Legal framework and regulations governing trademarks in India

By Diganth Raj Sehgal -April 15, 20210

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This article is written by Rohan Joshua Jacob who is pursuing a Certificate Course in Trademark Licensing,
Prosecution and Litigation from LawSikho.

Table of Contents

Introduction

Registration of Trade Marks under the Act

1. Graphical Representation

2. Distinctiveness

Classification of Goods and Services

Absolute and Relative Grounds for Refusal of Registration

Case laws

Legal Regime for the Protection of Unregistered Trademarks

Conclusion

References

Introduction

In the modern world, trademarks are widely recognised as a visual symbol in the form of a word, a
device or a label applied to articles of commerce with a view to indicate to the purchasing public that
they are the goods manufactured or otherwise dealt in by a particular person as distinguished from
similar goods manufactured or dealt in by other persons. Consequently, no one else is allowed to use
the same mark applied by a particular person to the class of goods to which it is applied.

Trademarks in India are therefore protected by either the common law or the statutory law, which in
this case is the Trade Marks Act, 1999 (the Act). Common law refers to the unwritten law existing in the
legal system of a country, and in India, common law provides that any person using another’s mark for
the manufacture of goods or provision of services would become liable for an action of passing off. The
same has been recognised and saved under the Trade Marks Act 1999. Additionally, any person may also
intend to register a mark to receive statutory protection over the same, the procedure of which is
provided under the Act. Actions for illegal use of a registered mark leads to an action of infringement of
a registered trademark.

This paper shall therefore elaborate on the legal framework relating to the registration of trademarks in
India, and shall also cover the protection given to trademarks under common law. Trademarks that
enjoy statutory protection, i.e. are successfully registered utilise the ‘®’ mark, while trademarks that are
unregistered are allowed to use the ‘™’ mark with their logos.

To know more about Trademark please visit

Registration of Trade Marks under the Act

A trademark under the Act is defined to comprise marks that can be graphically represented and are
capable of distinguishing the goods or services of one proprietor from another. A mark may therefore
include ‘a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof’.

Therefore, we may see two preliminary conditions for a trademark to be registered under the Act, and
these are as follows:
1. Graphical Representation

Graphical representation has traditionally meant that the mark being so applied for is capable of being
depicted in paper form, and this has also been extended to include a representation in digitised form.
The significance of this change has therefore meant that not only can a specimen of the goods be
provided for registration (the Registrar has the power to call upon the applicant to submit a specimen
where the depiction of the shape of the mark is insufficient), but also allows for the registration of non-
conventional trademarks such as sound marks. The first sound mark was registered in 2009 for Yahoo
Inc.’s famous three-note yodel.

The Registrar however considers graphical representation to mean a depiction in paper form without
the need for supporting samples, which can act as a substitute for the mark and indicates to anyone
viewing the Trademark Journal or the Register to adequately understand the manner of representation
of the mark.

2. Distinctiveness

A trademark is required to be capable of distinguishing the goods or services of one person from those
of others. To satisfy this requirement of distinctiveness, a mark is required to possess certain inherent
qualities or distinguishing features which need to be so prominent that it would register in the minds of
consumers as indicating the source or origin of the goods to which the mark is applied. If the mark is not
distinctive, then that would result in the mark causing confusion in the eyes of the consumers.

The Delhi High Court in the case of Caterpillar Inc. v. Mehtab Ahmed has delineated the types of marks
and their level of distinctiveness into six categories, as follows:

Generic words: These words are words that are found in the dictionary and indicate the broad name of
the product in which all members of the industry participate in, and are not entitled to any protection.

Laudatory epithets: Such words are adjectives that express a particular attribute of a product and are
not entitled to protection without an element of acquired distinctiveness.
Descriptive words: Words which directly describe the character, quality or attribute of the goods or
services without an element of laudation would not be entitled to registration without a showing of
acquired distinctiveness. Words which indirectly describe the nature or quality of goods may be
registrable on the ground that they are merely suggestive and not indicative of the nature of the goods.

Fanciful or arbitrary words: Words which do not carry a direct or remote reference to the nature or
quality of goods fall within this category, and are generally registrable without having to prove
distinctiveness.

Invented words: These words are created out of imagination and are designed for the first time, thereby
containing inherent distinctiveness and are deserving of registration.

Classification of Goods and Services

When making an application for a trademark, it is necessary to specify the class of goods or services to
which the mark is to be applied to, and the description of goods or services within that class. These
classes have been set up under the Nice Agreement, 1957, an international convention established for
the classification of goods and services for the purposes of registering trademarks and service marks.
This classification system contains 34 classes for goods and 8 classes for services.

The Registrar is empowered to classify goods and services as per the Nice Classification for the purpose
of registration, and any question as to the class within which goods or services fall shall be decided by
the Registrar which shall be final.

