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Trademark: Meaning, Historical background, Definition and

Its Registration

A "trademark for commercial goods" necessarily requires commercial goods; in soc


ieties
based on the barter system, therefore, there was no basis for "trademarks for go
ods."
Trademarks not only identify goods, but create a distinction between goods from
various
sources. Consequently, a competitive relationship exists, and an overly simplist
ic mark is
insufficient to be a trademark. The trade of goods came into practice long ago,
and the use
of trademarks is thought to have evolved from that.

Purpose of Trademark Law

Trademark law, by preventing others from copying a source-identifying mark, 'red


uce[s] the
customer's cost's of shopping and making purchasing decisions,' for it quickly a
nd easily
assures a potential customer that the this item -- the item with this mark -- is
made by the
same producer as other similarly marked items that he or she liked (or disliked)
in the past.
At the same time, the law helps assure a producer that it (and not an imitating
competitor)
will reap the financial, reputation-related rewards associated with a desirable
product.

In short, trademark law is about informed purchasing decisions and commercial m


orality.
Functions of Trademark
Under modern business condition a trade mark performs four functions:
.
.
.
.

It
It
It
It

identifies
guarantees
advertises
creates an

the goods / or services and its origin.


its unchanged quality
the goods/services
image for the goods/ services.

Historical Background of Trademark

The origin of trademarks can be traced back as far as the beginning of the circu
lation of
goods. The history of marks is nearly as old as the histories of mankind and rel

igion.
Scientists have come across excavated artefact from places such as ancient Egypt
with
various symbols carved thereon for religious and superstitious reasons. "Potters
marks"
appeared in relics left from the Greek and Roman periods and were used to identi
fy the
maker (potter) of a particular vessel). Among those who specialize in researchin
g the
cultural heritage of marks, the studies surrounding "potters marks" are famous.
It would be
difficult, however, to say that these marks are trademarks in the sense of the m
odern
meaning.
Over time, different methods of identification and distinction developed. Loved
ones and
pets were given names. "Proprietary marks" (in the form of a name or symbol) wer
e affixed
to goods to enable one person to distinguish their own possessions from those of
others.
Craftsmen applied their names, unique drawings, or simple inscriptions to identi
fy goods
they created. Even though these marks surely helped in distinguishing goods, it
is difficult
to say that these marks were trademarks with distinctiveness in the modern sense
of the
word. Symbols on goods used in ancient Rome and other countries near the Mediter
ranean
sea had similar characteristics to the trademarks of today. Because this ancient
region is

considered to be the first to actively circulate goods, it is widely thought tha


t trademarks
evolved in response to the emergence of a society in which goods circulate in co
mmerce.
However, even in those days, a trademark system based on property rights did not
yet exist.

Around the 10th century, a mark called a "merchants mark,"


appeared, and symbols among
traders and merchants increased significantly. These marks, which can be conside
red one
kind of "proprietary mark," essentially were used to prove ownership rights of g
oods whose
owners were missing due to shipwrecks, pirates, and other disasters. Even now, i
n every
part of the world, horses, sheep, and other animals are still branded with a mar
k identifying
the owner. In Japan, a symbol is affixed to lumber that is tied onto a raft and
sent down a
river to its mouth. These types of marks are reminiscent of the "merchant's mark
" of the
past.
In guilds of the middle ages, craftsmen and merchants affixed marks to goods in
order to
distinguish their work from the makers of low quality goods and to maintain trus
t in the
guilds. These marks, known as "production marks," served to punish the manufactu
rers of
low quality goods for not meeting the guild's standards and to maintain monopoli
es by the
guild's members. These production marks helped consumers to identify and assign
responsibility for inferior products, such as, goods short in weight, goods comp
rised of poor
quality materials, and goods made with inferior craftsmanship.
TRADEMARK LAWS IN INDIA
While some form of proprietary protection for marks in India dates back several
millennia,
India s statutory Trademarks Law dates back to 1860. Prior to 1940 there was no of
ficial
trademark Law in India. Numerous problems arouse on infringement, law of passing
off etc
and these were solved by application of Section 54 of the Specific Relief Act 18
77 and the
registration was obviously adjudicated by obtaining a declaration as to the owne
rship of a
trademark under Indian Registration Act 1908.

