Trademark PDF

COURSE MATERIAL
ON
INDIAN TRADEMARKS LAW
amarchand mangaldas
advocates & solicitors
new delhi
INDEX
S. No Subject Page No.
1. Introduction to the Course Material 3

2. Introduction to the Trademarks Law 4
3. TRADEMARK – Administration 7
4. TRADEMARK - Definition and Meaning 10
5. Obtaining Trademark Rights 12
6. Registration and Renewal 23
7. Opposition Proceedings 24
8. Rectification Proceedings 28
9. Assignment and Licensing 31
10. Trademark Infringement 34
11. Passing off 40
12. Border Measures 50
13. Collective and Certification Trademarks 52
2
I
INTRODUCTION TO THE COURSE MATERIAL
The trademarks law in India is very closely related to commerce and has kept pace with changing times
and globalization. The current trade mark regime is the third one and is in line with the international
trends and is an attempt to harmonise our law in accordance with the widely accepted principles and
our international obligation under Paris Convention and TRIPS Agreement.
The jurisprudence on trade marks in India is very well established and settled. The Indian judiciary has
been very progressive in approach in the matters of Trade Marks Law and there is a large body of
precedents to take guidance from. However, the new economic situation in the world and Indian
liberalized economy keeps throwing in new challenges and as any other area the law keeps evolving.
The practice and procedures followed by the Trade Marks Registry and IPAB are also elaborate and
complex and one needs to practice the law to get a complete grip over the subject matter.
Keeping the above in view, this course material has been designed to present some of the basic as well
as complex principles in a succinct and precise manner to offer guidance to student and a beginner alike.
This material is not offered as a complete treatise as none can be, however it is the author’s hope that
this material could form a strong foundation for a learner in his quest to master the trademarks law.
The reference material towards the end lists books and cases that may be relevant in such an
endeavour. It is suggested that sufficient time is devoted to read the reference material for greater
appreciation.
The material herein is not intended to form any advice or guidance on solving legal problems and
readers are advised to seek legal help to resolve their trademark issues. It is advised that every problem
and facts at hand must be dealt with on their own merits as every case poses a different challenge and
deserve different and fresh treatment.
3
II
INTRODUCTION TO THE INDIAN TRADEMARKS LAW
Origin of Trademarks - It is said that trade marks originated due to the emergence of societies and
circulation of goods in commerce. In ancient Greek and Roman times, traders started applying marks to
their goods to indicate ownership and “potters marks” were widely used to identify makers of vessels.
With the passage of time, more distinctive marks began to emerge as craftsmen began applying their
unique drawings or names to identify goods they created.
Around the 10th century, “merchants’ marks” appeared with the primary function to identify and prove
ownership of goods in cases where owners went missing due to shipwrecks, attacks by pirates and other
disasters. In guilds of the middle ages, marks were used for a slightly different purpose within guild
structures. Guilds were trade organizations that regulated who could make certain goods or provide
certain services. In this era, “production marks” emerged, which were affixed on goods by the guilds to
guarantee quality and control entry to a particular trade. Purchasers also started to rely on the marks
placed on goods to assist their purchasing decisions, as the mark indicated a particular manufacturer
and in turn, goods of a certain standard. From the 12th century onwards, trade marks were used on a
variety of goods such as bells, cutlery, ceramics, paper, logs etc.
The 13th Century marked the earliest English law on trade marks known as the Bakers’ Marking Law
which, as the name suggests, required bakers to place a mark for their identification on the loaves of
bread they sold. Any bread offered for sale unstamped, was confiscated and the offending baker was
penalized with heavy damages. The earliest litigation over a mark took place in the 14th Century where a
widow was granted use of her husbands mark. The first reference to ‘infringement’ was in the 15 th
Century in the case of Southern v. Howe, where a clothier making inferior cloth used the mark of a
superior clothier. Around the 16th and 17th centuries, elementary codes of trade mark regulations began
to emerge in Europe (most notably in Germany and France) and the courts began to protect marks at
the behest of traders and initially protection was provided through the action for deceit, as courts held
that if another trader was allowed to use the same mark, it would allow a fraud to be committed on the
public. Not much later, the Courts of Chancery used the action for “passing off” to protect a trader who
had developed goodwill and reputation through use of his mark.
By the late 19th century, with the advent of the Industrial Revolution, there was an enormous growth in
the use of marks for advertising purposes and the modern day trade mark was born. It was in this era
that norms governing trade marks found place in the decisions of the Courts of England, wherein the
‘right of property’ in a trade mark was recognized. The common law principles governing trade marks
were subsequently codified in the Trade Marks Registration Act, 1875 in England.
History of Trademark laws in India - The first demand for introducing a trademark legislation in India
was made in 1877 by the Bombay Mill Owners’ Association to the then Government of Bombay. Though
a Bill was introduced in the Imperial Legislative Council in 1879, there was no outcome of the process.
4
The law governing trademarks found statutory recognition in the Indian Penal Code, 1860 (wherein
counterfeiting and falsifying a trade mark were made punishable) and the Specific Relief Act, 1877
(which provided for restraint of use of trade marks by grant of injunction). However, the Trademarks Act
1940 introduced for the first time a machinery for registration and statutory protection for trademarks
in India. The said Act was in force until 1958, when it was replaced by the Trade and Merchandise Marks
Act, 1958. The objective of the Act was to provide for registration and better protection of trademarks
and for prevention of use of fraudulent marks on merchandise. In order to bring the Indian trademarks
law in compliance with the country’s TRIPS obligations, the new trademark regime - the Trade Marks
Act, 1999 - was introduced and enacted. This Act came into force on September 15, 2003 and read the
Trade Marks Rules, 2002 and many notifications presently govern the trademark law in India.
The new law under the Trade Mark Act, 1999 brought in significant changes incorporating not only the
prescribed minimum protection standards but the existing jurisprudence. It may be relevant to know
and appreciate the salient changes made which are as follows:
1. Filing of a single application covering multiple classes as opposed to one class one application
system follows earlier;
2. Registration of service marks – Marks relating to services were introduced for professional and
service providing organisations to obtain protection of their marks;
3. New provisions for registration of collective marks;
4. Enlargement of definition of “trade marks” so as to include shape of goods, their packaging and
combination of colours, to bring the law in conformity with the current trend worldwide;
5. Provisions for protection of well-known trade marks and tests for determination of such marks;
6. Abolition of Part A and Part B registration system and introducing a single Register of
trademarks;
7. Omission of Defensive registration system under the 1958 Act;
8. Period of registration extended to ten years (from 7 years);
9. Widening of scope of infringement of registered trade marks – the new law conferred rights to
take infringement action even against dissimilar goods as well subject to certain conditions;
10. Assignment of unregistered trade marks without goodwill of business permitted;
11. Registered user provision simplified and introduction of the concept of Permitted User with
powers to the Registrar to decide on the registration of registered user;
12. Creation of the Intellectual Property Appellate Board to hear and decide appeals from the
decisions of the Registrar;
13. Enhanced punishment for trademark offences;
14. Jurisdiction of District Court to entertain suits for infringement and passing off made same as for
infringement of copyright, thus enabling a plaintiff to file the suit in the District Court within
whose jurisdiction he resides or carries on business.
Harmonization with international norms and standards - For Trademark purposes it is relevant to know
that India is signatory to, inter alia, the following international treaties:
i. Paris Convention (Industrial Property) since December 1998

ii. Trade Related Intellectual Property Rights Agreement since January 1995
iii. Nice Agreement Concerning the International Classification of Goods and Services for the
purposes of the Registration of Marks, (7th Edition).
5
The Paris Convention is an international Convention for promoting trade among the member countries
and is devised to facilitate protection of industrial property simultaneously in the member countries,
without any loss in the priority date. The member countries of the Convention are required to provide
national treatment to all applications from other member countries for protection of industrial property
rights. The Convention was first signed in 1883. Since then, it has been revised several times- in 1900 at
Brussels, in 1911 at Washington, in 1925 at Hague, in 1934 at London, in 1958 at Lisbon and in 1967 at
Stockholm. The last amendment took place in 1979. India became a member of the Paris Convention on
December 7, 1998.
The TRIPs Agreement came into effect on 1 January 1995 and till date, is the most comprehensive
multilateral agreement on intellectual property. It was negotiated at the end of the Uruguay Round of
the General Agreement on Tariffs and Trade in 1994 and is administered by the World Trade
Organization. The TRIPs Agreement is a minimum standards agreement which also allows Member
countries to provide more extensive protection of intellectual property, if they so wish. Member
countries are left free to determine the appropriate method of implementing the provisions of the
Agreement within their own legal systems. The areas of intellectual property that it covers inter alia are:
copyright and related rights; trademarks including service marks; geographical indications; industrial
designs; patents; the layout-designs of integrated circuits; and protection of undisclosed information.
The TRIPs Agreement also provides for principles such as national and most-favoured-nation treatment
and some general rules to ensure that procedural difficulties in acquiring or maintaining intellectual
property rights do not nullify the substantive benefits that should flow from the Agreement.
Part II, Section 2 (Article 15 to Article 21) of the TRIPS agreement contains provisions for minimum
standards in respect of Trademarks.
Relationship between Paris Convention and the TRIPs Agreement - The TRIPs Agreement is an
offshoot of a series of negotiations going on around the world since the inception of the Paris
Convention in the year 1883. Article 2 of the TRIPs Agreement states that Member countries shall
comply with Articles 1 to 12 and Article 19 of the Paris Convention (1967).
Madrid System for the International Registration of Marks - The system for international registration of
marks is governed by two treaties- (a) the Madrid Agreement Concerning the International Registration
of Marks and (b) the Protocol Relating to the Madrid Agreement. The system is administered by the
International Bureau of the World Intellectual Property Organization (WIPO). Any State which is a party
to the Paris Convention for the Protection of Industrial Property may become a party to the Agreement
or the Protocol or both. The system enables the registration of trademarks in multiple jurisdictions
worldwide by filing a single application in the Applicant's national trademark office, or regional
trademark office with a single fee in one language (English or French). For more information on the
topic, please visit the following website- http://www.wipo.int/madrid/en/
The Government of India approved on February 8, 2007 the country’s accession to the Madrid Protocol.
To initiate action for accession to the Protocol, the government approved to amend the trade Marks Act
1999 and introduce a Bill in the Parliament to bring about the amendment. The Trade Marks
(Amendment) Act, 2010 passed on 21.09.2010 will bring the Madrid Protocol into force in India, once it
is notified.
6
III
TRADEMARK ADMINISTRATION
Trade Marks Registry - The administration of trademarks registry falls with in the Ministry of Commerce
and Industry, Government of India. The Trade Marks Registry (“Registry”) has its head office in Mumbai
and branch offices in Ahmedabad, Chennai, Delhi and Kolkata.
Historically, the Trade Mark Registry has been structured in the above manner with a view to provide
geographical outreach and accessibility from different states within the country. By allocating each
branch office jurisdiction over matters in geographically contiguous territories, the system was intended
to provide improved accessibility to the Trade Mark Registry. Decisions taken by one branch office, while
definitely of persuasive value, are not binding on any other branch.
The Controller General of Patents, Designs and Trade Marks administers the working of the Patents Act,
1970, the Designs Act, 2000 and the Trade and Merchandise Marks Act, 1999 and also renders advice to
the Government on matters relating to intellectual property rights. The Controller General directs and
supervises the functioning of the Patent Office, the Designs Office, the Patent Information System, the
Trade Marks Registry and the Geographical Indications Registry. The Trade Marks Registry was
established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules
thereunder. It acts as a resource and information centre and is a facilitator in matters relating to trade
marks in the country.
The Trade Marks Rules, 2002 (“Rules”) provide that all applications and documents relating to
registration, opposition, renewal, and recordation of assignment deeds/license agreements etc. of
trademarks are to be filed at the appropriate office of the Trade Marks Registry, which is the Office
within whose limits the applicants’ business address is located in India. In case of a foreign applicant the
appropriate office is the Office within whose limits the applicants’ address for service is located.
Applicants resident outside India may file an application at any branch office, provided they have an
address for service within the territorial jurisdiction of that office. The Office where a trademark
application is filed becomes the jurisdiction of the trademark for all future purposes and any
opposition/rectification proceeding against the said trademark is to be lodged in this jurisdiction.
An application for registration of a trademark is required to be submitted at one of the offices of the
Trademarks Registry. Please see the registry website [http://ipindia.nic.in/tmr_new/default.htm] for
location and jurisdiction page for location of the branches of the Trademarks Registry along with the
jurisdiction of each branch office. The website also has the contact information for each branch office.
Intellectual Property Appellate Board
A significant change brought in by the present Act is establishment of Intellectual Property Appellate
Board (IPAB). The IPAB has sole jurisdiction to hear appeals against orders passed by the Registrar of
Trade Marks, which jurisdiction earlier vested in the High Courts. Under the Act, no limits have been
placed on the nature and scope of appeal arising from the decision of the Registrar of Trade Marks. In
7
addition, the IPAB has also been conferred with the power to entertain applications for cancellation or
variation of the registration of a trademark. However, the IPAB has no jurisdiction over actions involving
trademark infringement and passing off, which continue to be within the purview of courts.
After formation of the Board, all the existing appeals from decisions of Trade Marks Registrars before
the High Courts have been transferred to the Board and are being decided expeditiously. The
jurisdiction, power and authority of courts have been excluded over matters falling within the appellate
jurisdiction of the IPAB. The present Act also does not provide for a second appeal from the orders of
the IPAB. However, an order of the IPAB may be challenged by invoking the powers of the High Court
under Article 226 and/or Article 227 of the Constitution of India1. Thus, in appropriate circumstances
where the High Court is satisfied that the IPAB’s decision is erroneous for, inter alia, violation of
fundamental rights, want of jurisdiction, error of law, perverse findings and gross violation of natural
justice, it may intervene to correct such illegalities in the decision.
IPAB has been given the freedom to regulate its own procedures with the rider that it shall always be
guided by principles of natural justice and shall be subject to the provision of the Trade Marks Act, 1999.
In exercise of this power the IPAB has made the Intellectual Property Appellate Board (Procedure) Rules
2003. These Rules read with the Trade Marks (Applications and Appeals to the Intellectual Property
Board) Rules 2003 comprehensively lay down the form in which appeals or applications and
counterstatements thereto are to be filed and evidence led before the IPAB.
IPAB has been conferred with powers of a civil court in respect of the following matters:
1. Receiving evidence;
2. Issuing commissions for examination of witnesses;
3. Requisitioning any public record; and
4. Any other matter, which may be prescribed.
At present the IPAB is headquartered in Chennai with Benches sitting at Ahmedabad, Chennai, Delhi,
Mumbai and Kolkata.
Every Bench of IPAB is to comprise of one Judicial and one Technical Member with the Chairman being
empowered to act as a Judicial Member or a Technical Member of one Bench or more than one Bench.
See the IPAB’s website [http://www.ipab.tn.nic.in/] for further information.
Agency
The Trade Marks Act allows an applicant to be represented in proceedings before the Trade Marks
Registry by and Agent. Thus any act – other than swearing of an affidavit – is to be done before the
Registrar by any person, such act can be done by an Agent instead of such person. The law states that a
legal practitioner, a registered trademark agent and any person in the sole and regular employment of
the Principal can be nominated to be an agent. For appointing an agent, the principal must sign an
authorisation of agent prescribed in the Rules and Form TM-48. Such authorisation is mandatory for an
agent to take over representation of any matter before the registry on behalf of another.
1
Article 226 relates to the extraordinary writ jurisdiction of High Courts which may be exercised at the Court’s discretion in
8
A trade marks agent is entitled to represent a principal (client) in all proceedings before the Trade Marks
Registry, including but not limited to preparing all documents, filing applications, signing documents,
attending hearings and transact all business and discharge any functions that are prescribed under the
Trade Marks Act.
Every person desiring to be registered as a trade marks agent is required to make an application to the
Registrar under Form TMA-1. As per provisions of Rule 154 of the Act, the Registrar appoints a date for a
qualified candidate to appear for a written examination in Trade Marks Law and practice followed by an
interview. The candidate is expected to possess a detailed knowledge of the provisions of the Act and
the Rules. The qualifying marks for the written examination and interview is 40% and 60% respectively
and a candidate is declared to have passed the examination only if he/she obtains an aggregate of 50%
of the total marks.
9
IV
TRADEMARK – DEFINITION AND MEANING
Trademarks are used by traders to distinguish their goods and services from their competitors in a
crowded market place. The idea behind branding being to create an association with the product for
consumers to easily identify it. A trademark symbolises origin of goods and gives confidence to the
purchaser of their consistent quality and value so that each time the product with the same brand is
purchased, the consumer is sure of its nature and quality. Companies spend a fortune in brand building
and creating an association in the minds of consumer and advertising and promotion play a key role in
such exercise thereby building value for the brand and making it a valuable asset. In economic terms
thus a brand / trademark can be sold as property and monetized even by way of licensing / franchising.
Thus it simultaneously become relevant for the companies to protect the value and its strength in
generating revenues in a market place form counterfeiting, imitation products, look alikes, etc. The law
on trademarks thus looks at all these aspects of trademarks and accordingly the Indian law has detailed
provisions to take care of such business environment.
In Sumat Prasad vs. Sheojanan Prasad AIR 1972 SC 2488 it was held that “The function of a trade mark is
to give an indication to the purchaser or a possible purchaser as to the manufacture or quality of the
goods, to give an indication to his eye of the trade source from which the goods come, or the trade hands
through which they pass on their way to the market.”
In M/s Power Control Appliances & Ors. Vs. M/s Sumeet Machines Pvt. Ltd 1994 (2) JT 70, it was held
that “It is a settled principle of law relating to trade mark that there can be only one mark, one source
and one proprietor. It cannot have two origins.” Therefore the primary function of a trade mark is to
indicate the source and origin of the goods sold under it.
Thus, it can be said that a trademark serves to identify source of goods and as indicator as origin of
goods. A trademark also guarantees a consumer of the consistent quality of the products upon which it
is used. These principles have been enshrined in the modern definition of a trademark. Indian Act
defines a “trade mark” in section 2(1)(zb) and states that a trademark means a mark:
(a) Capable of being represented graphically;