Absolute and Relative Grounds for Refusal of Registration

Once an application for a trademark has been filed, the Trademark Office examines the mark to
ascertain whether the mark satisfies the conditions under Section 9 and Section 11 of the Trade Marks
Act, 1999.

Section 9 speaks to the absolute grounds for refusal of registration of the mark, and under sub-section
(1) specifies instances of where registration should not be allowed, which include where the mark is
devoid of any distinctive character; consists exclusively of marks or indications which serve in trade to
designate the quality, intended purpose, nature etc. of the goods; and where the mark has become
customary in the current language or in the bonafide and established practices of the trade.
Case laws

In the case of IHHR Hospitality Pvt. Ltd. v. Bestech India Pvt. Ltd, upon a matter of distinctiveness of the
Appellant’s mark, the Delhi High Court held that the Appellant would be required to show substantial
prima facie evidence as would establish a link in the eyes of the public that the mark “Ananda” was
depictive of the products of the Appellant, and that the mark thus had acquired secondary meaning.

As a further illustration of the scope of this Section, the Delhi High Court in the case of Geep Flashlight
Industries Ltd. v. The Registrar of Trade Marks was faced with a question under Section 9(1)(b), as to
whether the word “Janta” was descriptive of the character or quality of the goods. The Court therein
held that “Janta”, in relation to electric torches (the products of the Appellants) which were cheap in
price and meant for the common man did not have a direct reference to the character or quality of the
goods. The Court however refused registration on the ground that the appellant was attempting to
obtain a monopoly over a common word of the Hindi language, and further that the word was not
capable of distinguishing the Appellant’s goods.

Section 9(2) provides that a mark is not registrable if it would deceive the public, cause affront to the
religious sentiments of the people, contain any scandalous matter, or is prohibited under the Emblems
and Names (Prevention of Improper Use) Act, 1950. The Supreme Court in the case of Lal Babu
Priyadarshi v. Amritpal Sing held that no person could claim the name of a holy or religious book as a
trademark for his goods or services, in a case involving an application for registration of the work
“Ramayana”.

Section 9(3) specifies conditions as to the shape of the product, and provides that if a mark consists
exclusively of the shape of goods which: result from their nature; is necessary to obtain a technical
result; or gives substantial value to the goods, then the mark would not be registered. The purpose of
this sub-section is to ensure that shapes that are basic in nature are available to the public for general
use, meaning that a sign consisting exclusively of the shape of a product would not be registrable if it
fulfils any of the conditions under Section 9(3).
Section 11 provides the relative grounds for refusal of registration of a trademark application, which
applies in instances where the applied mark is identical or similar with an existing mark, and the goods
or services applied for are similar or identical with an existing mark, such that there is a likelihood of
confusion in the eyes of the public towards associating the applied mark with the existing mark.

A landmark judgment of the Supreme Court in this area came in the case of Amritdhara Pharmacy v.
Satya Deo Gupta. Here, the Supreme Court, after conducting a detailed comparison between the two
marks “Lakshmandhara” and “Amritdhara”, noted that while upon close inspection there exist certain
distinct characteristics between the two marks, an unwary purchaser of average intelligence and
imperfect recollection would be unable to maintain a distinction between the two, and would
unwittingly make an association between the two marks.

The Bombay High Court added on to this jurisprudence in the case of BDH Industries Ltd. v. Croydon
Chemical Works Pvt. Ltd. wherein it stated that apart from the structural, visual and phonetic similarity
or dissimilarity, the question firstly has to be considered from the point of view of a man of average
intelligence and imperfect recollection. Secondly, the marks are to be considered as a whole and thirdly,
the evaluation should be viewed as a matter of the average person’s impression.

Another ground for refusal under Section 11 provides that where the applied mark is identical with an
earlier trade mark and is to be registered for dissimilar goods or services than that of the earlier mark,
the registration of that mark would be prohibited if the earlier mark is held to be a well-known mark (as
defined under Section 2(1)(zg) and determined as per the conditions contained in Sections 11(6), (7), (8)
and (9)) and use of the applied mark would cause detriment to the distinctive character of the earlier
trade mark.

In the case of Microsoft Corporation v. Kurapati Venkata Jagdeesh Babu, the Delhi High Court, holding
that the trade mark Microsoft was a well-known trade mark known to most people of the world, any
person intending to use the same either as a trade mark or part of its trade name in relation to a similar
or dissimilar business would be attempting to ride on the goodwill and reputation that the original
proprietor had garnered, and thus such an attempt must be prohibited. The defendants, having not
appeared in the case, had attempted to use the mark “MICROSOFT MULTIMEDIA” in class 41 with
respect to educational and training services, and had also registered a domain name titled
www.microsoftmultimedia.com.
Additionally, in the case of Yahoo Inc. v. Firoz Nadiawala, the Court noted that YAHOO! had achieved a
well-known status by virtue of having had long and continuous use and that the Defendant had
attempted to create an association with the Plaintiff’s mark by making a film under the title YAHOO!,
and this would cause confusion in the minds of the public as it would lead them to believe that the
production had been endorsed and sponsored by the Plaintiff.