To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1
940, this
corresponded with the English Trademarks Act. After this there was an increasing
need for
more protection of Trademarks as there was a major growth in Trade and Commerce.

The
replacement to this act was the Trademark and Merchandise Act 1958.This Act was
to
provide for registration and better protection of Trademarks and for prevention
of the use of
fraudulent marks on merchandise. This Law also enables the registration of trade
marks so
that the proprietor of the trademark gets legal right to the exclusive use of th
e trademark.
The objective of this act was easy registration and better protection of tradema
rks and to
prevent fraud.

The reappellation of the Trademarks and Merchandise Act gave rise to the Tradema
rk Act
1999; this was done by the Government of India so that the Indian Trademark Law
is in
compliance with the TRIPS obligation on the recommendation of the World Trade
Organisation. The object of the 1999 Act is to confer the protection to the user
of the
trademark on his goods and prescribe conditions on acquisition, and legal remedi
es for
enforcement of trademark rights. It will for the first time protect service mark
s and give
provision of registration for collective marks, it will also differentiate betwe
en well known
trademarks and trademarks in general, and also special treatment and rights are
envisaged
for well known trademarks. The act of 1999 also gives police the right to arrest
in case of
infringement. There are some points of changes that are present between the 1958
act and

1999 act, it can be said that the 1999 act is a modification of the 1958 act, it
has provided
exhaustive definitions of terms frequently used, enhanced punishment for offende
rs,
increased the period of registration, registration of non- traditional trademark
s. The rules of
this act are called as Trademark Rules 2002. Both the Act and its set of rules c
ame to effect
on September 15th 2003. The trademark act 1999 and its trademark rules 2002 pres
ently
govern Indian Trademark Laws in India. Laws of trademarks are based on distincti
veness
and deceptive similarity. If distinct signs are freely used the brand equity cre
ated by one
person will be freely used by another. The value of distinctive sign depends on
sales volume
and public association of sign with quality.

Madrid Protocol
India Parliament has passed the Trade Marks (Amendment) Act for enacting special
provisions relating to protection of trademarks through international registrati
on under the
Madrid Protocol. As per the Amendment Act, from the date of the international re
gistration
of a trademark where India has been designated or the date of the recording in t
he register of
the International Bureau about the extension of the protection resulting from an
international
registration of a trademark to India, the protection of the trademark in India s
hall be the
same as if the trademark had been registered in India.
Meaning and definition of Trademark:
A trademark is any word, name, symbol, or device capable of distinguishing the g
oods or
services of one person from those of others, and may include shape of goods, the
ir
packaging and combination of colours. Trade Mark includes a brand name, a house
mark,
and a service mark. A trademark may be an insignia, label, name, sign, logo, dev
ice,
signature, numerals, packaging, shape of goods, colour combination etc. In other
words, a
trademark is a visual symbol used in relation to any goods or services to indica
te some kind
of trade connection between the goods and services and the person using the mark
. It
usually identifies the product and acknowledges its unchanged quality and helps
to advertise
the product. This gives the consumer satisfactory assurance of the quality of th
e article he is
buying. Their duration is not limited and they may last forever, subject to rene
wals at proper
intervals. Priority of right is determined by who first used the mark within the

particular
geographic area. In those countries, which recognize common law rights, use of a
mark
commercially must be demonstrated before grant of registration of the mark. If t
hey are not
properly used and protected, it becomes difficult to be enforced against misuse.

Brands today are demonstrably the most powerful and sustainable wealth creators
in the
world. Therefore, a brand s future needs to address how to be better, stronger, mo
re
distinctive and more valued. The definition of a brand is probably more complex
today than
it has ever been. People have more choice today than they ever had before. So, t
he brand
must be, so to say, a bridge of trust to the consumer. Trust is undoubtedly the
future of a
brand. A brand has to be customer-friendly. There are many characteristics share
d by the
strongest brands today, the most critical of which are clarity, consistency and
leadership.
Around the world, millions of dollars are spent every year in building a strong
brand.

