are very useful to persons who produce a
particular product like rice (e.g. Basmati), apples, mangoes
(e.g. Alphanso), textiles and so on, if they form an
association which will regulate the use of the same trade
mark by all the members to ensure certain consistent
standards of genuineness and quality of the product
concerned
• An ordinary Trade Mark distinguishes the goods or
services of one person from those of others. On the
other hand a collective mark distinguishes the
goods or services of members of an association
from those of others.
• The peculiarity of collective marks is their
ownership structure. The holder of the right is not
an individual market participant, but an association
of producers of goods or suppliers of services.
• The members of the association entitled to use the
collective mark may bring an action for
infringement only if the association, as the
proprietor, agrees.
• A number of persons who are members of an
association (which owns the collective Trade Mark)
are authorized to use the mark governed by certain
regulations and rules framed by the association.
Types of Collective Marks

• There are three types of Collective Marks or legal entity for differentiation
with other goods or services of same kind. They are:
1. Collective Trademarks and collective Service marks
Conventional collective marks that are capable of distinguishing the
goods or services of the members of an association from those of other
undertakings according to their origin from a given enterprise. These are
used to indicate the source. Such collective marks are used by a group to
indicate that the goods or services offered by each individual member of
the group are products or services of the collective effort.
2. Collective Membership Mark
These marks are not used to indicate
source of goods or services but they
indicate that the seller is part of a
defined group. Collective guarantee
marks that distinguish goods or services
not according to their origin, but
according to their quality
 3. Geographical Indication (GI) Marks
• Collective geographical indication (GI) marks
designating the geographical origin of goods
or services are those products belonging to a
specific geographical origin and possesses
origin-based qualities and reputation in the
region.
 CERTIFICATION MARK
• There is a species of trade mark called as Certification Trade
mark. Its function is to indicate that the proprietor of the mark
has certified the goods bearing the mark as to certain
characteristics of the goods.
• Section 2 (1) (e) – “certification trade mark" means a mark
capable of distinguishing the goods or services in connection
with which it is used in the course of trade which are certified
by the proprietor of the mark in respect of origin, material,
mode of manufacture of goods or performance of services,
quality, accuracy or other characteristics from goods or
services not so certified and registrable as such under Chapter
IX in respect of those goods or services in the name, as
proprietor of the certification trade mark, of that person.
 Textile trademarks
• These are marks relating to textile goods
• Earlier they were numeral or letter marks
• They had significance earlier but ceased now
 Colour Mark
Section 10. Limitation as to colour
(1) A trade mark may be limited wholly or in part to any
combination of colours and any such limitation shall be
taken into consideration by the tribunal having to
decide on the distinctive character of the trade mark.
(2) So far as a trade mark is registered without
limitation of colour, it shall be deemed to be registered
for all colours.
Deere & Company & Anr vs. Malkit
Singh & Ors, (2018)
• The Plaintiffs, a company existing under the laws of the State of Delaware, USA are
leading manufacturers and exporters of agricultural vehicles including tractors,
harvesters, etc. as well as their spare parts under the trademark JOHN DEERE. The
products of the Plaintiffs are easily identifiable by their distinct share of green
paint, augmented by yellow strip. They secured registrations for a number of its
JOHN DEERE trademarks, including the (green yellow) trademark, under various
classes, including Classes 7, 12 and 28 under the Trademarks Act, 1999.
• In the last week of October 2017, the Plaintiffs came to know that the Defendants
were manufacturing, selling, exporting and advertising infringing products under
the mark MALKIT by using an identical colour combination as that of the Plaintiffs.
Thereafter, a Cease and Desist notice was sent to the Defendants. In response, the
Defendants emphasized that they had rights over its Green and Yellow mark.
• On further investigation, it was found that the Defendants were engaged in the
manufacture, supply, export and sale of infringing tractors and agricultural
equipment like Combine Harvesters, Rice Transplanter, Thresher, Straw Reaper,
Mini Harvester etc. with an average production of 350 harvesters a year in
Uttaranchal, MP, Andhra Pradesh, UP and Delhi.
• The Court opined that the Plaintiffs’ were entitled to sole and exclusive use of this
trade mark comprising such colour combination as well as the right to claim an
injunction in respect of infringement of rights due to the fact that they had
secured registration for the trademark comprising a colour combination of green
and yellow.
 Sound Marks
• It only provides that the trade mark must be “capable of
being represented graphically” besides capable of
distinguishing.
• So, a trade mark may consist of a sound and represented
by a series of musical notes with or without words.
• Applications for sound marks must clearly state that they
are sound marks.
• Otherwise the application will be examined as if it were a
word and/or device mark and graphical representation
requirements are met by representation of the sign by a
musical stave divided into measures and showing, in
particular, a clef, musical notes and rests indicating
relative value and shares, flats and naturals.
 TRADE DRESS
• Trade dress refers to combination of elements that
make up the look, feel, or environment of a product or
business; the term can refer to individual elements of a
product or business image as well as to the image the
combination of those elements creates as a whole.
• Trade Dress can be mere colouring, surface
ornamentation or a general appearance, a design
patentable invention has to be a shape or appearance
of a specific article which is more than a surface
appearance, which relates to the overall appearance of
the article and which is different enough to be
considered unobvious.
• It is advisable for every manufacturer to protect his
trade dress as it can be easily copied
•Trade Dress is non functional
physical detail. Trade Dress may
include a few important features
like:-
•Packaging
•Size
•Shape
•Colour
•Colour Combination
•Texture
•Graphics
•Design
•Placement of words and
decorations on a product
•Particular Sale Technique
 Parle Agro Pvt. Ltd. v. Walmart India Pvt. Ltd. &
Ors.
• ‘Appy Fizz’ v. ‘Fizzy Apple’
 PROPERTY MARKS

• Section 479 of Indian Penal Code, 1860 provides that “A mark used for
denoting that moveable property belongs to a particular person is
called a property mark.”
• The distinction between ‘trade mark’ and ‘property mark’ is not
recognized in English Law.
• However in India, the distinction between a ‘trade mark’ and a
‘property mark’ is is observed by the Supreme Court in Sumant
Prasad Jain v. Sheojanan Prasad -
• A trade mark is used in relation to goods for the purpose of identifying
the goods or to give an indication to the purchaser or possible
purchaser as to the manufacture of quality of goods and to indicate
the origin of goods.
• A property mark is defined in Section 479 of I.P.C. meaning, a mark
used to denote that a particular movable property belongs to a
particular person.
 ESSENTIALS OF TM

• A Trade mark should have the following

essential elements:
1. A Trademark should have Distinctive
Character (Distinctiveness of the Trademark)
• A trade mark would be considered a good
trade mark when it is distinctive either
inherently or if it acquires distinctiveness.
2. Trademark should preferably be an invented
word.
E.g. ZEN (car) , LUX, PONDS etc.
3. Trademark, if it is a word, or name, then it
should be easy to pronounce and remember.
E.g. Maruti Zen or Mercedes for cars, Levis for
jeans, Reynolds or Parker for pens etc.
4. In case of a device mark, the device should be
capable of being described by a single worD.
E.g. Camel for Camel Ink, butterfly for stoves.
5. Trade mark should be easy to spell correctly and
write legibly.

6. It should not be descriptive but may be

suggestive of the quality of goods.
• For example, a mark A-I would generally
suggest superior quality. Avon (A-1) cycles for
instance.
7. It should be short.
E.g. ‘Flex’, ‘Bru’, ‘Rin’.
8. It should appeal to the eye as well as ear.