(b) Capable of distinguishing the goods or services of one person from those of others; and
(c) Used or proposed to be used in relation to goods or services for the purpose of
indicating or so to indicate a connection in the course of trade between the goods or
services and some person having the right, whether as a proprietor or a permitted user,
to use the mark2.
The law also provides a non inclusive definition of a mark and states that a mark includes device, brand,
heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, combination of
colours or a combination of any of the above. Thus any symbol, shape, colour scheme etc can be a mark
2
With respect to collective marks the reference to the mark “distinguishing the goods or services of one person from those of
others” is to be construed as a reference to the mark “distinguishing the goods or services of members of an association of
persons which is the proprietor of the mark from those of others”
10
and can also qualify to be a trademark if it qualifies the criteria of section 2 (1)(zb). It is to be noted that
shape of goods, packaging, combination of colours, certification marks and collective marks have been
expressly included within the meaning of a trademark.
While the trademarks Act upon registration confers statutory rights upon the registered proprietor to its
exclusive use, one must bear in mind that India being a common law country protects the proprietary
nature of marks by protecting goodwill generated by virtue of use of the mark in the market place. Such
goodwill is specifically protected and a trader is entitled to institute action for passing off action
unauthorised use of his mark or name or other symbols / trade dress used in his business.
“Use” of trademark - The Act defines use of a trademark in relation to goods as “a reference to the use
of the mark upon, or in any physical or other relation whatsoever, to such goods”3. Use of a trademark
must be such as to create a connection in the course of trade between the proprietor of the mark and
goods. It would be sufficient if the mark were so used that it will in fact indicate trade origin.
It has been held that trade mark must be visible at the time of purchase4. Use of a mark on a container
holding goods, when the goods themselves were incapable of being stamped, held to be use in physical
relation to goods5. The law provides that use of a trade mark is not only use upon a product but any use
made in relation to products and services and it has been held that the use of a mark in respect of
goods, by virtue of its definition, may be other than in physical relation for e.g., in invoices6. Thus a mark
would be treated to be in use if it is used in relation to goods or services such as on pamphlets,
catalogues, advertisements also constitutes use of the trademark.
Under the provisions of the Act, if a trademark is applied on goods in India that are to be exported form
India, such application of trademark on goods in India constitutes use of the mark in India.
Where a trade mark is registered in respect of pre-recorded video tapes and the mark is recorded on the
tapes by means of signals, then conversion of these signals into images upon playing the video was held
to be use of the trade mark in respect of pre-recorded video tapes7.
Free distribution of goods as advertising media cannot be regarded as trading in those goods and
accordingly use of the mark in relation to such goods does not amount to trademark use. In Harold’s
Appln. (1951) 68 RPC 221 it was held that sole use of the mark in advertisements without the presence
of any goods in the market cannot qualify as use of the trade mark. Free sale and distribution of samples
may not amount to use of a trademark for the purposes of the Act.
3
Section 2(2)(b)
4
Unilever (striped tooth paste) Tm [1980] FSR 280 – use of stripes in tooth paste which was visible only after purchase was not
regarded as trade mark use
5
Spillers’ Appln. (1954) 71 RPC 234
6
Revlon v Rajendra Kumar AIR 1995 Cal 30
7
Esquire Electronics v Roopchand [1991] RPC 425
11
V
OBTAINING TRADEMARK RIGHTS
This chapter explains the process by way of which registered rights are secured by the owners. Securing
registered rights in a trade mark are strongly advisable to acquire statutory rights through clearing the
tests of registrability provided for under the statute. Registration is the prima facie proof of validity and
clears way for the owner of establishing its title and enforcing its rights. This Chapter is focussed on
discussing the procedure stipulated under the Act and Rules to obtain registration of a trade mark and
the practice followed by the Registry during prosecution of a trademark application.
Procedure and Practice:
Forum & Jurisdiction: Application for registration of trade marks are filed with the office of the trade
marks registry within the local jurisdiction of which the applicant is situated. The application must state
the Principal place of business of the applicant. As there are five offices of the trade marks registry, an
applicant must choose the right office to file its application for registration of trade marks. The
appropriate jurisdiction (Rule 4) for lodging an application for registration of a trade mark is that office
of the trade marks registry within the territorial jurisdiction of which either the principal place of
business of the applicant (rule 3) is located or, in the absence of a principal office in India (particularly,
for overseas applicant), within the territorial jurisdiction of which the address for service in India (rule
18) is located. An overseas proprietor may designate an address for service in india, usually the agent’s
office.
Most functions of the trade marks registry, except- publication of trade marks journals, issuance of
registration certificate and post registration functions, including renewal, are decentralized and
executed by respective offices.
Filing Process: The Act provides that any person claiming to be the proprietor of a mark that is used or
proposed to be used by him may apply to the Registrar of Trade Marks for registration of the mark8. An
agent or representative is expressly barred from registering a trademark in his own name without
authority.
A. Requirements (Section 18)- For completing the application form and to be able to decide the
appropriate filing form (refer to x(c) below) provided under the second and the third schedule of
the Act (Rule 12), the applicant/its agent must make available the following
information/documents:
i. Particulars of the applicant (Rule 16) - Name and address of the applicant. In case of more than
one place of business, the principal place of business must be specified. In the absence of place
of business, an address for service in India must be provided (see ii below). Address for service
may also be provided for an applicant having a principal place of business in India.
8
section 18(1)
12
ii. Trade Description of the applicant (Manufacturer/Merchant or Service provider) (Rule 16) -
This information must be incorporated in the application to indicate the nature of the
applicant’s business.
iii. Description and Representation of the mark (rule 28); word/logo/device mark - The
application must be accompanied with a specimen of the trademark and description stated
therein to specify the nature of mark for which registration is sought i.e. whether it is a word
mark, a logo- comprising word and/or device or other elements, a device mark per se. If the
applicant is desirous of registering a colour mark, three dimensional mark or shape of goods, the
application form must bear a statement to that effect and comply with other formalities
associated with such marks as prescribed under the Act before submitting the form at the
Registry (see ix below ‘Completing the Application Form’)
iv. Goods and/or Services for which registration is sought and classification of goods/services
under the relevant class(es) specified in the fourth schedule of the Act (rule 22)
The Goods and/or services in respect of which the mark is sought to be registered must be
identified in the application form and classified under the corresponding classes provided in the
fourth schedule of the Act. Mere class headings are not allowed and the application must
specify the correct goods or services of interest.
It is relevant to know that India is a party to the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration of Marks (1957)9. At the
time of enforcement of the Trade Marks Act 1999, the Fourth Schedule to the Trade Marks
Rules 2002 provisioned for Classification of Goods and Services as per the 7th Edition of the Nice
International Classification of Goods and Services. Consequently service marks could be
registered in classes 35 to 42 only and the services registrable in classes 43 to 45 (of the 9th
Edition) could be filed and registered in India in class 42. However, The Trade Marks Rules 2002
has been amended and the amendment has been notified on May 20, 2010. India now follows
the Ninth Edition of the International Classification of Goods and Services. The amended Rules
have expanded the services classes and added classes 43 to 45 in the Fourth Schedule. To give
effect to the amendment the Government of India has issued a public notice no. CG/F/PG-
II/IPAA/2010/218 dated August 23, 2010, (which supersedes the earlier notice issued on July 1,
2010 in the same subject matter and can be accessed at
http://ipindia.nic.in/tmr_new/tmr_act_rules/Notification_20May2010.pdf). The said Public
Notice has implications on the trademarks already registered in class 42 and the reader is
advised to read the public notice thoroughly for greater appreciation
v. Information pertaining to use of the mark in India (rule 27) - An Application for registration of a
trade mark must contain a statement of the period of use of the mark and the person who has
made the use in respect of the goods and/or services applied under the mark for registration.
Alternatively it must be stated that the trademark is proposed to be used. Should the Registrar
9
The Agreement establishes a classification of goods and services for the purposes of registering trademarks and service marks.
The Classification consists of a list of classes—there are 34 classes for goods and 11 for services (Total 45 Classes) and an
alphabetical list of goods and services. The latter comprises about 11,600 items of goods and services. Both lists are amended
and supplemented periodically by a committee on which all contracting States are represented. The current edition of the
Classification is the ninth (entered into force on January 2007), which India started following in the year 2010.
13
deem it necessary, he may call upon the applicant to file evidence of use of the mark by way of
an affidavit and supporting documents.
vi. Authorization of Agent in favour of the trade mark agent to act on behalf of the applicant
(Section 145 r/w Rule 21) - If the applicant has authorised another person to act on its behalf
before the registrar, an authorization of agent in the form prescribed under the Act must be
provided to the agent duly signed by an authorized signatory of the applicant. The Authorization
of agent needs simple execution and legalization/notarization is not required. If it is taking time
for this document to be executed by the authorized signatory of the applicant, it can be filed
subsequently under cover of a simple letter addressed to the registrar. There is no deadline
stipulated to submit the authorization of agent; however, the sooner it is filed, less delay will be
caused in the prosecution of the application for want of the document.
vii. Details of the Priority claim (section 154 r/w Rule 26) - If an applicant has already filed an
application in a country which is member of the Paris convention, the applicant is entitled to
claim benefit of the filing date of the such an application i.e. claim priority on the basis of
application filed in the convention country. However, to claim priority, the application in the
other convention country must be lodged within six months form the date of earlier application
filed in a Paris convention country. Where an application has been lodged in a convention
country by the applicant and if the applicant lodges an application for the same mark in India
within six months from the date of filing of the earlier application in the convention country, the
application in India will be registered as of the date on which the application was made in the
convention country and that shall be deemed for the purposes of the Act to be the date of
registration.
Please note that the application filed on the basis of the priority claim must carry particulars
that are identical with those covered under the convention application which is the basis of
claiming priority. While particulars of the applicant and class have to be identical, the goods
and/or services may be slightly different as long as these are not wider in scope from those
covered under the convention application.
viii. Transliteration and translation (Rule 33) - If a trade mark comprises or contains words in scripts
other than Hindi or English, a sufficient transliteration and translation of such words must be
endorsed on the application form and the additional representations which must accompany
the application form.
ix. Completing the Application Form - Upon duly incorporating the above details and arranging for
the documents required to be submitted, the following additional documents, fee calculation,
execution and other formalities to complete the documents accompanying the application form
must be complied with before the application can be submitted at the Registry. This will ensure
that the application is not kept in abeyance for want of due compliance of such requirements
made obligatory under the Act.
a. Application form in triplicate and Five additional representations (Rule 29)- Every
application for registration of a trade mark shall be made in triplicate and must be
accompanied with five representations of the mark. The representation of the mark on each
of the application form and on all the five additional representations must correspond
14
exactly with one another. The additional representations must bear the following particular
and must be signed by the applicant or his agent:
(i) Name and address of the applicant;
(ii) Name and address of the agent, if any;
(iii) Class/classes of goods and/or services;
(iv) Specification of goods and/or services;
(v) The period of use in India, if any;
(vi) Where an applicant wishes to claim combination of colours a the distinctive element
of the mark, the application must contain a statement and must be accompanied
with one reproduction of the mark in black and white and four reproduction of the
mark in colour;
(vii) Where an application contains a statement to the effect that the trade mark is a
three dimensional mark, the reproduction of the mark shall consist of a two
dimensional graphic or photographic reproduction (for details refer to Rule 29 (3));
(viii) Where an application consists of shape of goods or its packaging, the reproduction
furnished must consist of at least five different views of the trade mark and a
description by word of the mark;
b. Size of representations of the mark (Rule 30)- All representations of the mark must be
durable and each additional representation shall be mounted on a sheet of strong paper of
approximately 33 centimetres by 20 centimetres and a margin of not less than 4 centimetres
must be left on the left hand part of the sheet. The applicant will be required to submit
further representations of the mark if the above specifications are not complied with or, the
Registrar is not satisfied with the representations submitted by the applicant. If the
representation of a trade marks cannot be given in the manner stated herein above, a
specimen or copy of the trade mark may be sent either in full sixe or on a reduced scale and
in such form as the Registrar may think most convenient.
c. Forms to be used for filing different applications provided under the Act and signing of the
application (Rule 25)- As the Act provides for filing multi-class applications, which was not
possible under the earlier Act of 1958 and there are provisions for filing applications for
different marks viz. Trade mark (bifurcated into single class and multi-class applications with
or without priority claim), series marks, certification mark, collective mark, filing of divisional
application to separate classes from a multi-class application different official forms, form
for excess space fee to be paid if the characters included in the specification of
goods/services are in excess of 500 (including space), have been stipulated under rule 25 of
the Act and the description of different filing forms is provided under the second and the
third schedule of the Act (Rule 12).
d. Signing of the application (Rule 25(1)- The application for registration of a trade mark must
be signed by the applicant or his agent.
e. Fee Calculation (Rule 11)- The fees to be paid in respect of actions during the course of
prosecution, opposition, post registration changes, recordal of ownership, renewal and any
other matter under the Act and the rules are to be paid in accordance with those specified
in the first schedule of the Act for different actions.
15
f. Leaving of documents (Rule 8)- The documents to be served or any fees to be paid under
the Act or the rules to the Act shall be made, served, left or sent or paid to the appropriate
office of the trademarks registry.
B. Leaving the completed application at the filing counter of the registry, Issuance of the filing
receipt and Endorsed additional representation sheet - Once the application is finalized, the
following steps ate taken to lodge the application at the at the appropriate office of the trademarks
Registry, which is normally the principal place of business or the address for service:
1. Leaving of documents (Rule 8)- The application completed as per procedure described above is
left at the fee counter of the registry along with the prescribed fee.
2. Issuance of Fee receipt-Either on the same day or, in case of backlog at the counter, fee receipt
is issued by the clerks at the filing counter. The fee receipt bears the particulars of the filing
form, fee, applicant, date of filing and the application number. This is an important document as
a proof of the filing and must be saved to be produced if called for by the Registry during the
course of prosecution or, even otherwise submitted with the letters addressed to the Registry
for inquiring about the status of the matter.
3. Return of the additional representation (Rule 37)-After a month or two of filing the application,
an additional representation submitted along with the filing form is returned by the registry to
the applicant or, its agent with the official number and date allotted to the application. This
number and date becomes the primary identity of the application and must be quoted on all
correspondence with the registry. The endorsed representation must also be shared with the
applicant by the agent filing the application as it is also an official proof of filing bearing the
primary details of the application.
4. Deficiencies (Rule 36)- If there are deficiencies in the application filed for registration of a trade
mark, the Registrar shall send a notice to the applicant to remedy the deficiencies. Upon
notification, if the applicant fails to remedy the deficiencies within month of receipt of the
notice, the application may be treated as abandoned.
C. Searches to ascertain identical and/or deceptively similar trade marks for identical or similar
Goods in the name of third parties
Procedural Search caused by the Registrar (Rule 37)-After receiving the application the Registrar must
cause a search to be made amongst the registered as well as pending trade marks to ascertain whether
any identical or deceptively similar marks exist on the record in respect of same or similar goods and/or
services. The Registrar can cause the search to be renewed any time before the acceptance of the
application but is not bound to do so.
Practice - Pre-filing availability searches by Owners to facilitate smooth registration - It is advisable