A brand is the identity of a product and assures of a pre-sold quality. Corporat


e image is
now a day s being treated as a brand. It is the net result of interaction of all e
xperiences,
interaction of belief and knowledge that people have about the company, and many
products
have names synonymous with the brand names. A brand thus generates the goodwill
of the
company also and, therefore, needs to be protected. Goodwill is generated as the
business is

carried on and is augmented with the passage of time, and it is the mechanical q
uality of a
particular trade, which attracts the customers. Goodwill has become a component
of the
total value of an undertaking that is attributable to earn profits. Therefore, b
rand protection
becomes inevitable in the present day scenario.

PROTECTION OF TRADEMARKS IN INDIA


Trademarks which are applied to goods and Service marks are applied to services
are
protectable in India apart from Certification marks, which indicate that particu
lar products
or services meet the standards set by the certifier. Well-known marks are also g
ranted
protected in India, though most countries protect only trademarks and service ma
rks. India
also recognizes trademark rights under the Common law. Such rights are acquired,
through
use of a trademark in commerce and registration is not mandatory. Common law rig
hts
extend to a geographic area, in which the trademark owner carries on his busines
s under his
mark in relation to products or services to which the mark is applied.
Priority of right is determined by who first used the mark within a particular g
eographic
area. In countries, like India, which recognize common law rights, use of a mark
in
commerce has to be proved before registration of the mark can be granted. In tho
se
countries that do not recognize common law trademark rights, such rights can be
acquired
only through registration.

Before we examine the definition of


definition of mark .
A mark

trade mark it will be expedient to peruse the

has been defined in Section 2 (1) (m) as follows:

mark includes a device, brand, heading, label, ticket, name, signature, word, lett
er,
numeral, shape of goods, packaging or combination of colours or any combination
thereof.
Section 2 (1) (zb) of the Trade Marks Act, 1999 defines,

trade mark

as follows:

trade mark means a mark capable of being represented graphically and which is capab
le
of distinguishing the goods or services of one person from those of others and m
ay include
shape of goods, their packaging and combination of colours; and (ii) in relation
to other
provisions of this Act, a mark 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 tr
ade between
the goods or services, as the case may be, and some person having the right eith
er as
proprietor or by way of permitted user to use the mark whether with or without a
ny
indication of the identity of that person , and includes a certification trade m
ark or collective
mark.
Thus, the definitions of mark and trademark list specific examples of marks which ma
y
be registered as trademarks. However, both these definitions are inclusive definit
ions and
not exhaustive.
To constitute a trade mark capable of being registered under the Trade Marks Act 1
999
the following conditions should be fulfilled:
i. it must be a mark as defined in Section 2 (1) (m);
ii. it must be capable of being represented graphically; and
iii. it must be capable of distinguishing the goods or services of one person fr
om those of
others;
Essentials of a trade mark
From the above definitions, the following essential ingredients emerge for const
ituting a
trade mark under the 1999 Act:
a. it must be a "mark";

b. it must be capable of being represented graphically;


c. it must be capable of distinguishing the goods or services of one person from
those of
others;
d. it must be used or proposed to be used in relation to goods or services;
e. there must be a visual representation of the mark;
f. use of the mark in relation to goods must be upon or in physical or in any ot
her
relation whatsoever to the goods; and in relation to services, it must be used a
s a part
of any statement about the availability, provision or performance of such servic
e; and
g. the objective of use of the mark should be to indicate a connection in the co
urse of
trade between the goods or services, and some persons having the right to use th
e
mark either as proprietor or by way of permitted use. It is not necessary to rev
eal the
identity of the person using the mark.