9. It should satisfy the requirements of registration.

10. It should not belong to the class of marks
prohibited for registration.
E.g. Mark prohibited under the Emblems
and Names (Prevention of Improper Use)
Act, 1950
Trademark Registration
 Section 9. Absolute Grounds For Refusal Of
Registration
(1) The trade marks-
(a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another
person;
(b) which consist 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 the service or
other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become
customary in the current language or in the bona fide and established
practices of the trade, shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of
application for registration it has acquired a distinctive character as a result of the
use made of it or is a well-known trade mark.
(2) A mark shall not be registered as a trade mark if-

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950 (12 of 1950).

(3) A mark shall not be registered as a trade mark if it consists exclusively of-
(a) the shape of goods which results from the nature of the goods
themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.

Explanation.- For the purposes of this section, the nature of goods or services
in relation to which the trade mark is used or proposed to be used shall not
be a ground for refusal of registration.
 Section 11. Relative grounds for refusal of
registration
(1) Save as provided in section 12, a trade mark shall not be registered if,
because of-
(a) its identity with an earlier trade mark and similarity of goods or
services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of
the goods or services covered by the trade mark, there exists a
likelihood of confusion on the part of the public, which includes the
likelihood of association with the earlier trade mark.
(2) A trade mark which-
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those
for which the earlier trade mark is registered in the name of a different
proprietor, shall not be registered if or to the extent the earlier trade
mark is a well-known trade mark in India and the use of the later mark
without due cause would take unfair advantage of or be detrimental to
the distinctive character or repute of the earlier trade mark.
(3) A trade mark shall not be registered if, or to the extent
that, its use in India is liable to be prevented-
a)by virtue of any law in particular the law of passing off
protecting an unregistered trade mark used in the
course of trade; or
b) by virtue of law of copyright.
4) Nothing in this section shall prevent the registration of
a trade mark where the proprietor of the earlier trade
mark or other earlier right consents to the registration,
and in such case the Registrar may register the mark
under special circumstances under section 12.
5) A trade mark shall not be refused registration on the
grounds specified in sub-sections (2) and (3), unless
objection on any one or more of those grounds is
raised in opposition proceedings by the proprietor of
the earlier trade mark.
• Section 11 (7) :The Registrar shall, while determining as to whether a
trade mark is known or recognised in a relevant section of the public for
the purposes of sub-section (6), take into account--
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the
goods or services;
(iii) the business circles dealing with the goods or services, to which that
trade mark applies.
(8) Where a trade mark has been determined to be well known in at least
one relevant section of the public in India by any court or Registrar, the
Registrar shall consider that trade mark as a well-known trade mark for
registration under this Act.
(9) The Registrar shall not require as a condition, for determining whether
a trade mark is a well-known trade mark, any of the following, namely:--
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in
India;
(iv) that the trade mark--
(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any
jurisdiction other than India, or
(v) that the trade mark is well-known to the public at large in India.
 DECEPTIVE SIMILARITY
• Section 2(1)(h) defines the term "deceptively similar” as:
• 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.
• In order to come to a conclusion whether one mark is deceptively
similar to another, the broad and essential features of the two are
to be considered.
• They are not required to be placed side by side to determine
whether there are any differences in their design.
• The test of comparison of the marks side by side is not a sound one
because the question is not whether a person, while seeing both
the marks side by side is confused or not but whether the person
who sees proposed trademark in the absence of other trademark is
liable to be deceived for what he has general recollection .
 Tests to Determine Deceptively Similar Marks