and very common for trade marks owners to carry out pre-filing availability searches to pre-empt the
possibility of their mark being blocked by identical/similar trade marks already on record in the name of
third parties. This allows the owners to effectively deal with the third parties marks to pave way for their
application or, where no effective solution is forthcoming, come up with alternative options which can
withstand the relative ground objection on account of identical/similar third party marks being cited
during examination of the application (see Examination procedure below).
16
Trademark Registry Official Database- Searches are carried out through the Registry’s website, which,
amongst other modules, provides for an online search module. The online search which was a paid
service to begin with has now been made free of cost. Searches are carried out using few criterions
using effective combinations and permutations to fetch phonetically and structurally pertinent marks.
Although number of languages are spoken in India, English is one the official language of the Registry.
Thus most of the marks are filed in English. If they are filed in a regional language then the applicant is
required to state the meaning in English or Hindi. The challenge during search comes from how the
marks in regional language are logged in the TM Registry database. In some cases they are scanned as a
device mark and in some cases the English transliteration is fed to describe the mark. The Registry does
not follow a uniform procedure for entering such marks in the official database. Thus, such marks may
not be fetched during the search. Although a lot can be covered through a combination of search
criterions, the results cannot be foolproof as a lot is dependent upon the accuracy with which marks are
fed in the database as well as the search strings or key words used by the owners or their agents to carry
out the searches. Both word mark and device mark searches are possible on the official database.
D. Examination of the Application on Procedural and Substantive Grounds
Acceptance and advertisement - The Act confers discretion on the Registrar to refuse an application,
accept it absolutely application or accept it subject to amendments, modifications, conditions or
limitations. The Registrar’s discretion is subject to the provisions of the Act and it has been held that the
discretion is to be exercised reasonably and not capriciously.
Examination - After four to six months of the issuance of the endorsed representation sheet the
application filed for registration is examined by the Registry and the official examination report is issued
to the owners or their agents for filing a reply within the timelines prescribed under the Act as discussed
hereunder.
This entails checking for procedural compliance in meeting all the filing requirements as per the rules
under the Act viz. Accuracy of filing forms, complete details of the applicant/agent, payment of
appropriate filing fee/excess space fee, filing of the Authorization/priority documents, accurate
classification of the goods and services under appropriate classes etc. The procedural examination
involves compliance with formalities in respect of matters such as specification of goods / services for
which registration is sought; statement of use, i.e. whether the marks have been used in the Indian
Territory prior to the date of application in respect of the specified goods and services; authorization of
agent on the basis of which agents act on behalf of the applicant; and details of the convention
application from which priority is claimed along with a certified copy of the priority application, if any.
Substantive Examination – the examination report may also have objections under Sections 9 and 11 of
the Act which enumerate absolute and relative grounds of refusal of registration. “Absolute Grounds of
Refusal” pertain to objectionable characteristics that are inherent in the mark itself, whereas the
“Relative Grounds of Refusal” arise from similarity of a mark with earlier trade marks and any prior
rights.
a) Absolute grounds for refusal of registration (Section 9)- The section provides that trade marks will
not be registered under the following circumstances:
i. if they are ‘devoid of distinctive character’- 9(1)(a)
17
ii. if they serve to ‘designate the kind, quality, quantity, intended purpose, values,
geographical origin, time of production/rendering of service or other characteristics
of goods or services’- 9(1)(b)
iii. if they consist of elements ‘which have become customary in the current language
or in the bona fide and established practices of the trade’- 9(1)(c)
The Act imposes the requirement that a mark be capable of distinguishing the goods or services of
one trader from those of others in the definition of a trademark itself. Section 9 of the Act lays down
three categories of grounds on which registration of a trademark is barred. The first category
pertains to lack of distinctiveness, the second to public policy grounds and the last is confined to
marks comprising exclusively of shape of goods.
1. Lack of Distinctiveness10: An application for registration of a trademark shall be refused

registration under this section if the mark is:
a. Devoid of distinctive character; or
b. Descriptive or laudatory; or
c. Common to the trade.
An exception to the above rule has been made where a mark has through use, before the date
of application, acquired a distinctive character or where the mark applied for is a well-known
mark.
2. Public Policy11: An application for registration of a trade mark is also barred from registration if:
a. The mark is of such a nature as to deceive or cause confusion
b. The mark contains matter that offends religious susceptibilities of any section of India,
or matter that is scandalous or obscene; or
c. If use of the mark is prohibited under the Emblems & Names (Prevention of Improper
Use) Act, 1950
There is no exception to the above grounds and an inherently distinctive mark or a mark that
has acquired distinctiveness will be refused registration if it falls foul of any of the above.
3. Shape of Goods:12 The third and last category of grounds on which a trademark may be refused
registration applies only to those marks, which are exclusively comprised of the shape of goods.
The following are barred from registration:
a. Shape of goods that result from the nature of the goods themselves; or
b. Shape is necessary to obtain a technical result; or
c. Shape adds substantial value to the goods.
Once again there is no exception to the above grounds and hence even an inherently distinctive
shape mark or a shape mark that has acquired distinctiveness will be refused registration if any
one of the above grounds are applicable.
10
Section 9(1) of the Act
11
12
18
b) Relative grounds for refusal (Section 11) - The relative grounds of refusal, contained in Section 11 of
the current act, pertain to objections to registration of a mark on account of prior conflicting
trademarks. A mark may be refused registration under this section if it is identical or similar to a
registered mark or a convention application whose priority date is earlier than the date of
application of the trade mark in question provided that the registered mark or the convention
application is in respect of identical or similar goods or services and where owing to such identity or
similarity there is a likelihood of the public being confused13. The law also stipulates that a mark
conflicting with a well-known mark will be refused registration under certain circumstances14.
Another circumstance in which a trademark may be refused registration under this section is where
its use is liable to be restrained under the law of passing off or owing to the provisions of the law of
copyright15. The registrar is however obliged not to raise this as an objection to registration of a
mark as this ground can only be taken an in opposition proceedings by an opponent.
An exception to Section 11 is carved under section 12 so that even where a mark is objectionable it
may still be permitted registration in cases of honest concurrent use and other special
circumstances.
Honest concurrent use: The circumstances which the Registrar may take into consideration at the
time of deciding whether a particular case falls within the realm of honest concurrent use include
nature and extent of concurrent use; honesty of adoption and concurrent use; the quantity and area
off trade; the degree of confusion likely to ensue from the resemblance of the marks; whether any
instances of confusion have been proved.
The onus of establishing a case for honest concurrent use is on the applicant of the trade mark
under opposition. The expression honest has been interpreted to mean “commercial honesty” and
the circumstances attending adoption of the trade mark are of considerable importance while
determining the issue of honest use. While considering the question of registration of a mark under
section 12 the Registrar must consider in whose favour the balance of convenience lies taking into
account the hardship that is likely to be caused to the applicant if registration is refused and
weighing it against the hardship to the opponent or harm to the public interest if registration is
allowed.
Deceptive similarity - Under the provisions of the Act “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”. It has been held that the question of whether one mark is deceptively similar to another
is a question of first impression and a question for the court (or tribunal) to decide16. Over the years,
through case law, the courts have developed principles and factors to be applied to determine the
question of deceptive similarity between marks. The criteria for a court of law or tribunal is
concerned with the following factors at the time of determining deceptive similarity and likelihood
of confusion between marks in question that have evolved over the years through precedents are as
follows:
13
14
15
16
Corn Products v Shangrila AIR 1960 SC 142
19
(i) The nature of the marks, whether the marks are words, labels or composite marks;
(ii) The degree of resemblance between the marks, phonetic or visual or similarity in idea;
(iii) The nature of goods or services in respect of which they are used as trademarks;
(iv) The similarity in the nature, character and performance of the goods/services of the rival
traders/service providers;
(v) The class of purchasers/customers who are likely to buy the goods or avail the services, on
their education and intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods;
(vi) The mode of purchasing in the trading channels that the goods/services traverse in the
course of business or placing order for the goods;
The above factors are not exhaustive but only illustrative. It is not necessary that all the factors are
considered while determining similarity of marks. Where a totality of circumstances indicate
deceptive similarity of the trade marks, it may be sufficient.
Rules for comparison of word marks - Courts in India have followed precedents from the English
Courts and laid down rules for comparison of marks including word marks and label marks. The
following passage from the decision in an English case17 has been quoted with approval by the
Supreme Court of India18 and forms the touchstone for comparing word marks:
“You must take the two words. You must judge of them, both by their look and by their sound.
You must consider the goods to which they are to be applied. You must consider the nature and
kind of customer who would be likely to buy those goods. In fact, you must consider all the
surrounding circumstances; and you must further consider what is likely to happen if each of
those trademarks is used in a normal way as a trade mark for the goods of the respective owners
of the marks. If, considering all those circumstances, you come to the conclusion that there will
be confusion – that is to say, not necessarily that one man will be injured and the other will gain
illicit benefit, but that there will be confusion in the mind of the public which will lead to
confusion in the goods – then you may refuse the registration, or rather you must refuse the
registration in that case.”
It has further been held by the Supreme Court that marks must be compared as a whole and it
would not be open to the court (or tribunal) to split up the marks and then compare them19. Other
considerations that have been held relevant while comparing word marks include idea conveyed by
the marks; phonetic similarity to be given prominence when the goods or services are ordered over
the phone; structural resemblance; slurring of syllables; tendency to abbreviate word marks; where
what is common between two marks are common to the English language or in common usage then
regard to be given to the dissimilar portions; whether common part descriptive or distinctive etc.
c) Other Prohibitions – There are a few other provisions which also prohibit registration of a word on
various grounds. Section 13 prohibits registration of words 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 which is declared by the World
Health Organization 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. Section 14
17
Pianotist Appln. (1906) 23 RPC 774
18
Amritdhara Pharmacy v Satya Deo Gupta AIR 1963 SC 449 and Hoffman La Roche v Geoffrey Manners AIR 1970 SC 2062
19
Hoffman La Roche v Geoffrey Manners supra
20
prohibits false use of use of name and representations of living persons or person recently dead, or
a person whose death took place within twenty years prior to the date of the application for
registration of the trade mark. A written consent of the living person or the legal representative of
the deceased person is required to be furnished to obtain such registration.
Other Procedural Provisions to Remember
Examination report must be answered with the time frame of one month as stated in the report. In case
the applicant fails to reply to the objections/proposal communicated by the Registrar or, apply for a
hearing or fails to attend the hearing, the application shall be deemed to have been abandoned.
The deadline of one month is extendible by the Registrar in exercise of the discretionary powers vested
in him, on an application made to him in the prescribed matter and accompanied by the prescribed fee.
Such a request for extension of time is made on Form 56.
Practice: The above being the procedural guidelines applicable to dealing with examination of the
application, the practical side of the examination is as under:
The registry examines the Applications in serial order and examined on the basis of the grounds
discussed herein. Upon examination, currently the official examination report (OER) is uploaded on the
online record of the application together with the official search report annexed thereto in case of
Section 11 objection citing earlier marks as being in conflict. The Registry must also dispatch the original
OER to the applicant/its agent, failing which the term of one month to reply to the OER does not come
into operation.
Upon receipt of the OER, the applicant/its agent after reviewing its contents must deal with the
procedural requisitions and/or substantive objections raised within one month form the date of receipt
of the original OER. If the applicant/its agent is unable to file the reply within a month, a request for
extension of time must be filed to the time to reply by another month. It may be noted that each
request for extension can be filed only for a month and not more on the prescribed form. Normally
several months extensions, at least 5-6 months, are allowed by the Registrar in exercise of the
discretionary powers vested in him. It is, however, in the interest of the applicant, to lodge the response
as soon as practicable so as not to risk abandonment of the application for the delay caused in
prosecution, which can be caused by the Registrar in exercise of his discretionary powers.
Use of the mark prior to the date of application- Distinctiveness is not always an innate quality, it can
also be acquired. An applicant can prove acquired distinctiveness of the trade mark by virtue of use of
the mark made prior to the date of application. This applies to objections on account of inherent
distinctiveness stipulated under section 9. It can be established that the trade mark which originally
may have been descriptive or devoid of distinctive character on different scores, has lost its primary
descriptive significance and through extensive use prior to the date of application has acquired a
secondary significance with respect to the trade mark of the applicant. In other words, if it can be
established that a non-distinctive trade mark by virtue of use has acquired goodwill and has come to be
associated exclusively with the applicant by the trade and public in the sense of a trade mark for
goods/services being sold by the applicant, the objection of non-distinctiveness can be overcome on
such basis. The extent/quantum of use required to establish distinctive character will vary for different
categories of marks and the degree of descriptiveness/non-distinctiveness.
21
Every application filed goes through the examination process. Upon filing written submissions to
overcome any ground for refusal raised in the report, the registrar may either accept them and send the
application for publication or call the applicant or his agent for a hearing. At the hearing the registrar
may accept the application entirely as it is or subject to conditions or limitations or reject it.
Once an application is accepted, it is advertised in the Trade Marks Journal for opposition by third
parties. The Registrar may also advertise a trademark application before acceptance20.
The opposition period is three months from the date of publication extendible by one more month at
request and at the Registrar’s discretion. In case during this period, a third party opposes the
application, then the applicant has to go through the adversarial opposition proceedings and only after
the decision on the opposition the applicant can receive the registration if successful.
20
proviso to section 20(1)
22
VI
REGISTRATION AND RENEWAL