Capable of being represented graphically


The graphic representation must be able to show the mark. It is important that t
he Trade
Marks Registry should know what is comprised in the mark so that it can be publi
shed in
the Trade Marks Journal and also be capable of being entered in the register of
trademarks
maintained by the Registry which can be easily accessed. Any one intending to co
nduct a
search of a register of trademark or a pending application must be able to know
what the
mark is. There has to be a "a graphic representation in which the identity of th
e relative sign
is clearly and unambiguously recorded... it seems clear that a sign (such as sou
nd or aroma)
can be taken to have been represented graphically with the required degree of pr
ecision
when figuratively represented, even though, interpretation or analysis may then
be required
to detect or demonstrate use of it.
Shape of goods
Prior to the 1999 Act, the "shape of goods" could have been protected as a desig
n only
under the provisions of the Designs Act 1911 if it was "new" or "original". The
duration of
the statutory protection available to a design has thus been enlarged by virtue
of its
inclusion in the definition of trade mark under the 1999 Act. By this mechanism,
there is
also an attempt to recognize the de facto monopoly in the market place. Under se
ction 9(3)
of the 1999 Act, a mark shall not be registered as a trade mark, if it consists
exclusively of:

a. the shape of goods that results from the nature of the goods themselves;
b. the shape of goods that is necessary to obtain a technical result; or
c. the shape that gives a substantial value of the goods.
The scope of the provision contained in section 9(3)(c) quoted above is really b
road. In the
case of Philips Electronic BV v Remington (1998 RPC 283), it was held that this
restriction
should apply to a shape which exclusively adds value to the goods (design or fun
ctional
appearance) and one should disregard a value attributable to a trade mark functi
on (ie.
source indication).
Combination of colours
Under the provisions of the Trade and Merchandise Marks Act 1958, a trade mark c
ould be
limited wholly or in part to one or more specified colours, and any such combina
tion had to
be taken into consideration by the tribunal having to decide on the distinctive
character of
the trade mark. Whether any colours or a combination thereof can be construed as
a trade
mark would depend upon whether it has acquired any secondary meaning or a de fac
to
monopoly in the market place.
The judgment of the Delhi High Court in the matter of Colgate Palmolive Company
and
Anr v. Anchor Health and Beauty Care Pvt Ltd 2003 (27) PTC 478 (Del), wherein it
was

held that if the get up of goods, size, shape and labels and wrappers is deceptiv
ely similar,
then the concept is identified as trade dress and if the goods are offered in such
dress to the
public, then such shape and size can be protected as an identifiable concept of
a trade
mark.
Well-known Trademark and Trans Border Reputation
India recognises the concept of the

Well-known Trademark and the

Principle of Trans

Border Reputation . A well-known Trademark in relation to any goods or services me


ans a
mark that has become so to the substantial segment of the public, which uses suc
h goods or
receives such services such that the use of such a mark in relation to other goo
ds and
services is likely to be taken as indicating a connection between the two marks.
Trans Border Reputation concept was recognised and discussed by the Apex Indian
Court in
the landmark case of N. R. Dongre v. Whirlpool (1996) 5SCC 714. The Trademark
WHIRLPOOL was held to have acquired reputation and goodwill in India. The Mark
WHIRLPOOL was also held to have become associated in the minds of the public with
Whirlpool Corporation on account of circulation of the advertisements in the mag
azines
despite no evidence of actual sale. Hence, the trademark WHIRLPOOL was held to h
ave
acquired trans-border reputation which enjoys protection in India, irrespective
of its actual
user or registration in India.
Statutory Protection of Well-known Trademark
The Trademarks Act was introduced in India in 1999 and came into effect on 15th
September 2003. One of the changes that have been brought about by the Act is th
at it gives
statutory protection to well-known Trademarks which were earlier protected under
the
Common law.
Before having a look at how the Common law granted protection to well- known tra
demarks
till now, let us first examine the statutory protection conferred by the Act.
Section 11(6) and 11(7) deal with the facts that the Registrar will take into co
nsideration,
while determining that the mark is a well-known mark,
1. The
ection
of the
mark
2. The
3. The