• As far as the similarity is concerned what is required is “a mere

resemblance” or close similarity and not the close resemblance
• The 'ordinary observer' test is applied to determine if two works are
substantially similar.
• The factors creating confusion depends upon the nature of mark
itself, the class of customers, trade channel, etc.
• For determining deceptive similarity there is a requirement to
examine ‘whether the essential features of the plaintiff’s trade
mark are to be found in that used by the defendant’ .
• Whether the two marks are structurally and phonetically similar
and would cause deception in the mind of the consumer is relevant.
• There are different tests evolved by the courts from time to time,
such as ‘test of an ordinary memory of ordinary purchaser’, test of
essential features of the mark/label etc.
• In Anglo-Dutch Paint, Colour and Vanish Works Pvt. Ltd. v. India
Trading House, (AIR 1977 Delhi 4) the tests laid down for comparing
the two marks are:
i. The question whether the two marks are so similar that likely to
cause confusion or deceive in the first appearance -applying the
doctrine of fading memory i.e. From the point of view of a man of
average intelligence having imperfect recollection.
ii. Whether the overall visual and phonetic similarity of the two
marks is likely to deceive such a man or cause confusion that he
may make mistake as to the goods of the defendant for those of
the plaintiff.
iii. The other questions which arise are:
a) who are the persons who are likely to be deceived and
b) what rules of comparison are to be adopted in judging whether
such resemblance exists.
 Types of similarity
• The main factors to be considered are as follows:
1. Visual similarity of the marks: It will include length of the
respective marks, use of prefixes, suffixes, common syllables,
and shared elements of shape.
Pidilite Industries Pvt. Ltd. v. Mittees Corporation, (AIR 1989 Del
157) - FEVICOL and TREVICOL were held to be visually similar and
identical marks.
Lakme Limited v. Subhash Trading- LAKME and LIKEME
 ii. Phonetic similarity of the marks
• It turns on similarity when the marks are pronounced. It
depends upon the length of the marks, the number of
syllables and the pronunciation of the marks.
• For example:
• Corn Products Refining Co. v. Shangrila Food Products Ltd.
The conceptual similarity of the marks
• Certain marks may not look or sound alike but
may be similar in concept. The relevant point
is to see the overall message of the mark .
• SM Dyechem Ltd. v. Cadbury (India) Ltd.
Cadila Health Care Ltd. v. Cadila Pharmaceutical
Ltd.
• In this case, the parties to the case were the successors of the Cadila group.
The dispute arose on the issue of selling of a medicine by the defendant under
the name "Falcitab" which was similar to the name of a medicine which was
being manufactured by the plaintiff under the name "Falcigo". Both the drugs
were used to cure the same disease and hence, the contention was that the
defendant's brand name is creating confusion between the consumers.
Injunction was demanded by the plaintiff. As a defence, the defendant claimed
that the prefix "Falci" has been derived from the name of the disease,
i.e., Falcipharam malaria.
• The court observed that because of the diversified population of the country
and varying infrastructure of the medical profession due to language, urban-
rural divides, etc. and with the probabilities of medical negligence, it is
important that confusion of marks should be strictly prevented in
pharmaceuticals and drugs. The Court, thereby, held that being medical
products more precaution and care must be taken and the names of the
brand, therefore, being phonetically similar shall amount to being deceptively
similar.
 Similarity In Meaning
• Another important factor is the similarity in meaning or
connotation in relation to the named goods or services.
• Even if two marks are identical in sound and
appearance, they may create significantly different
commercial impressions so that there is no likelihood
of confusion.
• For example: M/s Surya Roshini Ltd. v. M/s Electronic
Sound Components Co., where the Delhi High Court
had held that there was deceptive similarity between
the trademarks “Surya” and “Bhaskar” as both marks
are literal translations of the word ‘Sun’.
 Other Tests To Determine Deceptive Similarity
Totality Test
• It is important that while comparing the two marks, one must
compare the mark as a whole. The practice of taking a portion of
the word and saying that it is different from the other mark is not a
right practice. The marks must be compared in totality to ascertain
if any deception or confusion exists. In order to ascertain whether
the misrepresentation is deceptive or not, the marks should be
looked at as a whole.
• While examining the question of misrepresentation or deception, a
comparison has to be made between the two trademarks as a
whole.
• The Anti-Dissection Rule compare composites as whole conflicting
composite marks are to be compared by looking at them as a
whole, rather than breaking the marks up into their component
parts for comparison.
• The marks must be compared as a whole. If there are some
differences in the portion of a word or in the corresponding
portion, then also it may cause confusion.
 Cadbury India Limited and Ors. v. Neeraj Food
Products [142 (2007) DLT 724]
• The Plaintiff is a well-known producer and
manufacturer of chocolates and confections and has a
trademark ‘GEMS’ registered in its name. The Plaintiff
approached the court for an injunction against the
Defendant who was allegedly selling a product under
the mark ‘JAMES BOND’ which resembled the ‘GEMS’
product of the Plaintiff in packaging and size. The
Plaintiff claimed that the product sold with mark of
‘JAMES BOND’ was deceptively similar to ‘GEMS’.
• The court held that the products of the Defendant
were indeed deceptively similar to that of the Plaintiff
and granted an injunction restraining the Defendant
from selling the said product.
Starbucks Corporation v. Sardarbuksh Coffee & Co. [CS
(COMM) 1007/2018]
• The Plaintiff is a well-known chain of coffee outlets spread over the
world including India. The Plaintiff registered its trademark
‘STARBUCKS’ and logo representing a “long-haired crowned
maiden” in India in 2011. The Defendants started their venture in
2015 using a logo with a black circular band saying ‘SARDARBUKSH
COFFEE & CO.’ and the image of a turbaned man and wavy lines
behind him. This logo used the colour scheme of the logo of the
Plaintiff.
• The Delhi High Court held that the trade-name as well as the logo
of the Defendants was deceptively similar to that of the Plaintiff
and granted relief to the Plaintiff and ordered the Defendants to
adopt the name ‘SARDARJI-BAKHSH COFFEE & CO.’ for running their
business.
 Pepsico, Inc v. Psi Ganesh Marketing
• Pepsico India Holdings Pvt Ltd.’s trademark
‘Aquafina’ used for its packaged drinking
water was copied by the defendant by using
deceptively similar trademark ‘Aqua Fies’.
• The Delhi High Court held it to be
infringement.
 Test of Resemblance
• As far as the similarity is concerned what is required is “a
mere resemblance” or close similarity and not the close
resemblance .
• The test is to see whether A man of average intelligence and
imperfect recollection, can identify the original / senior mark.
If the overall structure and phonetic similarity and
similarities of ideas in the two marks is reasonably likely to
cause confusion between them then the mark of the
defendant is deemed to be infringing mark.
• The 'ordinary observer' test is applied to determine if two
works are substantially similar. The Court will look to the
response of an ‘average lay observer’ to ascertain whether a
copyright holder's original expression is identifiable in the
allegedly infringing work.
• The test would depend upon the criteria of phonetic, visual
and structural similarity
 Ranbaxy Laboratories Ltd. v. Dua
Pharmaceuticals Ltd.
• Ranbaxy Laboratories, manufactured the CNS depressant
Diazapem in 5 mg tablets and sold them under the trade
name of CALMPOSE. The trade mark of CALMPOSE was
registered in 1970 and has been in use since then. The
medicine was packaged with aluminum foil on one side and
polythene film on the other in colors of silver and brown.
• Dua Pharmaceuticals manufactured a similar medicine and
marketed it under the name of CALMPROSE. The packaging
of CALMPROSE was similar to that of CALMPOSE as also
the mark used, which was visually and phonetically similar.
• Ranbaxy filed a suit, at the Delhi High Court, for
infringement of its registered trade mark. The Court held:
When a trade mark is too identical or too similar to an
already registered well-known trademark it is an
infringement of the original trade mark
 M/S. South India Beverages Pvt. v. General
Mills Marketing Inc.
• Both the appellants and the respondents were engaged in the
business of the sale of ice-creams and related dairy products,
although admittedly in different price brackets. The respondents-
plaintiffs had initiated the suit on the basis that the mark D’DAAZS
used by the appellants was deceptively similar to their mark
“HAAGEN DAZS”.
• The appellants set up the argument that the application of the anti-
dissection rule would imply that respondents’ mark would have to
be considered as a whole and therefore no case for deceptive
similarity could be made out. The respondents countered with the
argument that ‘DAZS’ was the dominant part of their mark and
must be accorded sufficient prominence to warrant protection.
• The Delhi High Court upheld the order of the Single Judge granting
an interim injunction against use of the latter mark by the
appellant-defendant.
 Test of Similarity
• The factors creating confusion depends upon various factors like,
the nature of mark itself, the class of customers, trade channel,
etc., which has to be taken into consideration to determine
whether there is a likelihood of confusion or deception by the use
of a mark.
Astra IDL v. TTK Pharma
The Bombay High Court commented that scheduled drugs which
were supposed to be sold on prescription were sold without
prescription in India, which reduced the weight to be given to this
factor when evaluating deceptive similarity. The court pointed out
that to decide what are the goods of a same description courts
should look into-
• I. nature and composition of the goods
• Ii. uses and functions of the goods
• Iii. trade channels through which they are purchased and sold.
 Amritdhara Pharmacy v. Satya Deo Gupta