Registration: Upon advertisement practically the applicant must check the details mentioned in the
advertisement to ensure that not only his details are mentioned correctly but the scope of rights in
terms of the specification of goods and service and all classes, priority claims and dates are mentioned
correctly. In addition one must check if the conditions and or limitations imposed ate the time of
prosecution are mentioned correctly or has not been inserted incorrectly.
In case no opposition is filed then the mark proceeds to registration and a registration certificate is
issued in respect thereof to the owner. At the current pace of functioning of the Trade Marks Registry a
straightforward trade mark application can proceed to registration in normal course within two years
from the filing date. One must check the details of the registration certificate as well.
In the case in of an application claiming priority from a convention country, the mark is registered as of
the date of the application in the convention country and this date serves as the registration date of the
trademark for all future purposes21.
Renewal: A trademark is registered for a period of ten years. Thereafter, the mark may be renewed
indefinitely every ten years. An application to renew a trademark registration may be made at any time
not more than six month before the expiration of the last registration of the trademark. The application
for renewal has to be made on Form TM-12 along with the prescribed fees.
Late Renewal: In the event, a registered proprietor fails to apply for renewal of a mark within the
prescribed time of six months prior to the expiration of the last registration, the Act permits the
proprietor to apply for such renewal during the six-month period following the renewal date along with
a fine. Such an application for late renewal is made on Form TM-10 and a surcharge is payable. This
application accompanies the request for renewal on Form TM-12 and the prescribed fees.
Restoration: Should a proprietor fail to apply for renewal within six months following its lapse, then the
Registrar may remove the registration from the Register. However, a proprietor may seek restoration of
the registration by filing an application on Form TM-13 and paying the appropriate fees after the six-
month period but within one year of lapse of the registration. The application has to be accompanied by
Form TM-12 for renewal and the stipulated fees. The Registrar has been conferred with the discretion to
allow an application for restoration subject to conditions and limitations that he deems fit.
The Act also provides for the effect of removal of a mark from the Register. Where a mark is removed
from the Register, it shall, for purposes of registration of a trade mark application, be deemed to be a
mark on the Register for a period of one year following its removal unless the tribunal is satisfied that
there has been no bona fide use of the mark for a period of two years preceding removal or that there is
no likelihood of deception or confusion between the trade mark application and the registered mark
owing to the manner of use of the registered mark prior to its removal.
21
section 154(2)
23
VII
OPPOSITION PROCEEDINGS
Upon publication of the trademark application in the Trademarks Journal, the application is open for
opposition by third parties. Opposition to registration of a trademark may be filed by any person within
a period of three months from the date of such publication of the trademark in the journal. This period
may be extended by one month, at the discretion of the Registrar, provided the opponent files the
extension request. The Act also provides that an opposition to registration of a trademark may be filed
by any person whether he has a personal interest.
Rules 47 to 57 provide for detailed law and procedure in respect of opposition proceedings and must be
kept in mind while dealing with such proceedings. The opponent must set out a case on the basis of
grounds for opposing the trademark application. The opponent is at liberty to set up any ground to
support his opposition, provided that such ground is based on a provision of law. Grounds that may be
taken in an opposition proceeding include:
1. Grounds under Section 9 – An opponent can on the basis of the facts of the case take any of the
grounds enumerated in section 9. Some of the grounds are that the mark is not capable of being
represented graphically or is devoid of distinctive character or descriptive or common to the
trade or that the mark is of such nature as to deceive the public or cause confusion or the mark
contains or comprises matter, which hurts religious susceptibilities or comprises of scandalous
or obscene matter or its use is prohibited under the Emblems Act. If the mark is exclusively a
shape of goods mark then the shape of goods results from the nature of the goods themselves
or the mark alleged to be constituted by the shape of goods is necessary to obtain the technical
result or the mark alleged to be constituted by the shape of goods gives substantial value to the
goods.
2. Section 11 – The ground under section 11 is based mostly upon the prior rights of the opponents
In case the opponent has registrations, then details of the registration must be mentioned in the
Notice of Opposition stating that the trademark is identical or similar to a registered trademark
and in respect of identical or similar goods/services or it is identical or similar to a well-known
mark and in respect of dissimilar goods/services or that its use will lead to passing off or violate
copyright
3. Section 18 - That the applicant’s claim to proprietorship of the mark is false or applicant’s claim
to user is false or the applicant has no bona fide intention to use the mark in respect of all or
some of the goods/services for which registration is sought.
4. A number of other grounds may also be taken which are subject of absolute refusal.
Procedure
Notice of opposition: An opposition proceeding is initiated by the filing of a notice of opposition on

prescribed form TM-5 within the stipulated period. The notice must set out the grounds on which the
opponent bases his opposition. The Rules stipulate that a notice of opposition contain details of the
trademark being opposed, the earlier trademark or right on which the opposition is based, details of the
opponent and the grounds on which the opposition is based. A notice of opposition is also to be verified
24
and the person verifying the notice is to clearly state as to what is verified on his knowledge and what is
verified based upon information received and believed by him to be true. Rule 47 (6) provides that an
application for extension of time to oppose a trade mark should be made in Form TM-44 before expiry
of three months after publication of the mark in the Journal. However, recent case law has affirmed that
that even if the request for extension of time is filed in the fourth month, along with the notice of
opposition the same is accepted and taken on record.
Counterstatement: Once a notice of opposition is timely filed, the Trade Marks Registry serves a copy of
the notice of opposition on the applicant (or his address for service where provided) calling upon the
applicant to file his counterstatement. Counterstatement is filed on the prescribed form TM-6 and It is
mandatory that it is filed within two months of receiving notice of the opposition. If the applicant fails to
file the counterstatement within this period, the application shall deemed to be abandoned under
section 21(2) of the Act. The counterstatement is to contain the grounds on which the applicant relies in
support of his application and the applicant’s reply to the contents of the notice of opposition. Like the
notice of opposition, the counterstatement is also to be verified.
Evidence in support of opposition: Once the counterstatement is filed, the Trade Marks Registry serves
a copy of the counterstatement on the opponent calling upon him to file his evidence in support of
opposition within two months of receipt of the letter or else intimate the Registrar that he does not
intend to file any evidence. This period of two months may be extended by one more month, provided
the opponent seeks such extension before the stipulated two months period. The evidence is to be filed
by way of affidavit and a copy served on the applicant. If an opponent fails to file his evidence in time or
fails to intimate the Registrar that he does not desire to adduce any evidence but intends to rely on the
facts stated in the notice of opposition, the opposition shall be deemed to be abandoned.
Evidence in support of application: The applicant, on being served with a copy of the evidence filed by
the opponent or on receiving the intimation that the opponent does not desire to adduce any evidence,
shall file his evidence in support of the application within two months or intimate the Registrar that he
does not desire to adduce any evidence. This period may be extended by one more month, provided the
applicant seeks such extension before the stipulated two months period. The evidence is to be filed by
way of affidavit and a copy served on the opponent.
Evidence in reply by opponent: The opponent on being served with a copy of the applicant’s evidence
has an opportunity to file his evidence in reply. The evidence filed at this stage is to be strictly in reply to
the applicant’s evidence. The period for filing this evidence, which is also by way of affidavit, is two
months, extendible by upto another month.
All evidences must be filed by way of an affidavit on Rs. 100 non-judicial stamp paper and a copy must
be served on the other side. If the opponent is based in India, the affidavit is required to be simply
notarized by a notary public and filed at the Registry. However, if the opponent is based overseas, the
affidavit is required to be notarized in the country where the deponent is present and once the executed
document is received in India it needs to be appropriately stamped as per Indian laws. All the principles
and requirements of the Evidence Act, 1972 and the Code of Civil Procedure 1908 are required to be
followed in this regard. The Affidavit submitted as evidence may also be accompanied by any documents
that the party wishes to rely on which establish the use, distinctiveness, goodwill and reputation of the
trade mark.
25
As per procedure, any evidence filed beyond the statutory period of two months and the extended
period of one month has to be filed along with an Interlocutory Petition praying for the condonation of
the delay in filing the Evidence and taking the same on record. A copy of the Interlocutory Petition is
served on the other side and the Registrar may call for a hearing thereon. Normally, Interlocutory
Petitions are accepted in the interest of justice if the delay is not substantial and reasonable grounds for
such delay have been mentioned in the Petition. There are ample judicial precedents when the extra
time taken has been condoned. In Hastimal Jain trading as Oswal Industries vs. Registrar of Trade Marks
2000 PTC 24 Del it has been held that relevant provisions of law are merely directory in nature and not
mandatory. Further, it is a settled principle of law that Procedural rules, even in civil cases are hand-
maidens of justice which cannot be allowed to obstruct the course of justice.
If the deadline to file any of the aforesaid pleading(s) falls on a holiday or non-working day at the
Registry, such date is legally extended to the next working day.
Further Evidence: The Registrar has the power to permit either party to file additional evidence. It has
been the practice of the Registrar not to shut out evidence, even if it means delay of proceedings.
Hearing: The Act mandates that the Registrar give both parties an opportunity to be heard prior to
deciding the opposition proceeding.
Once the evidence stage is complete the Registrar is to fix the opposition proceeding for a hearing. On
receipt of the hearing notice both parties are to intimate the Registrar of their intention to attend the
hearing. A party that fails to intimate the Registrar may be treated as not desiring to be heard and the
Registrar may act accordingly. After hearing both sides the Registrar passes an order and communicates
it to the parties. Either party has a right to appeal against that order.
Well Known trademarks –

The Indian law has elaborate provisions in section 11 relating to well known trademark. A well known
trademark is protected from imitation by third parties even in respect of goods or services that are other
that the goods or services in respect of which the well-known mark is used. The Act confers protection to
well-known marks in questions involving registrability of the mark and third party registration of the
well-known mark or a mark similar to a well-known mark. The provisions relating to well known
trademarks enshrined in section 11 are very relevant for trademark opposition proceedings. Section
11(10)(i) of the Act mandates that the Registrar while considering an application for registration of a
mark or an opposition proceeding has to protect a well-known mark against identical or similar marks.
However where a mark that is identical or similar to a well-known mark has been used or registered in
good faith prior to the commencement of the Act, then nothing in the Act will prejudice such rights
acquired in good faith.
Article 6bis of the Paris Convention and the provisions of the TRIPS Agreement required member
countries to provide protection to well known trade marks. Accordingly, to comply with its international
obligations India introduced the concept of statutory protection of well known trade marks in the Act by
means of sections 11 in the Act. Well-known trade marks are defined under section 2 (1)(zg) of the Act
which is as follows:
“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
26
mark in relation to other goods or services would be likely to be taken as indicating a connection in the
course of trade or rendering of services between those goods or services and a person using the mark in
relation to the first-mentioned goods or services.
Section 11 of the Act lays down the requirements which are to be kept in mind by the Registrar of Trade
Marks while accepting or rejecting a mark for registration. A thorough reading of section 11 is required
to fully appreciate the extent of protection to well known marks conferred by the Act. While sub-
sections (6), (7) and (8) of section 11 clearly provide the factors to be kept in mind by the Registrar in
deciding whether a mark falls within the category of well-known marks, sub-section (9) states the
factors which should not be taken into consideration to arrive at the conclusion that a mark is well-
known. Sub-section (10) places an obligation on the Registrar to protect a well-known mark against
identical or similar trade marks.
27
VIII
RECTIFICATION PROCEEDINGS
Rectification / Cancellation Proceeding
Any person aggrieved by the entry or the absence or omission of an entry made in the Register may seek
orders from the Registrar or IPAB canceling or varying the entry, as the tribunal may deem fit, by way of
filing a rectification / cancellation petition. Unlike opposition, a rectification can be initiated only by an
“aggrieved” person. As to what is the meaning of a ‘person aggrieved’ the Supreme Court of India has
held that the connotation of this phrase differs depending on the ground of rectification/ cancellation.
The court observed in Hardie Trading Ltd vs. Addisons Paint and Chemicals Ltd. that this phrase would
be construed as locus standi ascertained liberally in a case involving rectification / cancellation on the
ground that an entry is wrongly made or remaining on the Register, in view of the public interest in
having such an entry removed. However in rectification proceedings involving non-use the petitioner
will have to establish some possible way in which he will be damaged if the entry is allowed to continue
on the Register.
The Act empowers the Registrar or the Appellate Board to suo moto rectify / cancel a trade mark from
the trademarks Register, after following the prescribed procedure, against a registered proprietor. The
grounds on which such proceedings may be instituted is restricted to an entry being wrongly made or
remaining on the Register.
Grounds of rectification / cancellation
The grounds on which a rectification / cancellation proceeding may be instituted include:
1. Non-use of the registered trademark22: Section 47 of the Act provides for rectification /
cancellation of a registered trademark on grounds of non-use.
A trademark may be removed / cancelled from the Register of Trademarks in two circumstances
involving non-use.
(i) One that a trade mark may be removed from the Register if it is shown that the trade
mark was registered without an intention to use the mark and that the mark has in fact
not been used upto a period of three months prior to application for rectification/
cancellation.
(ii) The other is that a trade mark may be removed if it can be shown that up to a date
three months before the date of filing the rectification / cancellation application, a
continuous period of five years from the date on which the trade mark is actually
entered in the register or longer has lapsed during which there has been no use of the
trade mark.
With respect to the second ground the statute provides an exception in the case of non-use
where such non use is owing to special circumstances in the trade, including restrictions on the
use of the trade mark in India imposed by any law or regulation and not to any intention to
abandon or not to use the trade mark in relation to the goods or services to which the
application relates. Wartime restrictions and prohibition of import of goods or even high import
22
section 47 of the Act
28
duties, which make trade unviable in respect of goods, for which the mark is registered may
constitute special circumstances.
The non-use complained of may be in respect to some or all of the goods or services for which
the trademark is registered and in the case of the former the mark will only be expunged in
respect of those goods or services for which the mark has not been used. In some cases use of a
trademark in respect of goods or services that are of the same description or associated with the
goods or services in respect of which the trademark is registered may be relied upon to
overcome the objection on grounds of non-use.
In order to overcome an attack on the ground of non-use a proprietor must establish bonafide
use and commercial use on substantial scale is not the requirement. Sale of goods to restricted
markets such as bonded warehouse, foreign embassies and missions, United Nations agencies
has been held to be bonafide use. Isolated instances of use have been treated as sufficient to
defeat an application for rectification / cancellation.
Relevant to this section are certain provisions of the Act relating to use, which may be relied
upon by a registered proprietor in defending a rectification proceeding initiated on grounds of
non-use:
- Use of an associated trademark or a trademark that has alterations and modifications