knowledge or recognition of the alleged well known mark in the relevant s


public including knowledge obtained as a result of promotion of the trade
duration, extent and geographical area of any use for that trademark.
duration, extent and geographical area for any promotion of the trademark

including advertising or publicity and presentation at fairs or exhibition of th

e goods
or services in which the trademark appears.
4. The duration and geographical area of any registration of any publication for
registration of that trademark under this Act to the extent that they reflect th
e use or
recognition of that trademark.
5. The record of successful enforcements of the rights in that trademark, in par
ticular
the extent to which the trademark has been recognized as a well known trademark
by
any Court or Registrar under that record.
6. The number of actual or potential consumers of the goods or services
7. The number of persons involved in the channels of distribution of the goods o
r
services.
8. The business circle dealing with the goods and devices to which the trademark
applies
Whereas a trademark has been determined to be well known in at least one relevan
t section
of the public in India by any court or Registrar, the Registrar shall consider t
hat trademark
as a well-known trademark for registration under this Act.

In addition to this there are several facts that are not to be taken in to consi
deration by the
Registrar in determining the well-known trademark.
These are as follows:1. The Trademark has been used in India
2. The Trademark has been registered
3. The application for registration of the Trademark has been filed in India.
4. The trademark is well known in or has been registered in, or in respect of wh
ich an
application for registration has been filed in any jurisdiction other than India
or
5. The trademark is well known to the public at large in India
Section 11(10) deals with various aspects in relation to the Protection of well
known
trademarks. It states:While considering an application for registration of a trademark, and opposition
filed in
respect thereof, the Registrar shall:
1. protect a well known trademark against the identical or similar trademark, an
d
2. take into consideration the bad faith involved either of the applicant or the
opponent
affecting the rights relating to the trade mark.
However, it is also stated that if a trademark has been registered in good faith
disclosing the
material information to the Registrar of where right to a trademark has been acq
uired
through use in good faith before the commencement of the Trade Marks Act, 1999,
then the
validity of the registration of the trademark or right to the use of that tradem
ark will not be
prejudiced on the ground that such mark is identical or similar to a well known
trademark.
Section 11 of the Trade Marks Act provides for facts to be considered while esta
blishing a
well known trademark, protection of a well known trademark and protection of mar
ks
registered in good faith viz. a viz. well known trademarks.
Non-traditional trademarks
. Appearance: Depending on the jurisdiction, this type of mark may include the c
olor
or combination of colors applied to the products themselves or to the packaging
in
which they are sold. In the case of services, it could include the visual appear
ance,
externally or internally, of a store or restaurant or, for instance, the design
of a menu.
The appearance of products, packaging or services is frequently referred to as t

rade
dress.
. Moving Images, Holograms and Gestures:
This type of mark includes moving images, which can combine colors, sounds and
aspects of product designs. In certain jurisdictions, the motion of the Lamborghi
ni
car door has been given protections as a motion trademark, because of the unique
movement of the door as it is opened or closed.
The moving image can be a film clip, video, moving logo for TV shows, etc. The U
K
has registered a moving mark for Kraft Foods UK Ltd. The mark has a description
which says: "The mark consists of the three-dimensional shape breaking apart, as
shown in the sequence of still pictures attached to the form of application"

. Shape: This type of mark may be a three-dimensional representation of the prod


uct
itself; the container for the product; or the architectural design of a store or
signpost,
such as McDonald s Golden Arches. It may be the shape of a label or tag rather tha
n
simply the words or colors appearing thereon.