• The Respondent had applied for registration of the trade mark of a

medicinal preparation “Lakshmandhara” in relation to the medicinal
preparation since 1923. It was admitted by the Respondent that the
Respondent’s product was mainly sold in the State of Uttar Pradesh
and there were only sporadic sales in other states. The Appellant
opposed the registration of the mark ‘Lakshmandhara’ on the ground
that it had an exclusive proprietary interest in the trade mark
“Amritdhara” in relation to a similar medicinal preparation which had
acquired considerable reputation since 1901 and that the
respondent’s trade mark “Lakshmandhara” was likely to deceive and
cause confusion and therefore the registration was prohibited by
Sections 8 and 10(1) of the Trade Marks Act, 1940. In response to the
same the Respondent filed a counter affidavit, raising the defenses of
honest concurrent user and acquiescence on part of the Appellant as
the Respondent was using the mark ‘Lakshmandhara’ since 1923.
• In appeals the Hon’ble Allahabad High Court, rejected the appeal of the
Appellant and allowed the appeal of the Respondent allowing the
registration of the mark ‘Lakshmandhara’ for the whole of India. The Hon’ble
High Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are
dissimilar and the words ‘Amrit’ and ‘Dhara’ being of common language
cannot be made the monopoly of any individual and thus the Hon’ble High
Court found no reason to disallow registration of the trade mark
‘Lakshmandhara’.
• Aggrieved by the order of the High Court, an Special Leave Petition (SLP) was
filed in the Supreme Court of India. The full bench of the Hon’ble Supreme
Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are similar and
thus overruled the decision of the Allahabad High Court and upheld the
decision of the Registrar of Trade Marks.
• The courts, in this case set down rules/guidelines, the essence of which
echoes till today. The courts laid down the test for determining if the two
marks were similar.
• Reasonable Man's Test: The differentiation of the two marks must be done
from the point of view of a man with average intelligence and imperfect
recollection.
• Overall Impression Test: According to this test, one must see the overall
impression of the two marks. This includes the overall phonetic and visual
similarity of the two marks.
 Reputation Test
• Nature of goods is very important factor in
deciding likelihood of confusion
or deception. Reputation of the earlier remark
will act as good ground to protect the registered
trademark.
• Example: Corn Products Refining Co. v. Shangrila
Food Products Ltd. -Glucovita and Gluvita
• Scotch Visky Association v. Pravana Shankar
Shakkar Kharkhana Ltd. – Drum Beater, Gold
tycoon.
•
 Scotch Visky Association v. Pravana Sahakar
Shakkar Kharkhana Ltd.
• The plaintiff was 'The scotch whisky association' a company incorporated in
the U.K. for protecting and promoting interest of scotch whisky trade and
the co-plaintiff exported on a large scale, scotch whisky to India. The
plaintiffs have instituted this action against the defendants for a declaration
that by using the device of a Scottish Drummer wearing a kilt or the tartan
band or the word 'Scotch' coupled with the description "Blended With
Scotch" and by using the impugned label on their Indian whisky marketed
under the mark "Drum Beater", the defendant is passing off its whisky as
"Scotch Whisky", misleading the other traders and customers and damaging
the reputation and goodwill of Scotch Whisky' and its genuine distillers,
blenders etc. by suggesting Scottish origin, so as to pass off or enable others
to pass off its whisky as "Scotch Whisky." The defendant resorted to unfair
device of using the words 'blended with scotch' on their Indian whisky and
got indulged in colourable imitation and unfair trading to reap harvest by
exploiting the plaintiff's goodwill. They practiced it intentionally and
deliberately.
• The court held that the plaintiff had sufficient interest and locus standi to
prevent the passing off of Indian whisky manufactured by the defendants as
scotch whisky and to prevent the damage to the reputation and goodwill of
their trade.
H&M Hennes & Mauritz AB Anr. v. HM Megabrands Pvt.
Ltd. & Ors.
• The Plaintiff, a well-known fashion brand with thousands of outlets
worldwide, had adopted the ‘H&M’ trademark in 1970 and it was
registered in India in 2005. The Plaintiff alleged the Defendant had
infringed their trademark by representing their ‘HM’ mark using the
same colour combination of red and white as used by the Plaintiff.
The Defendant contended that their usage and adoption of the
mark was innocent and that the mark stood for the names of their
directors. The Defendant further argued that since the Plaintiff
entered the Indian market much later, their mark had not acquired
any reputation in India when the Defendant adopted their ‘HM’
mark in 2011.
• The Court ruled in favour of the Plaintiff and held that in case of a
brand having trans-border reputation it is not necessary for it to set
up shop in India for its trademark to be protected in India. Hence,
the Defendant was restrained from using the ‘HM’ mark or any
other deceptive variations of the same.
 Trans-border Reputation Test
• When two goods are already in the market it is necessary to find actual
evidence of confusion in the minds of the customers.
• Actual consumer confusion must be proved before the courts in case of
passing off
• In case of a well known trademarks reputation of the manufacturer will
be considered to be a good ground of Defence to protect his mark.
• he Indian courts have recognised the concept of trans-border
reputation in IP cases.
• A prior adopter of a trademark in any part of the world can
successfully enforce its rights in India, provided that there is spill-
over reputation which can be substantiated through documentary
evidence.
 Whirlpool Int. v. N R Dongre