that do not substantially affect its identity, may at the discretion of the Tribunal, be
regarded as equivalent to use of the mark sought to rectified23;
- If any trade mark and a part thereof are registered separately then use of the trade
mark shall be deemed to be use of the part24;
- Use of a trade mark solely in respect of goods or services to be exported from India
deemed to be use of the mark in India25; and
- Use of a registered trademark by a permitted user, will be deemed to be use of the mark
by the registered proprietor26
Failure to observe a condition entered on the Register in relation to the trademark27: The
Registrar is empowered to register marks subject to conditions such as manner of use of the
mark; nature, character or quality of the goods; geographic origin of the goods, etc. The failure
of a proprietor to comply with these conditions will make the mark liable to rectification.
2. Section 57(2) of the Act: This sub-section provides four grounds of rectification / cancellation of
the Register namely:
(i) That the register suffers from the absence or omission of an entry;
(ii) Entry made without sufficient cause – a trade mark may be expunged from the Register
on the grounds that it is an entry made without sufficient cause if it can be shown that
the mark was put on the Register in contravention of the provisions of the Act including
that the mark was likely to cause confusion on the date on which the mark was put on
the Register or that the mark is not distinctive. Where a mark is attacked on grounds of
23
Section 55(1)
24
Section 55(2)
25
Section 56
26
Section 48(2),
27
section 57(1) of the Act
29
non-distinctiveness and it is shown that the mark was not distinctive on the date that it
was put on the Register, the action may be defended by adducing evidence of
distinctiveness of the mark as of the date of institution of rectification proceedings28.
(iii) Entry wrongly remaining on the Register – For a trade mark to be expunged on this
ground it must be shown that the mark remaining on the Register would be in
contravention of some provision of the Act. A mark may be expunged on the ground
that it has ceased to be distinctive of the goods or services of the proprietor. A
trademark may also be attacked under this head on the ground that it is likely to
deceive. However where the likelihood of deception did not exist on the date on which
the mark was put on the Register but has subsequently become so, a court will
ordinarily not expunge such an entry unless the likelihood of deception arose owing to
the conduct of the registered proprietor29;
(iv) That there is an entry or defect in the entry – An error or defect may be clerical or
substantial.
While considering application under this section, the primary duty of the Tribunal is towards the
public and maintenance of purity of the Register.
Suo Moto Rectification by the Registrar – The Tribunal has the power to suo moto rectify a trademark
of its motion and make order for rectification after following necessary procedure against the registered
proprietor or registered user or any other person who it appears from the Register to have an interest in
the trade mark, after apprising them of the grounds and appointing a date of hearing in the matter. The
party receiving the notice has a right to file written submissions and make oral submissions at the
hearing. In the event that the Registrar decides to rectify the Register then such decision has to be given
in writing and conveyed to the concerned party.
Procedure for Rectification / Cancellation - Rectification proceedings before the Registrar: Rectification
proceedings may be initiated by filing form TM 26 along with prescribed fee accompanied by a
statement of case, in triplicate, setting out the applicant’s interest, the facts on which he relies and the
relief (s) that he seeks. The registered proprietor must file his counterstatement to the rectification
application within two months from the date of receipt of the petition. The two month period is
extendible by upto a month at request.. Thereafter the procedure, for evidence, hearing etc. is identical
to the procedure prescribed in respect of opposition proceedings as prescribed in Rule 93.
Rectification/ cancellation proceedings before the IPAB: The IPAB has its own form of application for
rectification. In addition, the procedure before the IPAB involves the applicant filing all documentary
evidence, by way of affidavit, along with the application. Once the application is filed the registered
proprietor is given an opportunity to file his counter within two months, which is extendible, along with
any documentary evidence, which is by way of an affidavit that he intends to rely on. The next stage is
filing of a reply by the applicant pursuant to which the matter is heard and disposed off by the IPAB. For
further insight into the procedure please refer to The Trade Marks (Applications and Appeals to the
Intellectual Property Appellate Board) Rules, 2003 and The Intellectual Property Appellate Board
(Procedure) Rules, 2003.
28
section 31(2) of the Act
29
GE Tm [1973] RPC 297
30
IX
ASSIGNMENT AND LICENSING OF TRADEMARKS
Assignment / Transmission of trademarks
A trademark as a proprietary interest for a trader can be sold and monetized under the current law.
Thus these provisions have huge relevance in the current Indian economic environment particularly
when a company is acquiring assets of another or in a transaction of similar nature.
A registered proprietor has the right to assign a trademark and give receipts for any consideration for
such assignment30. The assignee acquires title and rights to the mark assigned subject to conditions and
limitations imposed on the registration and subject to any concurrent registration and rights created
under section 12 of the Act. An application to register the title of a person as subsequent proprietor of a
trade mark must be made on Form TM-24 along with the prescribed fee. One form can be used for
multiple marks registered in the name of the same proprietor.
A registered trademark is assignable in respect of some or all of the goods/services for which the mark is
registered and with or without the goodwill of the business concerned31. An unregistered trademark
may also be assigned with or without the goodwill of the business concerned32. In case of an assignment
without goodwill, whether of a registered or unregistered mark, the procedure requires an assignee to
apply to the Registrar for directions to advertise the assignment within six months of the assignment,
which period may be extended by a maximum period of three months, at the discretion of the
Registrar33.
The law prohibits assignment of a trademark in a manner in which multiple exclusive rights are created
or exclusive rights are created in India or in different parts of India34. The assignment of a trademark is
prohibited if it creates circumstances wherein exclusive rights are created in more than one person to
the use of the trademark in relation to same goods or services; same description of goods to services;
and goods or services or description of goods or services which are associated with each other. However
the assignment may not be deemed invalid if the exclusive rights are such as not to be exercisable by
two or more of those persons within India otherwise than for exports in markets outside India.
Similarly, The assignment is prohibited if the assignment results in circumstances whereby exclusive
rights to the use of the trademark subsists in relation to goods to be sold or traded in any one place in
India and exclusive rights in another person, in any other place in India, to the use of the trademark or
nearly identical trademark in relation to; same goods or services; same description of goods or services;
and goods or services or description of goods or services which are associated with each other. However
such an assignment may be permitted with the prior approval of the Registrar, if the registrar is satisfied
that in all circumstances the use of the trademark in exercise of the said rights would not be contrary to
the public interest.
30
31
32
33
34
section 40 and 41 of the Act
31
The Act also mandates that associated trademark be assigned together and not separately35.
Under section 45(1) of the Act it is mandatory that the assignee be brought on record as the subsequent
proprietor of a registered trademark. Although there is no express stipulation in respect of assignment
of a pending application such action should be taken as a best practice in respect of pending
applications as well. However, if there is any dispute on the validity of an assignment between the
parties, the Registrar may refuse to register such title until a competent court has determined
the rights of the parties.
Under section 45(2) of the Act, a deed of assignment will not be admissible inter alia in a court of law as
proof of title of a registered trademark. On the import of section 45 there is a line of case law36,
particularly in the Delhi High Court and the Chennai High Court, wherein courts have refused to non-suit
or deny interim relief to an assignee of a registered trade mark whose name is yet to be entered in the
Register.
The Rules stipulate that any instrument produced in proof of title that is not properly or sufficiently
stamped can be impounded by the Registrar and shall be dealt with in the manner provided by Chapter
IV of the Indian Stamp Act, 1899. The insufficiently stamped instrument is inadmissible in evidence and
cannot be relied upon. Since the Stamp Act is a state subject, relevant entries in the particular state’s
stamp act must be checked to ensure that the conveyance document is appropriately stamped. As a
best practice it is recommended that necessary action be taken to record an assignment of trade marks
at the earliest opportunity.
Trademark licensing
The current Trademark Act has detailed provisions on trademark licensing. Under old law it was
The law defines “permitted use” as use of the trademark by a registered user or by any person, other
than the registered proprietor or registered user, who uses the trademark with the consent of a
registered proprietor and under a written agreement. Therefore, even if the license is not submitted for
recordal of licensee as a registered user, the permitted use made by any person under such written
agreement, while maintaining a connection in the course of trade, will accrue to the benefit of the
registered proprietor and will be sufficient to protect the registered trademark against an action for
revocation on the ground that it is not being used in India by the registered proprietor.
The benefit, however that flows from registration of a license agreement with the Registrar is that the
registered user becomes entitled to sue for infringement of trademark in his own name, unless his
agreement with the registered proprietor has any provisions to the contrary.
35
36
Charak Pharma Pvt. Limited v. Prashi Pharma Private Limited, (2004, Del HC, Mukundam Sharma, J); M/s Modi Threads
Limited v. Som Soot Gola Factory, (1992, Del HC, P K Bahri J.); T Mahommed Zumoon v. Fathimunnissa Bibija, Air 1960 Madras
80; M/s Hindustand Lever Limited v. Bombay Soda Factory, AIR 1964 Mys 173
32
Procedure for registration of registered user - The Registrar has the power to confer registration of a
user under a registered user agreement. The Rules provide that an application to register a proposed
registered user is to be filed within six months of execution of the trademark license agreement. To
register a registered user agreement, the registered proprietor and the proposed registered user have
to jointly apply to the Registrar in the prescribed form, providing him with the agreement or an
authenticated copy of the agreement and affidavit (of the registered proprietor) affirming to the
following:
- Relationship, existing or proposed, between the parties;

- Degree of control exercised by the proprietor over use of the trade mark;
- Whether the license is exclusive or non-exclusive;
- Goods or services in respect of which registration is proposed;
- Conditions or restrictions imposed with regard to the goods or services;
- Whether the permitted use is for a period or without limit of period.
Further documents or evidence required include any documents or correspondence mentioned in the
agreement. The Trademark Rules further stipulate that the trade mark license agreement disclose terms
of royalty payment, provide means for termination of license and indicate that the use is being made by
way of permitted use.
Once the above requirements have been complied with and upon the his satisfaction the Registrar shall
register the proposed registered user and issue a notice in this respect to the other registered users of
the trade mark.
The law obligates the Registrar to keep the information such as the user agreement and other
documents or evidence etc. provided in relation to registration of a proposed registered user, on
request of the applicant, confidential and not disclose it to rivals in trade.
The Registrar has been also conferred with the power to vary or cancel registration of a registered user.
33
X
TRADEMARK INFRINGEMENT
Trademark Infringement
Registration under the provisions of the Indian Trademarks Act, 1999 (the Act) confers upon the
proprietor of a trademark, the exclusive right to the use of the trademark in respect of the goods or
services for which the mark is registered and to obtain relief from a court of law in respect of
infringement of the trademark. An infringement action is available only to a registered trademark. The
Act also clarifies that no action for “infringement” can be initiated in respect of an unregistered
trademark.
Use for purposes of infringement: For purposes of determining trade mark infringement a person is
defined to use a registered trade mark if he:
1. Affixes it to goods or the packaging thereof;

2. Offers or exposes for sale, puts them on the market, or stocks them for those purposes under
the registered trade mark, or offers or supplies services under the registered trade mark;
3. Imports or exports goods under the mark; or
4. Uses the registered trade mark on business papers or advertising
Acts of trademark infringement

The acts constituting trademark infringement under the current Act is substantially wider than the acts
constituting infringement under the old Act. Under the old law, use of an identical or deceptively similar
mark in respect of those goods for which the trademark is registered amounted to infringement of
trademark rights. The current law however widens the scope of infringement to include the following
acts:
1. Use of an identical or similar mark in respect of identical or similar goods where such use is likely
to cause confusion. Likelihood of confusion will be presumed where the marks are identical and
the goods or services are also identical;
2. If a registered trade mark enjoys reputation (therefore including well-known marks) in India use
of an identical or similar mark in respect of dissimilar goods/services provided that the use of
the offending mark takes unfair advantage of or is detrimental to the distinctive character of the
registered mark;
3. Use of a registered trade mark as part of a trade name;
4. Use of a registered trade mark, without due authorization, by any person, in materials used or
intended to be used in labeling or packaging, or in advertising provided the person had
knowledge that such use of the mark was without authorization;
5. Use of a registered mark in advertising where such use is contrary to honest business practices,
or is detrimental to the distinctive character of the registered mark or where it lowers or harms
the reputation of the registered trade mark;
6. Dealing in goods bearing an infringing mark has expressly been included within the scope of use
of a “registered trade mark” and hence is also infringement;
34
7. In case of marks comprising of words, spoken use of such words has been included in the
definition of use of the mark.
Some decisions illustrating the scope and application of the above provisions are discussed herein
below:
In Hyundai Corporation v. Rajmal Ganna 2007 (35) PTC 652 (Del), the defendant was using the plaintiff’s
invented trade mark HYUNDAI in respect of televisions, antennas, etc. The Court, on account of
similarity of the trade marks and similarity of goods, restrained the defendant from using the plaintiff’s
well known trade mark.
In Aktiebolaget Volvo & Ors. v. A.K.Bhuva & Ors 2006 (32) PTC 682 (Del.), the defendant sought
registration of the trade mark VOLVO in respect of electric motors, pumps, etc. The plaintiff is among
the world leaders in respect of heavy commercial vehicles and construction equipment. The Court
concluded that the goods of the defendant were similar to those of the plaintiff and the adoption of the
plaintiff’s invented trade mark by the defendant was intended to take advantage of the plaintiff’s
reputation, accordingly, granting interim injunction in favour of the plaintiff.
In Sony Kabushiki Kaisha v. Aashish Electricals 2006 (33) PTC 336 (Bom), the plaintiff’s famous and well
known trade mark SONY, registered and used in India in respect of electronic products and
entertainment services, was protected against the defendant who sought to use the trade mark SONNY
in respect of electric goods such as AC adapters.
In Alfred Dunhill Limited v. Mr. Girish Kumar Hatankar & Ors. 2003 (26) PTC 469 (Del), the plaintiff was a
highly reputed company engaged in the business of , inter alia, manufacturing and selling diverse range
of men’s clothing, accessories, toiletries, leather goods, ladies’ handbags, jewellery, fragrances,
umbrellas, etc. The defendant was carrying on business of an investment company under the corporate
name ‘Dunhill Securities Ltd.’. The use of the mark DUNHILL as a part of the defendant’s corporate
name, even though in respect of distinct services, was found to be infringing by the Court in view of the
trans border reputation of the plaintiff and the defendant was accordingly restrained from such use of
the mark.
In Caesar Park Hotels and Resorts Inc. v. Westinn Hospitality Services Ltd AIR 1999 Mad 396, the
defendant was restrained from using the plaintiff’s trade name.
In Dabur India Ltd. v. Emami Limited 2004 (29) PTC 1 (Del), the defendant’s advertisement, where the
defendant stated that the plaintiff’s product could not be used during summer months, was found to be
disparaging by the court and the court restrained such advertisement from being televised.
Infringement under section 29(4)

The essential ingredients of section 29(4) all of which need to be established for the application of the
said section are:-
1. Similarity or identity of the impugned mark with the registered mark;