. Sound: This type of mark may be a jingle or a piece of music or other sound, s
uch as
the roar of the MGM lion or the Tarzan yell. It may be a short extract from a
composition or an entire musical piece. In some cases, it may be a reproduction
of an
everyday sound, perhaps in an unusual circumstance.
For sound marks, there have been alternate methods for the graphical representat
ion
of sounds. These include depictions by oscillogram, spectrum, spectrogram, and
sonogram.
The first sound mark was registered in August 2008 by Yahoo! Inc. for its famous
"yodel". The mark was filed under Class 35 (advertising, business management,
business administration, office functions); Class 38 (telecommunications) and Cl
ass
42 (providing for food and drink; temporary accommodation; medical, hygienic and
beauty care; veterinary and agricultural services, legal services, scientific an
d
industrial research; computer programming; services that cannot be classified in
other classes) for its range of email, business and internet services.
Smell/Scent: Although specific smells may be associated with particular goods or
services, not all of them are protectable as trademarks, because they are functi
onal.
For example, the scent of perfume is considered functional. In other cases, a sc
ent is
applied or added to a product, and it is not the natural smell of the product it
self and
does not serve a functional purpose. For instance, in the United States, a cherr
y scent
for synthetic lubricants for high-performance racing and recreational vehicles i
s
registered on the Principal Register.
The United Kingdom.s first smell mark was granted to Japan.s Sumitomo Rubber
Co. in 1996 for a floral fragrance of roses as applied to tyres . The mark was late
r
transferred to Dunlop Tyres. A Dutch company.s tennis balls with the scent of ne
wly
mown grass, and Unicorn Products. (a London-based maker of sports equipment)
smell mark for darts with the strong smell of bitter beer , are some examples where
smell marks have been successfully registered.
Taste: Some jurisdictions permit the registration of taste as a mark, but they o
ften
require that the taste be represented graphically and, of course, that it serve
the
purpose of a trademark. In many cases it will be difficult to distinguish betwee
n the
natural flavor of a product and the recipe adopted by a manufacturer to distingu
ish its
goods from those of competitors. Even when the taste is not protected by a trade

mark
registration, such recipes often are closely guarded trade secrets. Taste marks
are also
referred to as gustatory marks.

Registration of Trademark
A person who claims to be the proprietor of the trademark can apply for the regi
stration of
its mark for goods as well services.
A person may apply for registration of a trade mark to the Trademark office unde
r whose
jurisdiction the principal place of the business of the applicant in India falls
.
In case, the principal place of business is outside India, then the application
can be filed in
the Trademark office under whose jurisdiction the office of the lawyer appointed
by you is
located.
In case of a company about to be formed, anyone may apply in his name for subseq
uent
assignment of the registration in the company's favour.
Before making an application for registration it is prudent to conduct a tradema
rk search in
the Trademark office in context of the already registered trademarks to ensure t
hat

registration may not be denied in view of resemblance of the proposed mark to an


existing
one or prohibited one.
Applications for registration of trademarks are to be filed in the prescribed ma
nner. Any
person claiming to be the proprietor of a trade mark used or proposed to be used
by him;
who is desirous of registering it, shall apply in writing to the Registrar in th
e prescribed
manner for the registration of his trademark.

An application to the Registrar for the registration of a trade mark shall be si


gned by the
applicant or his agent. An application to register a trade mark for a specificat
ion of goods or
services included in any one class shall be made in Form TM-1. An application to
register a
trade mark for a specification of goods or services included in any one class fr
om a
convention country shall be made in Form TM-2. A single application for the regi
stration of
a trade mark for different classes of goods or services from convention country
shall be
made in Form TM-52.
Every application for registration of a trade mark shall, except as hereinafter
provided, be
made in triplicate and shall be accompanied by five additional representations o
f the mark.
The representations of the mark on the application and each of its copies and th
e additional
representations shall correspond exactly with one another. The additional repres
entations
shall in all cases be noted with the specification and class or classes of goods
or services for
which registration is sought, the name and address of the applicant, together wi
th the name
and address of his agent, if any, the period of use, if any, and such other part
iculars as may
from time to time be required by the Registrar and shall be signed by the applic
ant or his
agent.
An application for the registration of a trade mark for goods or services shall
a) Explain with sufficient precision, a description by words, of the trade mark
if
necessary, to determine the right of the application;
b) Be able to depict the graphical representation of the trade mark;
c) Be considered as a three dimensional trade mark only if the application conta
ins a
statement to that effect;
d) Be considered as a trade mark consisting of a combination of colours only if
the
application contains a statement to that effect;

Grounds of Refusal
Trade Marks Act, 1999, Section 9 and Section 11 give the grounds for refusal of
the
application. Where Section 9 mentions the absolute grounds, Section 11 provides
with the
relative grounds of refusal of the application.