• Whirlpool Corporation brought a suit for passing off to restrain the

defendants from manufacturing, selling, advertising or in any way
using the WHIRLPOOL mark as part of another mark in respect of its
goods. The subject matter of the appeal was the manufacture, sale
and advertisement of washing machines under a mark which
included WHIRLPOOL.
• Whirlpool based its claim on its prior use of the WHIRLPOOL mark
and a trans-border reputation, which suggested that any goods
marketed under the WHIRLPOOL mark had been marketed by the
plaintiff.
• The Apex Court confirmed that advertising a trademark is
considered to be use and is sufficient to prove reputation and
goodwill in India, even when no goods are being sold on the
market.
 Honest Concurrent Use
• Section 12. Registration in the case of
honest concurrent use, etc.
• In the case of honest concurrent use or of
other special circumstances which in the
opinion of the Registrar, make it proper so
to do, he may permit the registration by
more than one proprietor of the trade
marks which are identical or similar
(whether any such trade mark is already
registered or not) in respect of the same or
similar goods or services, subject to such
conditions and limitations, if any, as the
Registrar may think fit to impose.
Kores India Ltd. V. M/s Khode Eshwara
and Son
• The facts which are to be taken into account to determine whether
the mark is entitled to registration under sub section 3 of Section
12 of the Act 1958 are :
1. Honesty of the concurrent use;
2. Quantum of concurrent use shown by the petitioners having
regard to the duration, area and volume of trade and goods
concerned;
3. The degree of confusion likely to follow from the resemblance of
the applicant’s mark and opponent’s mark;
4. Whether any instance of confusion have in fact been proved;
5. Relative inconvenience which would be caused to the parties and
the amount of inconvenience which would result to the public if
the applicants mark is registered.
Section 13. Prohibition of registration of
names of chemical elements or international
non-proprietary names
• No word-
(a) which is the commonly used and accepted name of any single
chemical element or any single chemical compound (as
distinguished from a mixture) in respect of a chemical substance
or preparation, or
(b) which is declared by the World Health Organisation and notified
in the prescribed manner by the Registrar from time to time, as an
international non-proprietary name or which is deceptively similar
to such name, shall be registered as a trade mark and any such
registration shall be deemed for the purpose of section 57 to be
an entry made in the register without sufficient cause or an entry
wrongly remaining on the register, as the circumstances may
require.
Section 14. Use of names and representations
of living persons or persons recently dead.
• Where an application is made for the registration of a trade
mark which falsely suggests a connection with any living
person, or a person whose death took place within twenty
years prior to the date of application for registration of the
trade mark, the Registrar may, before he proceeds with the
application, require the applicant to furnish him with the
consent in writing of such living person or, as the case may be,
of the legal representative of the deceased person to the
connection appearing on the trade mark, and may refuse to
proceed with the application unless the applicant furnishes
the Registrar with such consent.
Registration of trademark
Section18: Application for Registration
(1) Any person claiming to be the proprietor of a trade mark 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 his trade mark
(2) A single application may be made for registration of a trade mark for different classes of goods
and services and fee payable therefor shall be in respect of each such class of goods or services.
(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry
within whose territorial limits the principal place of business in India of the applicant or in the case
of joint applicants the principal place of business in India of the applicant whose name is first
mentioned in the application as having a place of business in India, is situate :
Provided that where the applicant or any of the joint applicants does not carry on business in
India, the application shall be filed in the office of the Trade Marks Registry within whose
territorial limits the place mentioned in the address for services in India as disclosed in the
application, is situate.
(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it
absolutely or subject to such amendments, modification, conditions or limitations, if any as he
may think fit.
(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in
writing the grounds for such refusal or conditional acceptance and the materials used by him in
arriving at his decision.
 Section 19 Withdrawal of application
• 19. Where after the acceptance of an application for
registration of a trade mark but before its registration,
the Registrar is satisfied-
• (a) that the application has been accepted in error; or
(b) that in the circumstances of the case the trade mark
should not be registered or should be registered
subject to conditions or limitations or to conditions
additional to or different from the conditions or
limitations subject to which the application has been
accepted, the Registrar may, after hearing the applicant
if he so desires, withdraw the acceptance and proceed
as if the application has not been accepted
 Section 20. Advertisement of the application
(1) When an application for registration of a trade mark has been accepted
whether absolutely or subject to conditions or limitations, the Registrar
shall, as soon as may be after acceptance, cause the application as
accepted together with the conditions or limitations if any, subject to
which it has been accepted, to be advertised in the prescribed manner :
Provided that, the Registrar may cause the application to be advertised
before acceptance if it relates to a trade mark to which sub-section (1) of
section 9 and sub-sections (1) and (2) of section 11 apply, or in any other
case where it appears to him that it is expendient by reason of any
exceptional circumstances so to, do.
(2) Where-
(a) an applicantion has been advertised before acceptance under sub-section
(1) or (b) after advertisement of an application-
(i) an error in the application has been corrected; or
(ii) the application has been permitted to be amended under section 22, the
Registrar may in his discretion cause the application to be advertised again
or in any case falling under clause
(b) may, instead of causing the application to be advertised again, notify in
the prescribed manner the correction or amendment made in the
application.
 Section 21: Opposition to registration
(1) Any person may, within four months from the date of the advertisement or re-advertisement
of an application for registration or within such further period, not exceeding one month in the
aggregate, as the Registrar, on application made to him in the prescribed manner and on
payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the
Registrar of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two
months from the receipt by the applicant of such copy of the notice of opposition, the applicant
shall send to the Registrar, in the prescribed manner a counter statement of the grounds on
which he relies for his application, and if he does not do so he shall be deemed to have
abandoned his application.
(3) If the applicant sends such counter statement the Registrar shall serve a copy thereof on the
person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the
prescribed manner and within the prescribed time to the Registrar, and the Registrar Shall give an
opportunity to them to be heard, if they so desire.
(5) The register shall, after hearing the parties, if so required, and considering the evidence,
decide whether and subject to what conditions or limitations, if any, the registration is to be
permitted, and may take into account a ground of objection whether relied upon by the
opponent or not.
(6) Where a person giving notice of opposition or an applicant sending a counter statement after
receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may
require him to give security for the costs of proceedings before him, and in default of such
security being duly given, may treat the opposition or application, as the case may be, as
abandoned.
(7) The Registrar may, on request, permit correction of any error in, or any amendment of, a
notice of opposition or a counter-statement on such terms as he thinks just.
 Section 22. Correction and
amendment
• The Registrar may, on such terms as he thinks just, at any time,
whether before or after acceptance of an application for
registration under section 18, permit the correction of any error in
or in connection with the application or permit an amendment of
the application:
Provided that if an amendment is made to a single application referred
to in sub-section (2) of section 18 involving division of such application
into two or more applications, the date of making of the initial
application shall be deemed to be the date of making of the divided
applications so divided.
 Section 23. Registration
(1) Subject to the provisions of section 19, when an application for registration of a trade mark
has been accepted and either-
(a) the application has not been opposed and the time for notice of opposition has
expired; or
(b) the application has been opposed and the opposition has been decided in favour of
the applicant, the Registrar shall, unless the Central Government otherwise directs,
register the said trade mark 1[within eighteen months of the filing of the application]
and the trade mark when registered shall be registered as of the date of the making
of the said application and that date shall, subject to the provisions of section 154,
be deemed to be the date of registration.
(2) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in
the prescribed form of the registration thereof, sealed with the seal of the Trade Marks
Registry.
(3) Where registration of a trade mark is not completed within twelve months from the date
of the application by reason of default on the part of the applicant, the Registrar may, after
giving notice to the applicant in the prescribed manner, treat the application as abandoned
unless it is completed within the time specified in that behalf in the notice.
(4) The Registrar may amend the register or a certificate of registration for the purpose of
correcting a clerical error or an obvious mistake.
 Section 24. Jointly owned trade marks
(1) Save as provided in sub-section (2), nothing in this Act shall
authorise the registration of two or more persons who use a trade
mark independently, or propose so as to use it, as joint
proprietors thereof.
(2) Where the relations between two or more persons interested in a
trade mark are such that no one of them is entitled as between
himself and the other or others of them to use it except-
(a) on behalf of both or all of them; or
(b) in relation to an article or service with which both or all of
them are connected in the course of trade, those persons may be
registered as joint proprietors of the trade mark, and this Act shall
have effect in relation to any rights to the use of the trade mark
vested in those persons as if those rights had been vested in a
single person
INFRINGEMENT AND PASSING OFF
 INFRINGEMENT
• Trademark infringement is the unauthorised
usage of a mark that is identical or deceptively
similar to a registered trademark.
• The term deceptively similar here means that
when an average consumer looks at the mark, it
is likely to confuse him/her of the origin of the
goods or services.
• Trademark infringement in India is defined under
Section 29 of the Trademarks Act, 1999.
•
 What constitutes infringement?
• A registered trademark is said to be infringed in case of the following
situation:
a) If the mark in dispute is identical with or deceptively similar to the
registered trademark and is in relation to the same or similar goods or
services;
b) If the identical or similar mark can cause confusion in the minds of