2. That the impugned mark is used in relation to goods or services which are not similar to those in
respect of which the trade mark is registered;
3. That the registered trade mark has a reputation in India;
35
4. The use of the impugned mark is without due cause;
5. The use of the impugned mark takes unfair advantage of or is detrimental to, the distinctive
character or repute of the registered trade mark.
Unlike in the case of infringement of trade mark in relation to similar goods or services, in the case of
infringement of mark by use in respect of dissimilar goods or services, there is no presumption of
infringement of the mark which means that each element mentioned above has to be established
independently. The section protects those marks which have reputation from injury arising from the
unauthorized use by another in a manner which tends to blur its distinctiveness or tarnish its image. The
concept of Dilution (the word is not mentioned as such in the Act) was found mainly in the European
and American jurisprudence but had started finding its way into the jurisprudence in India even before
the incorporation of section 29(4), clearly brought out by the following cases which were instrumental in
paving the way for the codification of the said law under section 29(4):
Sunder Parmanand Lalwani & Ors. v. Caltex (India) Ltd. [AIR 1969 Bom. 24]
Bata India Ltd. v. Pyarelal & Co. & Ors. [AIR 1985 All. 242]
Daimler Benz Aktiegessellschaft & Anr. V. Hybo Hindustan [AIR 1994 Del. 239]
Aktiebolaget Volvo v. Volvo Steels Limited [1998 PTC 47]
Caterpillar Inc. v. Jorange and Anr. [1999 PTC 570]
Honda Motors Co. Ltd. v. Charanjit Singh & Ors. [2003 (26) PTC 1 (Del.)]
The said cases may be referred to for a better understanding of the subject.
There have been many case since the enforcement of the new law which deal with the nuances of the
said section some of cases are:
Hamdard National Foundation v. Abdul Jalil [2008 (38) PTC 109 (Del.)]
Ford Motor Co. & Anr. v. Mrs. CR Borman & Anr. [2008 (2) CTMR 474 (Delhi) (DB)]
Rolex SA v. Alex Jewellery Pvt. Ltd. & Ors. [2009 (41) PTC 284 (Del.)]
ITC Ltd. v. Philip Morris Products SA & Ors. [2010 (42) PTC 572 (Del.)]
Nestle India Limited vs. Moods Hospitality Pvt. Ltd. [MANU/DE/0399/2010]
Raymond Ltd. v. Raymond Pharmaceuticals Private Ltd. [2010 (44) PTC 25 (Bom.) (DB)]
Chorion Rights Ltd. v. Ishan Apparel & Ors. [2010 (43) PTC 616 (Del.)]
In Ford Motor case Justice Sen observed that “.....Section 29 (4) is palpably an exception to the scheme
of the Act and applies only to those trademarks which have earned a reputation in India. If it is prima
facie clear or it is proved through evidence that the concerned trademark enjoys and commands a
reputation in India, the plaintiffs do not have to prove deception on the part of the defendants or the
likelihood of the customer being misled because of the use of the challenged trademark… relief would be
available even if the purveyed goods are not similar and/or fall in the same category or class.”
The Parliamentary discussion on the Trade Marks Bill was also reproduced to bring out the clear intent
of the legislature behind incorporating S 29(4) “The proposed bill seeks to introduce protection for
registration of trade marks for services in addition to goods. It also seeks to extend protection for well
known trade marks......”
36
In Rolex SA v. Alex Jewellery Pvt. Ltd. & Ors. the defendants were selling artificial jewellery under the
well known trade mark ROLEX of the plaintiffs. Hon’ble Justice Endlaw was of the opinion that Rolex has
a reputation in India and the mere fact that there was a major price difference between the goods of the
plaintiff and the defendant would not come in the way of the consumers linking the two products.
Therefore, the defendants goods would not only blur the distinctiveness of the plaintiffs trade mark but
also tarnish its image as the “goods of the plaintiff may lose their sheen to the strata of society for which
they are intended if such strata finds the goods in the same brand name even though not from the
house of the plaintiff being available for a much lower price. The goods of the plaintiff would then cease
to be status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the
plaintiff.”
In Nestle India Limited vs. Moods Hospitality Pvt. Ltd. the Division Bench in this case emphasised that
all the ingredients of S 29(4) have to be met cumulatively to attract infringement under the said section.
Hon’ble Justice Ahmed observed “We may recall that the learned Single Judge held that the use of the
mark "Yo!" by the appellant "appears" to fall within Section 29(4) (b) of the said Act. And, in so
concluding, the learned Single Judge, in our view, fell into error. All the Clauses (a) to (c) of Sub-section
(4) of Section 29 are to be cumulatively satisfied before a case of infringement can be established. It is
not as if the said clauses are disjunctive or are to be read independently. It is not sufficient for making
out a case of infringement under Section 29 (4) (c) of the said Act to say that the case falls under Clause
(a) or Clause (b) or Clause (c). The conditions specified in all the three clauses have to be satisfied. This is
obvious from the word "and" used in each of the said three clauses.”
Hon’ble Justice S. Ravindra Bhat in ITC Ltd. v. Philip Morris Products SA & Ors. has clearly explained and
clarified the ambiguities in the law related to well known trade marks in this case. The plaintiffs claimed
infringement of their “W- Namaste” logo by the defendants’ flaming tilted ‘M’ logo. Justice Bhat relying
on Adidas – Salomon AG vs. Fitnessworld Trading Ltd. ([2004] Ch 120) among other cases held that the
plaintiff has failed to establish near identity or the closest of similarity between the two logos as is the
requirement of S 29(4). He also observed that in view of the material placed on record there was no
linkage between the defendants’ and the plaintiff’s mark which could cause detriment to the plaintiff or
undue advantage to the former. The court observed “Importantly, the class of users of the plaintiff’s
hospitality services and the consumer of high and mid end priced cigarettes are not the kind who would
asscociate the defendants’ mark (with Marlboro depicted prominently) as those of the rival ITC......”
Exceptions to Infringement and Savings - The Act provides that the use of a registered trade mark to
identify the goods or services as those of the proprietor of the trade mark where such use is not
contrary to honest commercial practices or is not such as to take unfair advantage of or be detrimental
to the distinctive character or value of the trade mark does not fall within the scope of infringement.
The Act further provides that the use of a registered trade mark to designate the kind, quality, quantity,
intended purpose, value, geographical origin or other characteristics of the goods or services does not
infringe the registered trade mark. Further where a trademark is registered subject to conditions and
limitations then use of the mark outside the scope of such registration is not infringement.
Other exceptions to infringement of trademark include –
1. Use by a person of a mark in relation to goods wherein the mark has been applied by the
registered proprietor or a registered user and not obliterated it or if the registered proprietor
has expressly or impliedly consented to such use of the trade mark;
37
2. Use by a person of a mark in relation to services use to which the proprietor of the mark or his
registered user has applied the mark; where the purpose and effect of the use is to indicate that
the services are performed by the proprietor or the registered user;
3. Spare Parts exception: use of registered trade mark by a person in respect of goods that are
adapted to for a part of, or be an accessory to other, goods or services as is reasonably
necessary to indicate that the goods are so adapted;
4. Concurrent Rights: where two or more identical or similar marks are registered under the Act,
the use of any one is not an infringement of the others;
5. Resale Rights: where goods bearing a registered trade mark is legitimately acquired by a person
then the dealing in such goods, including by way of sale, by such person or a person claiming
through or under him is not infringement by virtue the trade mark having been assigned to a
third party after the acquisition of goods or by virtue the goods having been put in the market
by the proprietor or with his consent provided that there is no legitimate reason for the
proprietor to oppose further dealings in the goods for e.g. where the condition of the goods
have changed or impaired after putting them on the market.
The above discussed exceptions apply only to trade marks and collective marks and not to certification
marks.
Savings under the Trademarks law - The Act also saves certain rights and usage from interference by a
registered proprietor or a registered user. Thus even if a mark is registered it can be used to assert rights
in the following situations:
1. The Act expressly saves the rights of a prior user of a trade mark which is identical to or
deceptively similar to a registered trade mark, prior use being understood as use of the mark
prior to use by the registered proprietor (or registered user) or prior to the date registration,
whichever is earlier.
2. Bonafide use by a person of his own name, address or description of goods or service has also
been saved against interference by a registered proprietor or a registered user.
3. The Act also saves the use of words that are names or descriptions of an article or substance.
Under section 36 of the Act a person is prevented from claiming an exclusive right, by virtue of
trademark or patent, over a word, which has become associated as the name or description of
an article. Where there is a well known and established use in trade of a word as the name or
description of an article or where the article or substance was formerly manufactured under a
patent and for a period of two years or more from the cesser of the patent the said word is the
only practicable name or description of the article or substance then the registered proprietor of
such a word, as a trade mark, is liable to have his registration cancelled and he is also precluded
from relying on such a registration in any legal proceedings.
Remedies and Reliefs

The remedies available in an action for trademark infringement include injunction, damages or an
account for profits, delivery-up of infringing labels and marks for destruction and erasure. Notably the
Act empowers a court to issue ex parte orders in the following matters:
- Injunction;
- Discovery of documents;
38
- Preserving of infringing goods, documents or other evidence which are the subject matter of
the suit;
- Restraining the defendant from disposing or dealing with his assets in a manner, which may
adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies.
However, the Act precludes the court from granting an order of damages, other than nominal damages,
where:
- The infringement proceedings are in respect of a collective or certification trade mark; or
- The defendant satisfies the court that he is an innocent infringer and that he immediately
ceased use of the mark complained of on becoming aware of the existence and nature of
the plaintiff’s right.
Offences and Punishment
The Trademarks Act makes provisions against falsifying and falsely applying trademarks punishable with
imprisonment with enhanced punishment in cases related to drugs and foods. Falsifying and falsely
applying registered trade marks, falsely applying trade descriptions, falsely representing a trade mark to
be registered and falsifying entries in the Register are all criminal offences under the Act is punishable
with imprisonment of upto six months or fine less than Rupees 50,000. The sale of goods or provision of
services bearing false registered trade marks or false trade descriptions is imprisonment of upto three
years and fine between Rupees 50,000 to 2lacs.
The law prohibits representing a trademark to be registered when it is not and imposes punishment for
doing so with imprisonment or with fine. Proprietors are advised not to represent an unregistered mark
as registered. The letters “TM” could be simply affixed after the mark in case the mark is unregistered.
The said letters may mean that the proprietor claims trademark rights therein or that the mark is
applied for. The letter R in a circle should be used only when the mark is registered in India. A
Magistrate can take cognizance of such an offence only on a complaint filed by the Registrar of Trade
Marks or an officer authorized by him in writing.
The proprietor of a mark may choose to file a criminal complaint against the said offences committed in
respect of its mark and may even obtain a search and seizure order from a Court directed to the law
enforcement agencies to inter alia search the accused persons premises and seize the infringing or
counterfeit goods. In the alternative he may directly approach the police authorities, not below the rank
of Deputy Superintendent of Police, to search and seize goods, dies, block etc. The Act stipulates that
under this procedure a police officer has to take the opinion of the Registrar prior to conducting such a
search and seizure and he is bound to abide by the opinion so given.
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XI
PASSING OFF
Introduction to passing off
Passing off is a form of tort based on common law principles and protects goodwill of a business, which
is usually represented by a mark, name or get up. It is a remedy available in addition to and independent
of the remedy of an infringement action. Passing off is concerned with misrepresentations made by one
trader, which damages the goodwill of another trader. The substantive law on passing off is entirely
based upon the case law and precedents.
The advantage of a passing off action to a proprietor of a mark is that he need not have the trade mark
registered in India to be able to protect the mark against misuse in India. The action may be based on
the prior use of the trade mark in India and/or the presence of business goodwill and reputation in
favour of the proprietor of the mark in India or the well known status of the trade mark in India. While
infringement of trademark rights is a statutory protection based upon registration of trademark and
exclusive rights conferred by the Act, law of passing off protects an unregistered proprietor of a
trademark which virtue of use of the said mark acquires business goodwill and reputation.
Section 27(2) states that “Nothing in this Act shall be deemed to affect rights of action against any
person for passing off goods or services as the goods of another person or as services provided by
another person, or the remedies in respect thereof”.
The law of passing off is based on the principle that no man is entitled to represent his goods or business
as being the goods and business of another whether such representation is made by the use of any
mark, name (‘name’ implies name under which a business or trade is being run or service is being
provided), sign, symbol, device or any other means such as imitation of get up or trade dress. The get up
of goods comprises the size, and shape of the package or container, labels and wrappers, the dress in
which the goods are offered to the public or the style of writing. It includes the colour or colours of the
label, its decoration and the manner of arrangement of the various features in the label. But anything
that has a value in use may not form part of the get-up of the article. A shape and colour of a container
is capable in law of becoming associated with the products of a particular person indicating his product
and of none other. A plaintiff must establish that the get up imitated by the defendant has become
associated exclusively with his goods and that the defendant’s get up is likely to cause confusion and
deception.
Since the law of passing off is entirely based upon the Common Law and principles of equity, authorities
and precedents of the common law jurisdiction may be looked in and relied upon in cases before the
Indian Courts. The tort of passing off has evolved over the years and today it is not only applied to
representation of one person’s goods as those of another but also extended to business and services
and professions and non-trading activities. The law has evolved to protect traders against that form of
unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the
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benefit of the reputation already achieved by the rival traders. The basic question in this form of tort is
whether the defendant’s conduct is such as to tend to mislead the public that the defendant’s business
is the plaintiff’s or to cause confusion between the business activities of the two.37
It is now well established that a trade name can serve the purpose of a trademark and the reputation or
goodwill of the business is often attached to the trade name, which is protected by courts. Firms or
companies rendering professional services such as transport companies, insurance and banking
business, repair or cleaning services fall under this category. Under this category it has been held that
where the name of a company has acquired reputation in relation to some goods or business, if another
person subsequently adopts a deceptively similar name for similar goods or business the latter can be
restrained by an injunction from carrying on its business under such a name. Domain names are also
held to be protectable as trademarks and there have been many judicial precedents in India where
courts have protected domain names under the law passing off.
Essential Ingredients of Passing Off
The essential characteristics of passing are as follows:

1. That the plaintiffs goods or services have acquired a goodwill and reputation in the market and
are known by some distinguishing feature
2. That there is a misrepresentation by the defendant (whether intentional or not) leading or likely
to lead the public to believe that the goods or services offered by the defendant are goods or
services of the plaintiff
3. That the plaintiff has suffered or is likely to suffer damage as a result of the erroneous belief
created by the defendant’s misrepresentation
It has been held by the High Court of Delhi38 that in a passing off action all that needs to be proved is
that the defendant’s goods are so marked, made up or described by them as to be calculated to mislead
ordinary purchasers and to lead them to mistake the defendant’s goods for those of the plaintiffs and it
is a tendency to mislead or to confuse that forms gist of passing off action. The plaintiff need not
establish fraud nor that any one was actually deceitful or that he actually suffered damage.
The courts have also stated that the purpose of passing off action was not only to protect the
commercial goodwill but also ensure that the purchasers were not exploited and dishonest trading was
prevented. In Horlicks Limited Vs Kartick Sudhakan 2002 (25) PTC 126 (Del), the court restrained the
defendants from using the trademark and label of HORLICKS in respect of Toffees and held that if the
defendants are permitted to use the impugned mark which is not authorised or permitted by the
Plaintiffs, the Plaintiffs would at all times be at the risk of facing consequences of the defendant’s
conduct and unauthorised use.
Registration of a mark or name under the Act is not required to maintain an action to passing off and
non-registration is not a bar to success if the ingredients of passing off are established. Similarly,
registration of a trademark is not a defense in an action for passing off.
37
Ellora Vs Banarsi Das AIR 1980 Del 254
38
Ellora Industries Vs. Banarsi Das Gupta AIR 1980 DEL 254
41
Goodwill
A passing off action protects business goodwill likely to be injured by the misrepresentation. The nature
of goodwill has been the subject of discussion in various cases. Although no precise definition could be
given of its exact scope, the discussion in a precedent will be helpful in understanding the concept:
“…What is goodwill? ... It is the benefit and advantage of the good name, reputation and connection of a
business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old
business from a new business at its start… However, widely extended or diffused its influence may be,
goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the
source from which it emanates…”39. Black’s Law dictionary defines “Goodwill”, inter alia, as inclusive of
every advantage, every positive advantage, that has been acquired by a proprietor in carrying on his
business, whether connected with the premises in which the business is conducted, or with the name
under which it is managed, or with any other matter carrying with it benefit of the business”.
Goodwill as the subject of proprietary right is attached to a business and injury to goodwill may takes
several forms such as diversion of sales, injurious association, misappropriation of business reputation
and other forms of dishonest trading by use of identical or deceptively similar marks, names, get up or
trade dress. The basis of right of action in passing off is that the conduct of the defendant is such that
the public may be let to believe that the goods or services, which the defendant is offering, are in fact
the goods or services of the plaintiff. The property which is said to be injured in such a situation is not
the mark, name or description of the goods but the right to the goodwill of the business which results
from the particular commercial activity using the marks, names, get up or trade dress. Thus, the action
lies where there is a real possibility of damage to some business or trading activity. The plaintiff must
establish that in some sense he is carrying on a business with which the trade or public will be led to
associate the defendant’s activities.
In a passing off action the plaintiff must establish that the mark, name or get up is distinctive of his
goods and business in the eyes of the public or a class of the public and that he enjoys business goodwill
and has reputation in the trade mark in question by adducing the evidence of use of the mark and its
advertisement and promotion. In addition a plaintiff must establish that the conduct of the defendant
(misrepresentation) is damaging or likely to damage his business goodwill and reputation. Although
damage or likelihood of damage is the gist of a passing off action, to maintain an action proof of damage
is not necessary. But the plaintiff must show that there is reasonable probability of his being injured by
the defendant’s action. Once it is established that the defendant’s action will lead to passing off his
goods as those of the plaintiffs’, it can be assumed that the natural consequence of the defendant’s
action will be to cause damage to the plaintiffs’ business.
Transborder Reputation
Ideally to sustain an action for passing off a plaintiff must establish his goodwill and reputation in the
jurisdiction where passing off is complained off. However, by way of judicial precedents the principle of
transborder reputation is well recognised by Indian Courts and it is now well established that an action
for passing off can be maintained even where the plaintiff does not actually conduct business or have
39
Commissioners of Inland Revenue v. Miller, (1901) AC 217
42
trading activity in India so long as the plaintiff can establish that its goods or services conducted under a
mark enjoy transborder reputation, which reputation has trickled into India. Trans-border reputation
may be established by adducing evidence of the following:
1. Worldwide sales turnover;