Thus, any mark that is capable of satisfying the preliminary grounds, as well as the grounds under
Section 9 and 11, would be capable of registration. A proprietor may also attempt to get his/her mark
registered despite a Section 11 objection on the ground that he/she has been honestly and concurrently
using the mark, or other special circumstances exist, and would therefore be willing to accept any
conditions and limitations that the Registrar thinks fit to impose at the time of registration.

Legal Regime for the Protection of Unregistered Trademarks

Trademarks that are in use but have not been registered are protected under the common law action of
passing off. Passing off has been explained in the English case of Singer Manufacturing Co. v. Loog,
wherein it was held that:

“No man is entitled to represent his goods as the goods of another man; and no man is permitted to use
any mark, sign or symbol, device or other means, whereby, without making a direct false representation
himself to a purchaser who purchases from him he enables such purchaser to tell a lie or to make a false
representation to somebody else who is the ultimate customer”.

The basic elements of a passing off action that had to be established by the Plaintiff were laid down in
the English case of Reckitt and Colman Products Ltd. v. Borden INC, and thus comprise:

(1) the existence of built up goodwill in the eyes of the public in relation to the plaintiff’s mark,
(2) a misrepresentation to the public likely to deceive the public that the goods had been produced by
the plaintiff, and

(3) there had been actual or potential damage to the reputation of the plaintiff due to the
misrepresentation perpetrated by the defendants.

The Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceutical Limited made specific
note of the factors to be considered when determining when an action of passing off would succeed,
which are enumerated below:

The nature of the marks, i.e. word marks, label marks, etc.

The degree of resemblance between the marks and their phonetic similarity.

The nature of goods in respect of which the marks are applied.

The similarity in nature, character and performance of the goods of the rival traders.

The class of consumers who are targeted, with consideration as to their education and intelligence and
degree of care exercised when choosing the product to purchase.

The mode of purchase of the two goods.

Any other relevant circumstances.

Similarly, in the case of Timken Company v. Timken Services Private Ltd, the Delhi High Court noted that
the action for passing off was also maintainable where the goods involved were not of the allied
category, and that actual damages did not have to be proved either. Thus, the true question in passing
off actions was whether there was a likelihood of confusion on the part of the public due to an act of
misrepresentation by the defendant, and that thereafter the focus of the court was not on a comparison
of the activities of the parties but to the state of mind of the public when deciding whether confusion
had occurred.

Conclusion
Trademark law has thus undergone a gruelling evolution so as to strengthen the conditions under which
one may carry on trade within the country. An inevitable conclusion of the reader would thus be that
since trademarks are protected irrespective of whether they have been registered or not, it would be
beneficial to avoid the process of registration completely. However, the benefit of registration is that the
proprietor is provided with a prima facie proof of the existence of the trademark in his/her name,
thereby simplifying attempts to restrain competitors from using deceptively similar marks, as well as
reducing the burden of proof.

An additional benefit is that under the registration process, proprietors can also file on a proposed to be
used basis, thereby establishing their brand at the time of inception of their business entity, such that a
registered trademark can add significant value to the overall valuation of the business entity.

Irrespective of how one goes about protecting their trademark and brand, the law however stands
sufficiently well-bodied to protect the rights of trademark holders and incorporates a fairly wide scope
of protectable subject matter. That being said, the question still remains uncertain as to whether it is
possible to register non-conventional marks such as smell marks and single colour marks. One only
expects this jurisprudence to evolve with technological advancement.

References

Trade Marks Act, 1999

Trade Marks Rules, 2017

Government of India, Draft Manual Of Trade Marks Practice And Procedure, 2015, p. 14, Available at
https://ipindia.gov.in/writereaddata/images/pdf/proposed-tm-manual-for-comments.pdf

Caterpillar Inc. v. Mehtab Ahmed 2002 (25) PTC 438

Yahoo Inc. v. Firoz Nadiawala AIR 2002 Bom 361

IHHR Hospitality Pvt. Ltd. v. Bestech India Pvt. Ltd 2012 (50) PTC 535 (Del) (DB)

Flashlight Industries Ltd. v. The Registrar of Trade Marks AIR 1972 Del 179

Lal Babu Priyadarshi v. Amritpal Singh Civil Appeal No. 2138 of 2006
Amritdhara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449

BDH Industries Ltd. v. Croydon Chemical Works Pvt. Ltd AIR 2002 Bom 361

Yahoo Inc. v. Firoz Nadiawala 014 (58) PTC 352 (Del)

Manufacturing Co. v. Loog (1880) 18 Ch. D. 395

Reckitt and Colman Products Ltd. v. Borden INC(1990) RPC 341 (HL)

Cadila Health Care Ltd. v. Cadila Pharmaceutical Limited (2001) 5 SCC 73

Timken Company v. Timken Services Private Ltd 2013 (55) PTC 568 (Del)