general public to have an association with the registered trademark
c) If the registered trademark is used as a part of trade name or business
concern for goods and services in respect of which the trademark is
registered
d) If the trademark is advertised and as a result it takes unfair advantage or
is contrary to the honest practices or is detrimental to the distinctive
character and reputation of the registered trademark.
e) If the registered trademark is used in the material meant for packaging
or labelling of other goods or as a business paper without due
authorization of the registered user.
 Section 29
(1) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade, a
mark which is identical with, or deceptively similar to the trade mark in relation to
goods or services in respect of which the trade mark is registered and in such
manner as to render the use of the mark likely to be taken as being used as a trade
mark;
(2) A registered trademark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade a
mark which is because of –
(a) its identity with the registered trade mark and the similarity of the goods or
services covered by such registered trade mark : or
(b) its similarity to the registered trade mark and the identity or similarity of the
goods or services covered by such registered trade mark: or
(c) its identity with the registered trade mark and the identity of the goods or
services covered by such registered trade mark is likely to cause confusion on
the part of the pubic, or which is likely to have an association with the
registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume
that its is likely to cause confusion on the part of the public.
(4) A registered trademark is infringed by a person who not being a registered
Proprietor or a person using by way of permitted use, uses in the course of trade,
a mark which-
(a) is identical with or similar to the registered trade mark and
(b) is used in relation to goods or services which are not similar to those for
which the trade mark is registered ; and
(c) the registered trade mark has a reputation in India and the use of the mark
without due cause takes unfair advantage of or is detrimental to, the
distinctive character or repute of the registered trade mark.
(5) A registered trademark is infringed by a person if he uses such registered
trade mark, as his trade name or part of his trade name, or name of his business
concern or part of the name of his business concern dealing in goods or services
in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if in
particular he-
(a) affixes it to goods or the packaging thereof:
(b) offers or exposes goods for sale puts them on the market, or stock them for
those purposes under the registered trade mark, or offers or supplies services
under the registered trade mark:
(c) imports or exports goods under the mark: or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trademark is infringed by a person who applies such
registered trade mark to a material intended to be used for labelling or
packaging goods, as a business paper, or for advertising goods or
services, provided such person, when he applied the mark, knew or
had reason to believe that the application of the mark was not duly
authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of the trade
mark if such advertising-
• (a) takes unfair advantage of and is contrary to honest practices in
industrial or commercial matters or
• (b) is detrimental to its distinctive character or
• (c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist
of or include words, the trade mark maybe infringed by the spoken use
of those words as well as by their visual representation and reference
in this section to the use a mark shall be construed accordingly.
 Types of Infringement
• Direct infringement
Direct infringement is defined by Section 29 of the Act. There a few
elements that have to be met for a direct breach to occur; they are as
follows:
i. Use by an unauthorised person
ii. Identical or deceptively similar
iii. Registered trademark- The Act extends only to protect
trademarks that have been registered with the trademark registry
of India. In the case of breach of an unregistered mark, the
common law of passing off is used to settle disputes. It is a tort
law that is used where injury or damage is caused to the goodwill
associated with the activities of another person or group of
persons.
iv. Class of goods or services: For the infringement of the
trademark, the unauthorised use of the mark has to be used for
the propagation of goods or services that fall under the same
class of the registered trademark.
 2. Indirect infringement
• Unlike direct infringement, there is no provision in the Act that deals with
indirect infringement specifically. This does not mean that there is no liability for
indirect infringement. The principle and application of indirect infringement arise
from the universal law principle. It holds accountable not only the principal
infringer but also anyone that abets, induces that direct offender to infringe.
• There are two types of indirect infringement:
a. Vicarious liability: According to Section 114 of the Act, if a company commits an
offence under this Act, then the whole company will be liable. Therefore not only the
principal infringer but, every person responsible for the company will be liable for
indirect infringement, except for a person who acted in good faith and without
knowledge of the infringement.
•
The elements for vicarious liability are:
– When the person can control the activities of the principal infringer
– When the person knows of the infringement and contributes to it
– When the person may derive financial gains from the infringement
• The only exception to vicarious liability of a company for infringement is when
the company has acted in good faith and had no idea about the infringement.
b. Contributory infringement
There are three basic elements to contributory
infringement:
• When the person knows of the infringement
•When the person materially contributes to the direct
infringement
•When the person induces the principal infringer to
commit infringement
• In the case of contributory infringement, there is no
exception as there exists no chance of the contributory
infringer to act in good faith.
 Comparative Advertising
• Dabur India Limited v. Emami Limited
• The commercial sought to express that consumption
of Chayawanprash during summer is not prudent and
Amritprash, that is also an Ayurvedic formulation was
claimed to be useful, by the defendant. This was
assumed to be a clear case of defamation to the
product of the plaintiff as the existence of allusion was
evident. It was opined by the court:
• “even if there be no direct reference to the product of
the plaintiff and only a reference is made to the entire
class of Chayawanprash in its generic sense, even in
those circumstances disparagement is possible. There
is insinuation against user of Chayawanprash during
the summer months...”
 Glaxo v. Heinz
• The first suit pertains to two advertisements by
Complan (Heinz). In the first advertisement the
‘Complan Mummy’ tells the Horlicks Mom that she’s
compromising her child’s health by buying a product
made of cheap ingredients and that her (fat) child
would not grow as fast as a child who was fed
Horlicks. The Complan mother then picks out a
Complan packet and explains how it has 23 vital
ingredients which would ensure fast growth of a
child. The ad then shows the Horlick’s mother visibly
pushing away a package bearing the Horlicks
trademark explaining how she had been misled and
how she would no longer repeat the same mistake
again.
In the second advertisement by Complan, a Horlicks mom asks the Complan Mummy how
her son was so tall and strong. The Complan mother then expounds on the virtues of
Horlicks after which she asks the Horlicks mother: “have you ever read the label of cheap
Horlicks?”. This is followed by the Complan mom explaining to the Horlicks mom that
Horlicks is made of cheap products and ingredients which means less nourishment &
protein. The ad ends with a voiceover praising Complan.
The Delhi High Court finds the two advertisements in the first suits as disparaging
and beyond the realm of permissible puffing. The primary reason for this is that
the repeated use of the word ‘cheap’ & ‘compromise’ along with the remaining
insinuations would definitely harm the reputation of Horlicks.
 Horlicks Ltd. & Anr. V. Heinz India Pvt. Ltd
• The Plaintiff, HORLICKS LTD. & ANR, is engaged in the business of
manufacturing and selling health food drink products under the
registered trade mark of “Horlicks” and has been using the product
extensively since many decade. The Defendant, HEINZ INDIA PRIVATE
LIMITED, is associated with similar business and manufactures and sells
milk product under the Trade mark “Complan”. Plaintiff became aware of
the fact that the defendant had published an advertisement for its brand
COMPLAN in a newspaper namely “Telegraph‟ (Kolkata and Patna Edition),
disparaging the plaintiffs‟ health food drink product “HORLICKS” The
Defendant published an advertisement, which was comparative in nature
with the Plaintiff’s product ‘HORLICKS’: The advertisement stated “One
cup of Complan (33g) gives 5.94g of protein while two cups of Horlicks
gives 5.94g of protein basis recommended pack dosage….” The Defendant
also used a line, “From Now On, Only Complan”. The plaintiff claimed that
the defendant’s advertisement intentionally belittled and disparaged
plaintiff’s health food drink “Horlicks”.
• The Delhi High Court held that there is no disparagement of the plaintiff’s
product by the defendant. The impugned advertisement as amended did
not show any wrong or fallacious 18 information about its product or
disparaged the Plaintiff’s product as the comparison was technically true.
The Delhi High Court asks Pepsodent to withdraw the impugned
print ad.
 Reckitt & Colman of India Ltd. v. M.P.
Ramachandran & Anr
• Hon’ble Calcutta High Court laid down five principles for granting an
injunction in case of comparative advertising:
i. A tradesman is entitled to declare his goods to be best in the world even
though the declaration is untrue;
ii. He can also say that his goods are better than his competitors, even
though such statement is untrue;
iii. For the purpose of saying that his goods are the best in the world or his
goods are better than his competitors he can even compare the
advantages of his goods over the goods of others;
iv. He however, cannot, while saying that his goods are better than his
competitors, say that his competitor’s goods are bad. If he says so, he
really slanders the goods of his competitors and their goods, which is not
permissible.
v. If there is no defamation to the goods or to the manufacturer of such
goods no action lies, but if there is such defamation an action lies and if an
action lies for recovery of damages for defamation, then the court is also
competent to grant an order of injunction restraining repetition of such
defamation.
 PASSING OFF
• Passing off is a common law tort, which can be used to enforce
unregistered trademark rights.
• The law of passing off prevents one person from misrepresenting
his goods or services as that of another.
• Trade mark Act, 1999 does not have an explicit provision that
specifically describes passing off but there are no. of common law
judgments that lets the courts draw its meaning as to whether the
infringement of trade mark done is in such a way that the mark is
not only deceptively similar to the trade mark of that other
company but itis also capable of creating or is creating confusion for
the customers, which ultimately results in damage for business of
the company.
• Section 27 of the Act recognizes common law rights of the
trademark owner to take action against any person for passing of
goods as the goods of another person or as services provided by
another person or remedies thereof.
• In the case of Perry vs. Truefitt [1842], the principle of
Passing Off was laid down for the first time. The principle of
Passing Off was that no one has the right to represent his
goods as the goods of someone else. The law of Passing Off
has changed a lot over the time.