2. Presence in a number of countries, extent and geographical reach of business;
3. Worldwide expenditure on advertisement and promotion of the mark;
4. International publications/magazines, trade journals carrying advertisements of the mark in
question that enjoy circulation in India;
5. Evidence of any sales made to Indian travellers during their visit abroad;
6. Number of international registrations in various jurisdictions showing adoption of the mark in
various countries;
7. Advertisement through the website on the Internet, which website is accessible in India;
8. Any judicial precedent from other countries where the said mark has been held to be a famous
& well-known trade/service mark;
9. Inquiries made by Indian traders and business houses for franchise/JV tie-ups;
10. Any letters received from Indian customers or persons on any related issue; and
11. Participation in any exhibition/trade fair in India by the Company.
In essence, a plaintiff has to establish that its goods or services enjoy and have acquired reputation;
travelers from India to foreign countries have purchased the goods and brought them to India; the said
goods or services have been advertised in international magazines which enjoy circulation in India and
many potential customers have subscribed to such magazines or seen the advertisement and that the
defendant does not have a satisfactory explanation for the adoption of the mark in question.
There is now a clear line of cases in India where courts have protected well-known marks against misuse
and where transborder reputation has been recognized in actions for passing off. Infact in Daimler Benz
Aktiegesellschaft Vs. Hybo Hindustan AIR 1994 Del 239, the Delhi High Court considered dilution of a
well-known trademark by tarnishment and restrained use of the mark BENZ in respect of underclothing.
In Whirlpool Co. Vs N. R. Dongre 1996 PTC 415 (Del) the court while referring to several cases of
transborder reputation observed that “these cases recognised that the reputation of a trader, trading or
carrying on the business in another country can travel to a country where he had carried no business.
The traders’ transborder reputation could be on the basis of extensive advertisement and publicity. Such
a trader can obtain an injunction in a court where he was not trading to protect his reputation. A
product and its trade name transcend the physical boundaries of a geographical region and acquire a
trans-border or overseas or extra territorial reputation not only through import of goods but also by its
advertisement. The knowledge and the awareness of the goods of a foreign trader and its trademark can
be available at a place where goods are not being marketed, and consequently not being sold”.
Where transborder reputation is established then the conduct of the defendant in trying to cash in on
the international reputation of the plaintiff takes significance and in certain cases has been the decisive
feature in grant of an injunction by the Courts. Where the defendant’s conduct shows that he was aware
of the status and reputation of the plaintiff’s mark and nevertheless adopted an identical or similar mark
in respect of his goods or services, courts are more ready to intervene and restrain the defendant in an
action for passing off. Of course, the defendant also needs to give reasons for adoption of a mark, which
is identical to a mark of international reputation. In Time Warner Entertainment v A.K. Das (1997) IPLR
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331, the defendants had sought to enter into a joint venture project with the plaintiffs and it was
implicit that they were aware of the status and the reputation of the plaintiffs’ mark.
The relevant date for establishing such goodwill or reputation is a date prior to the date of adoption of
the offending mark or name by the defendant. The plaintiff must show that he enjoys proprietary rights
in the goodwill and that the mark, name or get up is distinctive on the date of the use by the defendant.
Likelihood of Confusion and Deception - Where the passing off action is based on similarity of trade
marks, names or get up, the principles of comparison of the marks are applied. There are no general
rules as to what is deceptively similar and each case has to be dealt with having regard to its own
circumstances. In assessing whether confusion or deception is likely, the court may also attach
importance to the question whether the defendant can be shown to have acted with a fraudulent
intent, although a fraudulent intent is not a necessary part of the cause of action.
Field of Activity - It is not material that the plaintiffs and the defendants trade in the same field or trade
in different products or services. Successful passing off actions have been taken even when the
defendants were dealing in altogether different products. There are many precedents where passing off
is not restricted to situations involving competing traders in the same line of business but include cases
of false suggestions that the defendant’s business was connected with that of the plaintiff.
In Daimler Benz Aktiegesellschaft Vs. Hybo Hindustan AIR 1994 Del 239, the Plaintiff was a well-known
car and automobile manufacturer and proprietor of the mark BENZ and a device of three-pointed star in
respect thereof. The High Court of Delhi restrained the defendant from using the said mark and device
in respect of undergarments.
In Honda Motors Co. Ltd Vs. Charanjit Singh 2003 (26) PTC 1 (Del) the Court held that the Plaintiff’s mark
HONDA used in respect of automobiles and power equipment has acquired global goodwill and
reputation and had become distinctive of its products. Defendant’s use of an identical mark on pressure
cookers tended to mislead the public into believing that the defendant’s business and goods were that
of the plaintiff. Interim injunction granted against the defendant. Court rejected the argument that since
the defendants were dealing in different products there was no likelihood of confusion or deception.
In Aktiebolaget Volvo v Volvo steels Ltd 1998 PTC 47 (Bom), the Division Bench of the High Court of
Mumbai restrained the defendant from manufacturing steel ingots used as intermediate products fro
making torsteel used for construction industries. The plaintiff was a multinational company called Volvo
group in the business of land vehicles, aircrafts and marine engines.
Similarly in United Distillers Plc V Jagdish Joshi, the court restrained the defendant from selling the
chewing tobacco using plaintiffs’ trademark renowned trademark Johnnie Walker.
In Ciba Geigy Ltd Vs Surinder Singh 1998 PTC 545 Del the plaintiff was a renowned manufacturer of
toothbrushes and toothpastes and owner of trademarks CIBA and CIBACA. The Court restrained the
defendant’s use of trademark CIBACA in respect of automotive filters. The defendant had no
explanation for adoption of the mark. The court found likelihood of confusion and deception even
though the goods were completely different.
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Various Precedents of Indian Courts
The Indian trademark jurisprudence is full of trademark cases on each issue and it is not possible to
narrow down what to offer to a student or a reader. However, an attempt is made here by offering a
few cases as an example to show diversity. Reader is advised to read other commentaries for more
references to cases. Various methods adopted by persons for representing their goods or business as
the goods or business of other persons include direct false representation, adoption of a trade mark
which is the same or a colourable imitation of the trade mark of a rival trader, adoption of an essential
part of the rival trader’s name, coping the get up or color scheme of the label used by a trader, imitating
the design or shape of the goods or adopting the word or name by which the rival trader’s goods or
business is known in the market. A few precedents illustrating successful passing off actions are as
follows:
Word Marks
Rawal Industries Vs. Duke Enterprises 1983 IPLR 121 – The plaintiff was in the business of oil seals and
suspension rubber bushes for automobiles and was extensively using trade mark DUKE. The defendant
was restrained by injunction from using trade mark DUKE in respect of insulated automobile cables.
Bata Vs. Pyarelal AIR 1985 All 242 – The trademark BATA was extensively used in India in respect of
boots and shoes. The defendants were restrained from using Bata Foam in respect of mattresses, sofas,
cushions, etc.
CEAT Tyres Vs. Jai Industrial 1991 IPLR 77 – The trademark CEAT was used by plaintiff for tyres. The
court restrained by an injunction the defendant from using CEAT for fan belts, V belts.
Alfred Dunhill Ltd. Vs. Kartar Singh Makkar 1999 PTC 294 (Del) – Trademark DUNHILL had acquired
worldwide reputation in respect of tobacco products and related luxury goods. The defendants were
restrained from using DUNHILL in respect of textile goods.
Bajaj Electricals Vs. Metals & Allied Products AIR 1988 BOM 167 – The plaintiffs were using BAJAJ, a
common surname in India, in respect of domestic electric and kitchen appliances. Defendant was
restrained from using BAJAJ in respect of domestic utensils.
Defendant’s name containing plaintiff’s trademark
Globe Super Parts Vs. Blue Super Flame AIR 1986 Del 245 – The plaintiffs were dealing in gas stoves
under the trademark SUPERFLAME that had acquired reputation in India. The defendants adopted the
trade name and trading style BLUE SUPER FLAME and started dealing in identical products. The court
injuncted and restrained the defendant from using BLUE SUPER FLAME as its trading style.
International Business Services Group (P) Ltd. Vs. IBS Technologies Pvt. Ltd. 2000 PTC 595 (Mad) –
Plaintiffs were using and had acquired goodwill and reputation in the trade mark IBS in respect of
computer software development services. The court restrained the defendant by injunction from
incorporating and using the letters / mark IBS in respect of their corporate name in respect of similar
services.
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Non-trading Organisation
International Association of Lions Club Vs. National Association of Indian Lion 2002 (25) PTC 84 Bom, the
High Court restrained the defendant and held that there was no justification for using the word LION in
the name of the defendant’s club when everybody knows that the Lions Club is an international
organisation in existence for last several decades and use of the word lion in the name of the
organisation of the defendants shows their intention to pass off their organisation as that of the
plaintiffs
Get Up/ trade dress/Artistic work in trademark label/Appearance of goods and external
configuration/Shape of article
Nestle vs. Doshi AIR 1939 Cal 466 – The plaintiffs were selling milk products under trademark IDEAL and
a distinctive label on the container, which had acquired reputation. The defendant was restrained from
using trademark CORDIAL and a deceptively similar label.
Anglo Dutch Paints Vs. India Trading House AIR 1977 Del 41 – The plaintiffs were in the business of
selling paints in containers having distinctive colour scheme and get up along with other features
including numeral 1001. The court restrained the defendant from selling identical products in a
container, which was virtually identical to the plaintiffs along with the numerals 9001.
Glaxo Vs. Samrat AIR 1984 Del 265 – The plaintiffs were selling glucose powder in a distinctive carton
using trademark GLAXOSE. The defendants copied various features of the get up of the plaintiffs’ carton
and were restrained by the court from using the same.
Camlin Vs. National Pencil 1989 IPLR 215 – The plaintiffs were manufacturing and selling pencils with a
distinctive colour scheme and get up. The defendants were restrained from copying the same even
though the trademarks used were different.
Richardson Vicks Vs. Vikas Pharmaceuticals 1990 IPLR 44 – The defendants had copied plaintiffs label
and its colour scheme and get up, which also contained trademark VICKS VAPORUB. The defendants
were restrained from using the same even though the trademark VIKAS PACORUB used on the
defendants’ products was per se not similar.
William Grant Vs. McDowell (1994) FSR 690 (Del) – The defendants had copied the essential features of
plaintiffs’ GLENFIDDICH label for single malt whisky and were restrained from using the said label and
false trade description.
Trade names
Montari Industries Ltd. Vs. Montari Overseas Ltd. 1995 PTC 399 - The plaintiffs were using the trademark
MONTARI as part of the corporate name and had acquired distinctiveness. The defendants were
restrained from using the same as part of the corporate name. The division bench affirmed the decision.
Dolphin Laboratories Ltd Vs. Arun Kumar Bansal 1996 IPLR 43 (Del) – The plaintiff had acquired goodwill
and reputation in the field of pharmaceuticals under the trade and corporate name DOLPHIN. The
defendant adopted the word DOLPHIN as part of its corporate name in the same field of activity and
46
proposed to raise capital from the market by issue of shares. The Defendants were restrained from using
DOLPHIN as part of the corporate name and their proposal to raise money from the market was also
stayed.
Pearson Education Inc. vs. Prentice Hall India (P) Ltd. & Ors. [134(2006) DLT 450]- Plaintiff filed for
injunction to restrain defendants from using Plaintiff’s corporate name after purported termination of
the collaboration agreement between the parties wherein it was held that the situation cannot be
allowed that the defendant is allowed to continue use of the trade name which was granted by way of
permissive use under the collaboration agreement once the said agreement has been terminated.
Atlas Cycles (Haryana) Ltd. vs. Atlas Products Pvt. Ltd. [MANU/DE/2122/2007]- Trade mark Atlas was
registered in favor of the plaintiff since 1952 - Defendant No.1, Atlas Products Pvt. Ltd. was incorporated
in 1995 and started manufacturing cycles in February 2002 - Prior to 2002, the Defendant was not
engaged in any cycle-related business and was using the word Atlas as part of its corporate name. The
defendant was restrained from using trade mark Atlas on its cycles, as well as its corporate name in
respect of bicycles and bicycle parts.
Domain Names
Yahoo Inc Vs. Akash Arora 1999 PTC 201 (Del) – The plaintiffs were a renowned search portal and used
YAHOO as a trademark and domain name, which had acquired reputation in respect of such services.
The defendants were restrained from using YAHOOINDIA.COM as a trademark and domain name in
relation to the Internet services. It was held that domain name served the same function as a trademark
and was therefore entitled to equal protection and even if the persons using the Internet were
sophisticated they could be unsophisticated users of information and could be confused by similar
names of the Internet sites.
Aqua Minerals Ltd Vs. Promod Borse 2001 PTC 619 (Del) – Plaintiffs were a renowned manufacturer of
bottled mineral water and used BISLERI in respect thereof. The defendants were restrained from using
the domain name BISLERI.COM
Info Edge (India) (P) Ltd Vs. Shailesh Gupta 2002(24) PTC 355 (Del) – The Plaintiffs were a famous job
portal and known as NAUKRI.COM. The defendants were restrained form using NAUKARI.COM as the
name was phonetically similar to the plaintiffs’ domain name.
Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. [AIR 2004 SC 3540]- The plaintiff claimed worldwide
goodwill and reputation in the coined trade mark Sify and had several domain names registered which
had Sify as a part thereof. The defendants registered domain names www. Siffynet.net and
www.siffynet.com. It was held that a domain name can be said to be word or name capable of
distinguishing subject of trade or service made available to potential users of internet and the principles
of trade mark law and in particular, those relating to passing off would apply squarely thereon.
Mr. Arun Jaitley Vs. Network Solutions Private Limited and Ors.181 (2011) DLT 716- The Plaintiff wanted
to book the domain www.arunjaitley.com. However, after expiration of the domain name, the
Defendants with mala fide intentions transferred the same to Defendant No. 3, an auction site for It was
held that “Domain names are protected under the law of passing off with a personal name being no
exception. Right to use a personal name is superior to that of the commercial right of using the trade
47
mark and thus the entitlement to use it as a trade mark or domain name vests with the person having its
personal name.”
Defences in Passing off