• The remedy made available under Section 27 of the

Act protects the rights of the proprietor of an unregistered
trademark to register complaint against another person for
passing off his goods as goods the goods of proprietor. An
unregistered proprietor of trademark can also oppose an
application for registration on grounds as enumerated
under Section 11 of the Act.
 Difference between Infringement and
Passing off
S. No. Infringement Passing off
1. Type of The statutory remedy under Section Common-Law remedy
remedy 29(1) of the Trade mark Act, 1999

2. Registration It is a pre-requisite It is not required

3. Proof Plaintiff is only required to show Apart from proving
deceptive similarity, as there is a deceptive similarity, the
presumption of confusion Plaintiff is also required to
prove confusion in public
and the likelihood of injury
to the plaintiff's goodwill
4. Jurisdiction The registered proprietor or registered Section 20 of the Civil
user of the trade mark can institute the Procedure Code, 1908
suit where they actually and voluntarily would apply
resides or carries his business or
personally work for gain
 Ervin Warnik B. V. v. J. Townend & Sons (Hull)
Ltd.
• The five characteristics recognized are:
1. Misrepresentation
2. The act must be made by the defendant in course of trade
3. The prospective or ultimate customers of the plaintiff’s
goods and services have been misrepresented,
4. Such an act of misrepresentation is calculated to injure the
business or goodwill of the plaintiff, and
5. Such act causes actual damage to the business or goodwill of
the plaintiff.
 Harrods v. Harrodian School
• There are three main elements of the tort of
passing off which were also referred as
“classical trinity” –
• Reputation;
• Deception;
• Damage
Requirements of Passing off Action in India
• Misrepresentation
The plaintiff is required to show false intention or misrepresentation on
behalf of the defendant. In misrepresentation, the defendant tries to make
the common public believe that the products and services provided by the
defendant are of the plaintiff. There should be some actual confusion or
deception among the common public.
• Goodwill
It should be proved by the plaintiff that the person or the goods and services
own some kind of reputation in the mark used by the other person, and such
an act of using an identical or similar mark will confuse the public with the
specific goods or services of the plaintiff.
• Damage
In order to stop the infringing party, the offended party is required to prove
that he/she has suffered an actual or reasonable loss of business due to the
alleged misrepresentation of the infringing party. Generally, the loss is
difficult to prove and involves the inspection of books of account of both
parties on certain practical grounds. The possibility of loss is sufficient to
prove that there is damage to goodwill of the plaintiff. Hence, the plaintiff is
required to prove that the misrepresentation from the side of the defendant
has harmed the goodwill or cause loss to the reputation of the plaintiff.
 Kamal Trading Co. v. Gillette UK Limited

• An injunction order was sought by the plaintiffs

against the defendants who were using the mark 7’O
Clock on their toothbrushes.
• The Bombay High Court, which held that the plaintiff
had acquired an extensive reputation in all over the
world including India by using the mark 7’O Clock on
razors, shaving creams. The use of an identical mark
by the defendant would lead to the customer being
deceived.
 Reverse passing off
•
'Reverse passing off’ occurs where the defendant
markets the plaintiff's product as being the
defendant's product.
• In other words where a defendant may represent
that he or she made goods which were in fact
made by the plaintiff so as to pass off his own
business as a branch of the plaintiff's.
 Assignment, Licensing and
Transmission Of Trademarks
 Assignment of Trademark

• Assignment of a trademark occurs when the ownership of

such mark as such, is transferred from one party to another
whether along with or without the goodwill of the
business. In case of a registered Trademark, such assignment
is required to be recorded in the Register of trade marks.
• Section 38 of the Act permits the proprietor of registered
trademark to assign and transfer the trademark, with or
without the goodwill of the business concerned and in respect
either of all the goods or services in respect of which the
trade mark is registered or of some only of those goods or
services.
• Section 39 of the Act permits an unregistered trade mark to
be assigned or transmitted with or without the goodwill of the
business concerned.
 Types of Trademark Assignment
• Based on the need and requirement, the parties would fall
under the specific type, and accordingly, the Assignment
Agreement would be drafted.
• Complete assignment
• In this case, all the rights that are vested in the registered
trademark are assigned to a third party. The assignee then
enjoys all the rights that the original trademark owner had.
The assignee would then be the sole owner of the
trademark having rights to assign, trade, and market it and
also to stop others from using it without authorisation.
• The owner transfers all its rights with respect to a mark to
another entity, including the transfer of the rights such as
right to further transfer, to earn royalties, etc.
 Partial Assignment
• In this type of assignment, the transfer of ownership is restricted only to
certain products/services as decided by the parties and expressed in the
Trademark Assignment Agreement.
• The transfer of ownership is restricted to specific products or services only.
• For example, A, owner of a tea and a biscuit brand, transfers proprietary rights
only with respect to the tea brand and retains the rights over the biscuit
brand, this is said to be a partial assignment.
• Restriction on Assignment of Trademark
• 1. Parallel use Restriction: Where assignment results in creation of exclusive
right in different persons, in relation to same or similar goods or services and
the use of the trademark will be likely to deceive or cause confusion. Thus,
multiple exclusive right in relation to same or similar goods or services, in
different person is not allowed. This prevents the parallel use of a trademark
by more than one person concerned in relation to same or similar goods or
services.
• 2. Multiple Territorial use Restriction: Where the assignment results in
creation of exclusive right, in different person in different parts of India, in
relation to same or similar goods or services. Thus, assigning of scattered right
in different parts of India is not allowed.
• Assignment with goodwill
• where the rights and value of a trademark as associated with the
product is also transferred to another entity.
• Examples: Vijaya Karnataka- Vijay Sankeshwar- Times Group
MTR- the packaged foods business of MTR Foods- Sadanand
Maiya- Orkla Group,