In an action for passing off a defendant may raise many defenses including that the mark, name, get up
or other symbol the use whereof is sought to be restrained is not distinctive of the plaintiff’s goods or
business; that the plaintiff is not entitle to relief on account of delay, estoppel, acquiescence and laches;
that the goods or business of the plaintiff are completely different from those of the defendant and
there is no likelihood of confusion and deception and that the defendant has concurrent right to use the
mark, name, get up or other symbol complained of. In cases where the plaintiff is able to sufficiently
establish that his mark or name has acquired secondary meaning to denote his goods or business, the
courts are then left to consider whether defendants’ use of such mark and name would create likelihood
of confusion with the plaintiff whatever may be his intentions. Concurrent use of a mark or name may
be a good defense in an action of passing off provided the defendant is able to establish such use by
satisfactory documentary evidence.
Delay
A suit for infringement of statutory rights must be filed as soon as the plaintiff comes to know of the
infringing conduct or acts. In general, mere delay after knowledge of infringement does not deprive the
registered proprietor or a statutory right holder of the appropriate remedy for the enforcement of his
rights. It has been held that in cases of infringement that mere delay on the part of the plaintiff in
bringing an action does not debar him from suing for an injunction40 and obtaining the final relief. It may
however be noted that where the delay in bringing an action is unexplained it may have an important
bearing on the issue of grant of an interlocutory injunction. The grant of temporary injunction is a
discretionary relief and a plaintiff has to inter alia establish that continuing use of the mark in question
would cause or lead to irreparable harm and injury. Therefore delay in instituting legal proceedings may
lead to dilution of the strength of a case.
Laches
Inordinate delay would be analogous or similar to laches41. Delay by itself may not be a sufficient
defence in an application for interim injunction but delay coupled with prejudice caused to the
defendant would amount to laches and defeat the interim as well as the final relief. Inordinate delay
would be delay of such a long duration that the defendant would have come to the conclusion that the
plaintiff has possibly abandoned his right to seek relief or to object to the defendant using the trade
mark.
Acquiescence
An injunction may be refused on the ground of acquiescence by the plaintiff in the defendant’s conduct
of infringement of his right. Acquiescence has been defined as sitting by when another is invading the
rights and spending money on it. If a person having a right, and seeing another person about to commit,
or in the course of committing an act infringing upon the right, stands by in such a manner as really to
induce the person committing the act, and who might otherwise have abstained from it, to believe that
he assents to its being committed, he cannot afterwards be heard to complaint of the act. If the
plaintiffs stand by knowingly and lets the defendants built up an important trade until it has become
necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the defendants are,
40
Hi-Design v Hi-Design AIR 1991 DEL 243
41
Hindustan Pencils v India Stationery AIR 1990 DEL 19
48
however, aware of the real legal position yet deliberately or fraudulently put upon the market goods
bearing marks similar to that of plaintiffs in order to obtain trade, which would have otherwise gone to
the plaintiffs there is no room for the doctrine of acquiescence in their favour.
Threat of legal proceedings – It may be relevant to mention the provision relating to a legal action
against groundless threats of legal proceedings. Where any person threatens another with an action for
infringement of trademark or similar proceedings, the person threatened may bring a suit against that
person for a declaration to the effect that the threats are unjustifiable and for an injunction against the
continuance of the threats. He may also recover damages, if any, he has sustained. The plaintiff however
in such an action will not succeed if the defendant is able to show that he is a registered proprietor of
the trademark and that the conduct of the plaintiff is tantamount to infringement of that trademark.
A court will not restrain the party issuing the threats from instituting a suit for infringement or passing
off in a court of law42 and threats action by a person will not result in the party losing the right to bring a
lawsuit or counterclaim against the person. The law bars the filing of a threats action once the registered
proprietor or registered user has initiated a suit for trademark infringement on the same subject
matter43.
In the event that a threat action is filed against a party the party would be given an opportunity to
appear, oppose and lead evidence to defend itself in the action. In addition the party may also file a
counterclaim for trademark infringement or passing off.
Jurisdiction
A suit for trademark infringement can be instituted in court not inferior to a District Court. The Code of
Civil Procedure includes a High Court within the definition of a District Court. In addition the Act permits
a suit for trade mark infringement to be brought in the District Court within whose local limits the
plaintiff, i.e. the registered proprietor or registered user, resides or carries on business. This is an
exception to section 20 of the Civil Procedure Code, which provides that a suit will be instituted in that
court within whose local limits the defendant resides or carries on business or where the cause of action
arose.
Cause of action
Cause of action means whole bundle of material facts, which are necessary for the plaintiff to prove in
order to support his right to the judgment of Court. The cases related to infringement of intellectual
property and passing off are treated as having continuing cause of action and every time an act of
infringement of passing off is committed a fresh cause of action arises in favour plaintiff. It was held in
Bengal Waterproof Limited Vs. Bombay Waterproof Mfg. Co. AIR 1997 SC 1398 that whenever and
wherever a person commits breach of a registered trade mark of another, he commits a recurring act of
breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of
such infringement. The same principle is applicable in other cases related to intellectual property.
42
Dolphin Laboratories Pvt. Ltd. v Kaptab Pharmaceuticals AIR 1981 Calcutta 76; Lakshmi PVC Products Pvt. Ltd. vs. Lakshmi
Polymers, Shoranur 1992 PTC 255
43
Rajni Industries (supra)
49
XII
BORDER MEASURES
Prohibition on Importation of Goods :
The Customs Act, 1962 is the primary law governing confiscation of goods being imported into India. The
Customs Act provides for confiscation of any goods the import of which is prohibited under the Customs
Act or any other law in force for the time being.
Goods bearing infringing marks: Section 140(1) of the Trade Marks Act, 1999 provides that a proprietor
or licensee of a registered trade mark may give a notice in writing to the Collector of Customs to prohibit
importation of any goods on the ground that the import of the said goods constitutes trade mark
infringement. Therefore, it would be open to the registered proprietor or a licensee of a registered trade
mark in India to write to the Collector of Customs in the form of a notice requesting a prohibition on
importation of infringing goods and should such a prohibition be issued then the goods would be liable
to confiscation immediately on importation.
Goods bearing false trade marks: In addition to the above, the Indian Government has, by virtue of the
powers conferred under section 11 of the Customs Act, prohibited import of goods bearing false trade
marks as defined by the earlier Act i.e. the Trade & Merchandise Marks Act, 195844 (old Act) and
consequently goods bearing a false trade mark are also liable to confiscation under the Customs Act and
the Customs officers are empowered to seize such goods.
Procedure: Section 140(1) of the Trade Marks Act, 1999 is a new provision no specific procedure appears
to have been laid down for enforcement of this provision. From our telephonic inquiries with the
Customs Office it appears that there has been no circular or executive order passed regarding
implementation of this provision and the Customs authorities continue to combat trade mark violations
by following the procedure laid down in respect of false trade marks.
The procedure to enforce the prohibition on import of goods bearing a false trade mark involves the
providing of information by a person to the Customs Officer of a suspected consignment of goods and
once this information is provided it is for the Customs Officer to watch for such import and to confiscate
the goods in the event that the Customs Officer is satisfied that the goods bear false trade marks. It may
be noted that the procedure relating to search and seizure of goods bearing false trademarks has been
amended by the Trade Marks Act, 1999 inasmuch as a police officer now has to take the opinion of the
Registrar prior to conducting such search and seizure and he is bound to abide by the opinion so given.
Although this change in law only refers to raid and seizure by police officers and not Customs officers
there is a possibility that the Customs authorities adopt the same procedure prior to seizing any goods
that are complained of bearing false trademarks.
The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (hereinafter the “Rules”)
were notified under Section 156 of the Customs Act on May 8, 2007, vide Notification No. 47/2000-
CUSTOMS (N.T.) in addition to the provisions of the Trade Marks Act and the Copyright Act. These Rules
aim to strengthen border enforcement to prevent entry of pirated and counterfeit merchandise into the
country. These Rules are based on the model legislation drafted by the Geneva-based World Customs
44
GSR 87/1964
50
Organization and have expanded the scope of enforcement to include designs, geographical indications
and patents, over and above the existing provisions on copyright and trademarks violations. To further
understand the procedure and implementation of the Rules, please refer to all the Circulars issued by
the Government of India in respect of the said Rules can be accessed at the Customs website i.e.
www.icegate.gov.in.
Under the Rules, a “right-holder” (owner of protected intellectual property right) has to give a notice in
writing to the Commissioner of Customs at the port of import of goods infringing intellectual property
rights requesting for suspension of clearance of goods suspected to be infringing intellectual property
rights. The Rules also prescribe a format in which the notice has to be given the same along with the
relevant documents is required to be uploaded on the Customs website i.e. www.icegate.gov.in. A hard
copy of the application along with a General and Indemnity Bond the documents and application fee of
Rs 2000 must then be submitted at the Customs Office by hand.. Once the notice has been registered by
the Commissioner, all Custom officers covered by the notice are informed of the details of the notice.
After the grant of the registration of the notice by the Commissioner on due examination, the import of
allegedly infringing goods into India shall be deemed as prohibited within the meaning of Section 11 of
the Customs Act, 1962. Following this, clearance of goods suspected of infringing intellectual property
rights is suspended Detention of suspect merchandise (on IPR violation) is made by Customs at border
points, and the matter is proceeded against only if the right-holder (of the merchandise) joins issue.
Upon interdiction of the infringing consignment the Right Holder is informed and he is obligated to
execute a Consignment-Specific Bond. If the party declines to show interest, the consignment is released
by customs. The detention of merchandise is, however, not beyond a total period of 20 days.
51
XIII
COLLECTIVE AND CERIFICATION TRADEMARKS
Collective Marks
Registration and protection of collective marks has been introduced under the current Act, which were
not provided for or recognized under the earlier law. This development is in compliance with India’s
obligations under the Paris Convention, Article 7bis of the Paris Convention, which mandates that
countries of the Union will accept for filing and protect collective marks.
Definition: A collective mark has been defined in section 2(1)(g) the Act as “a trade mark distinguishing
the goods or services of members of an association of persons [not being a partnership within the
meaning of the Indian Partnership Act, 1932 (9 of 1932) which is the proprietor of the mark from those
of others”. By virtue of this definition a collective mark cannot be owned or registered by a partnership
firm.
Registrability etc: Moreover as a trade mark is defined to include a collective mark all provisions of the
Act such as claiming convention priority; filing multi-class applications; absolute and relative grounds for
refusal of registration; opposition; registration and renewal; infringement; assignment; permitted use
and rectification and correction of the Register are applicable to collective marks as well.
Term: A collective mark is registered for a period of ten years and renewable thereafter every ten years.
Procedure for registration of collective marks: Specific forms have been prescribed for making an
application to register a collective mark. The applicant is also required to provide the Registrar with a
draft of the regulations governing use of the collective mark along with a statement of case in support of
his application. The regulations are to specify the object of the association and details of its members;
conditions for membership; the persons authorized to use the mark and nature of control of the
proprietor over use of the mark; conditions governing use of the mark, including sanctions; procedure
for dealing with appeals against the use of the mark and any other relevant particulars that the Registrar
may call for. The procedure for acceptance and registration of a collective mark is the same as that in
respect of a trademark, which is discussed hereinabove.
Additional Provisions: In addition to the above the following provisions are applicable specifically to
collective marks:
1. The Act bars registration of collective marks that are likely to deceive or cause confusion
including particularly in cases where the marks are likely to be taken as something other than a
collective mark. In such cases the Registrar has been empowered to require that the applicant
include some indication of a mark being a collective mark;
2. Any amendment to the regulations governing use is not effective unless it is filed with the
Registrar, accepted and published by him in the prescribed form;
3. Additional grounds have been provided for the removal of a collective mark like use of the mark
in a manner that has caused the mark to be liable to mislead as a collective mark and failure of
the proprietor to observe or secure the observance of the regulations.
52
Infringement of collective mark: The provisions of trademark infringement discussed above apply to
collective marks as well. In addition, the Act provides that in a suit for infringement of a collective mark
the court is empowered to take account of any loss that is caused or likely to be caused to the
authorized users as also to give directions as to the extent to which the proprietor of the collective mark
may hold proceeds of any pecuniary remedy on behalf of such authorized users.
Certification Mark
Definition: The Act provides for registration of certification marks with the Registrar of Trade Marks
being the deciding authority. A certification mark is defined under section 2(1)(e) as a “mark that is
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”. Chapter IX of the Act contains provisions
that are specifically applicable to certification marks.
Registrability: It follows from the definition that for a mark to qualify as a certification mark it has to
distinguish the goods or services that are certified as containing certain characteristics from goods or
services not so certified. Other considerations for registration of a certification mark stipulated in
Chapter IX are:
1. A person carrying on trade in the goods or providing services of the kind that are certified
cannot be the proprietor of a certification trade mark;
2. With respect to registrability the Registrar has been given the discretion to consider other
provisions of the Act such as absolute and relative grounds for refusal. However the absolute
ground of refusal that the mark is devoid of distinctive character or that it is common to the
trade cannot be raised against a certification mark.
3. Other considerations for allowing registration of a certification mark are whether the certifying
authority is competent to certify the goods in respect of which the mark is to be registered;
whether the draft regulations are satisfactory and whether the registration as applied for would
be to the public advantage.
4. The Registrar is empowered to secure that a certification mark have some indication that it is a
certification mark.
Once an application for registration of a certification mark is accepted, it will be published in the Trade
Marks Journal and open to opposition just as any other trademark.
Term: A certification mark is registered for a period of ten years and renewable thereafter every ten
years.
Assignment of a certification trademark: A certification mark can only be assigned with the prior
permission of the Registrar of Trade Marks.
Cancellation of a certification trademark: On an application by an aggrieved party the Registrar is

empowered to cancel the entry of a certification trademark in the Register or vary the entry or the
regulations governing use of the certification mark on the following grounds:
(a) That the proprietor is no longer competent to certify the goods or services for which the
mark is registered or any of them;
53
(b) That the proprietor has failed to observe any provisions of the regulations that was to be
observed by him;
(c) That it is no longer to the public advantage that the mark remain registered; or
(d) That if the mark remains registered then it is required for public advantage that the
regulations be varied.
Procedure for registration of a certification trademark: Specific forms have been prescribed for making
an application to register a collective mark. The applicant is also required to provide the Registrar with a
draft of the regulations governing use of the certification mark along with a statement of case in support
of his application. The procedure for acceptance and registration of a certification is the same as that in
respect of a trademark, which is discussed hereinabove.
Infringement of certification mark: Specific provisions on infringement of certification trademarks have

been enacted and the provisions of the trademark infringement discussed above do not apply. Instead
the proprietor of a registered certification mark has the exclusive right to use the mark in relation to
those goods or services for which it is registered and any use of a mark that is identical or deceptively
similar to a registered certification mark in a manner that renders the use of the mark as being taken as
use as a trade mark where such use is made by a person other than the registered proprietor or a
person authorized to use the registered certification trade mark constitutes infringement.
54

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COURSE MATERIAL

S. No Subject Page No.

1. Introduction to the Course Material 3

i. Paris Convention (Industrial Property) since December 1998

Intellectual Property Appellate Board

(a) Capable of being represented graphically;

Procedure and Practice:

Practice - Pre-filing availability searches by Owners to facilitate smooth registration - It is advisable

D. Examination of the Application on Procedural and Substantive Grounds

i. if they are ‘devoid of distinctive character’- 9(1)(a)

1. Lack of Distinctiveness10: An application for registration of a trademark shall be refused

Other Procedural Provisions to Remember

REGISTRATION AND RENEWAL

Notice of opposition: An opposition proceeding is initiated by the filing of a notice of opposition on

Well Known trademarks –

- Use of an associated trademark or a trademark that has alterations and modifications

- Relationship, existing or proposed, between the parties;

1. Affixes it to goods or the packaging thereof;

Acts of trademark infringement

Infringement under section 29(4)

1. Similarity or identity of the impugned mark with the registered mark;

Other exceptions to infringement of trademark include –

Remedies and Reliefs

Offences and Punishment

Introduction to passing off

Essential Ingredients of Passing Off

The essential characteristics of passing are as follows:

1. Worldwide sales turnover;

Defendant’s name containing plaintiff’s trademark

Defences in Passing off

Cancellation of a certification trademark: On an application by an aggrieved party the Registrar is

Infringement of certification mark: Specific provisions on infringement of certification trademarks have

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