• Assignment without goodwill

• This is an assignment where the owner restricts the assignee not to
use trademark of the assignor for the products he produces. That is,
the goodwill attached to the owner’s brand with respect to the
product already being sold under such brand, is not transferred to
the buyer. This means that assignor & assignee both can use the
same trademark but in dissimilar goods or services.
• Such assignment also referred to as gross assignment, is where the
owner of the brand restricts the right of the buyer and does not
allow him to use such brand for the products being used by the
original owner.
 Restriction on Assignment or Transmission
Section 40(1)
A Trade Mark is not assignable or transmissible in a case in which as a result of the
assignment or transmission there would subsist exclusive rights in more than one of the
persons concerned, to use of trade mark, nearly resembling each other or identical trade
mark which is likely to deceive or cause confusion, in relation to;
i) Same goods or services;
ii) Same description of goods or services; or
iii) Goods or services or description of goods or services which are associated with each
other.
Of trade marks nearly resembling each other or of identical trade mark, if having regard
to the similarly of the goods and services and to the similarity of the trade marks, the
use of the trade marks in exercise of those rights would be likely to deceive or cause
confusion.
Provided that an assignment or transmission shall not be deemed to be invalid under
this sub-section if the exclusive rights subsisting as a result thereof in the persons
concerned respectively are, having regard to limitations imposed thereon, such as not to
be exercisable by two or more of those persons in relation to goods to be sold, or
otherwise traded in, within India otherwise than for export there from, or in relation to
good to be exported to the same market outside India or in relation to services for use at
any place in India or any place outside India in relation to services available for
acceptance in India.
 Restriction on Assignment or Transmission When Exclusive Rights
Would be Created in Different Parts of India (Section 41)
• Restriction on assignment or transmission when exclusive rights would be created in different parts
of India.—Notwithstanding anything in sections 38 and 39, a trade mark shall not be assignable or
transmissible in a case in which as a result of the assignment or transmission there would in the
circumstances subsist, whether under this Act or any other law—
i. an exclusive right in one of the persons concerned, to the use of the trade mark limited to use in
relation to goods to be sold or otherwise traded in, in any place in India, or in relation to services for
use, or services available for acceptance in any place in India; and
ii. an exclusive right in another of these persons concerned, to the use of a trade mark nearly
resembling the first-mentioned trade mark or of an identical trade mark in relation to—
a. the same goods or services; or
b. the same description of goods or services; or
c. services which are associated with those goods or goods of that description or goods which are
associated with those services or services of that description, limited to use in relation to goods to be
sold or otherwise traded in, or services for use, or available for acceptance, in any other place in India.
Provided that in any such case, on application in the prescribed manner by the proprietor of a trade mark
who proposes to assign it, or by a person who claims that a registered trade mark has been transmitted
to him or to a predecessor in title of his since the commencement of this Act, the Registrar, if he is
satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be
contrary to the public interest may approve the assignment or transmission, and an assignment or
transmission so approved shall not, unless it is shown that the approval was obtained by fraud or
misrepresentation, be deemed to be invalid under this section or section 40 if application for the
registration under section 45 of the title of the person becoming entitled is made within six months from
the date on which the approval is given or, in the case of a transmission, was made before that date.
 Registration of Assignment (Section 45 (2)
• As per section 45 of the Act, an assignment deed needs to be registered in the
appropriate form with the Trademarks Registry in order to bring the Assignee as
an owner of the trademark on records. The Section runs as follows-
• (1) Where a person becomes entitled by assignment or transmission to a
registered trade mark he shall apply in the prescribed manner to the Registrar to
register his title. And the Registrar shall on receipt of the application and on
proof of title to his satisfaction register him as the proprietor of the trade mark
in respect of the goods or services in respect of which the assignment or
transmission has effect, and shall cause particulars of the assignment or
transmission to be entered on the register.
• Provided that where the validity of an assignment or transmission is in dispute
between the parties, the Registrar may refuse to register the assignment or
transmission until the rights of the parties have been determined by a
competent court.
• The law empowers the registrar to refuse to register the assignment or
transmission when the validity of an assignment or transmission is in dispute
between the parties, until the rights of the parties have been determined by a
competent court [section 47 (2)].
 Trademark Licensing
• Trademarks are treated as source indicators, which make an implied
reference to quality and reputation.
• This function of source indication is believed to get prejudiced if the
trademark owner licenses another enterprise to use the trademark.
For this reason, which is actually rooted to the very nature of
trademarks as an intellectual property, licensing under trademarks
requires relatively higher supervision and control and is therefore
legally regulated practice.
• The precedents evolved over the issue of trademark licensing both
in United Kingdom and in India, developed some principles and
theories are deducible from the court’s handling of the matters of
trademark licensing.
 Principle of Source Indication

• The primary purpose, which a trademark is thought to be

achieving, is that of indication of the source of the product.
• All the goodwill and reputation which is attached to a mark
is enjoyed by the owner of the mark and knowledge of the
link between the owner (source) and the mark saves the
search-costs of the consumers.
• Based on this principle, it should not be permissible for the
trademark owner, registered or unregistered, to allow
others by way of licensing to use his trademark in relation
to goods not connected with him. Therefore, in order to
preserve the source-indication function, the licensing
activity is permitted only under certain fact situations.
 Principle of Quality Control

• With the expansion of the market, the original concept of a

trademark as a strict symbol of source has been abandoned.
• Trademark licensing has become a commercial practice and has
resulted in the development of a new rationale for trademarks, i.e.
representations of product quality.
• While the real purpose of trademark remains that of distinguishing
the goods and services of the owner from those of the competitors,
with the changing trend, the proprietor can now license the goods
and ensure uniformity in the quality of goods being sold under his
trademark/brand.
• However, Trademark Law does not require the proprietor to
maintain any particular or declared quality. The proprietor can
validly compromise the quality to make good the losses in market.
 Principle of Connection in the Course of Trade

• Later evolved the theory of ‘connection in course of trade’ which

shares a lot common with ‘quality control’ theory of allowing licensing
of trademark but is slightly different too.
• According to S K Mukherjee the principle of ‘connection in course of
trade’ means:
• ‘In my judgment, if a trademark is used in such a manner that the
connection between the proprietor of the trademark and the goods in
relation to which the trademark is used is maintained and the public is
not deceived or confused as to the origin and character of the goods
there will be honest bonafide trade use of the trademark’. (American
Home Products v. Mac Laboratories Private Limited )
• Hence, the system of registration of the licensees came into place
with the change in the Trademark Law and the licensing of trademark
required that the owner of a registered mark leaves in the records of
Trademark Registry, the particulars of the license agreement and of
the parties involved. Due tot hat, the concept of ‘registered users’ as
was there under the Indian Trade and Merchandise Act, 1958.
 Licensing under Trademark law
• The licensing of a mark is to allow others to use the
mark without assigning the ownership and the same
may be done for all or some of the goods and
services covered.
• The Trademarks Act does not mention the term
'License', the concept under the Act is mentioned as
that of a 'Registered User’ under Section 48 of
Trademark Act, 1999.
 Definition of ‘Permitted Use’
• The definition of ‘permitted use’ under Section 2(1)(r) of
the new Act, allows use of a registered trademark by a
person (third party) other than the registered proprietor
and the registered user, by the consent of the registered
proprietors in a written agreement without that party being
registered as a ‘registered user’.
• This section stipulates that a person other than the
registered proprietor of trademark may be registered as a
registered user. Thus, the use of a registered trademark can
be permitted to a registered user in accordance with the
provisions of the Act and for that purpose the registered
proprietor has to enter into an agreement with the
proposed registered user.
 Procedure for registration of licensing
• Section 49 of the Trademark Act enumerates the process for
registration as a registered user. The essentials for licensing of
trademark or registration as registered user are:
• The registered proprietor and the registered user shall jointly apply
in writing i.e. Trademark License Agreement, to the Registrar of
Trademark in the following manner:-
• The agreement shall be in writing with respect to permitted use of
the trademark;
• An affidavit by the registered proprietor of the trademark
authenticating the particulars of the agreement, like extent of
degree of control by the proprietor over permitted use of the mark,
stating the goods and services in respect of which registration is
proposed, stating condition or restriction on use of the mark and
the period for which the trademark has been licensed.
 Cancellation of Registered User
•
Cancellation of licence can be initiated by the proprietor or the
registered user or any other registered user of the same mark. The
circumstances which are permissible for cancellation are-
1. violation of the written agreement
2. use of mark as to cause deception/confusion
3. misrepresentation or non-disclosure of some material fact(s) by
either of the parties
4. the circumstances have changed since the date of registration in
such a way that at the date of such application for cancellation
they would not have justified registration of the registered user
5. that the registration ought not to have been effected having
regard to rights vested in the applicant by virtue of a contract in
the performance of which he is interested :
• Any cancellation or any omission must be notified to the other
registered users who are inclined to be affected by such
cancellation and also to registered proprietor.