The following categories of marks are excluded from registrability as a trade ma


rk:
i) Which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
[Section 9(1)(a)].
ii) ii) Which consist exclusively of marks or indications which may serve in tra
de to
designate the kind, quality, quantity, intended purpose, values, geographical
origin or the time of production of the goods or rendering of the service or oth
er
characteristics of the goods or service; [Section 9(1)(b)].
iii) Which consist exclusively of marks or indications which have become customa
ry in
the current language or in the bona fide and established practices of the trade;
[Section 9(1)(c)].

Unless in (i) (ii) and (ii) hereinabove, the mark has acquired a distinctive
character as a result of the use made of it or is a well-known trade mark before
the
date of application for registration. [Proviso to Section 9(1)]. For the sake of
ready reference, the definition of
2(1)(zg) is set out below:

well-known trade mark

contained in Section

Well-known trade mark in relation to any goods or services means a mark


which has become so to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation to other
goods or services would be likely to be taken as indicating a connection in the
course of trade or rendering of services between those goods or services and a
person using the mark in relation to the first -mentioned goods or services.
iv) It is of such nature as to deceive the public or cause confusion; [Section 9
(2)(a)].
v) It contains or comprises of any matter likely to hurt the religious susceptib
ilities of
any class or section of the citizens of India; [Section 9(2)(b)].
vi) It comprises or contains scandalous or obscene matter; [Section 9(2)(c)].
vii) Its use is prohibited under the Emblems and Names (Prevention of Improper U
se)
Act, 1950; [Section 9(2)(d)].
viii) If it consists exclusively of:
a) the shape of goods which results from the nature of the goods themselves; or
b) the shape of goods which is necessary to obtain a technical result; or
c) the shape which gives substantial value to the goods. [Section 9(3)].
ix) If because of:
a) its identity with an earlier trade mark and similarity of goods or services c
overed
by the trade mark; or
b) its similarity to an earlier trade mark and the identity or similarity of goo
ds or
services covered by the trade mark, there exists a likelihood of confusion on th
e
part of the public, which includes the likelihood of association with the earlie
r
trade mark. [Section 11(1)].
x) A trade mark which:
a) is identical with or similar to an earlier trade mark; and
b) is to be registered for goods or services which are not similar to those for
which
the earlier trade mark is registered in the name of a different proprietor, shal
l not
be registered if or to the extent the earlier trade mark is a well-known tradema
rk
in India and the use of the later mark without due cause would take unfair
advantage of or be detrimental to the distinctive character or repute of the ear
lier
trademark. [Section 11 (2)].
xi) A trade mark shall not be registered if, or to the extent that, its use in I
ndia is liable
to be prevented:
a) by virtue of any law in particular the law of passing off protecting an unreg
istered
trade mark used in the course of trade; or
b) by virtue of the law of copyright. [Section 11 (3)].
xii) No word:

a) which is the commonly used and accepted name of any single chemical element
or any single chemical compound (as distinguished from a mixture) in respect of
a chemical substance or preparation, or
b) which is declared by the World Health Organisation and notified in the prescr
ibed
manner by the Registrar from time to time, as an international non-proprietary
name or which is deceptively similar to such name. [Section 13].

xiii) Where an application is made for the registration of a trade mark which fa
lsely
suggests a connection with any living person, or a person whose death took place
within twenty years prior to the date of application for registration of the tra
de
mark. [Section 14].
Honest Concurrent User
The trademark law allows the trademark of an honest and concurrent user to coexi
st with
another similar mark. The defense of honest concurrent user came into being thro
ugh the
cases of Dent v. Turpin and Southorn v. Reynolds.
In John Fitton & Co. the following five factors were laid down in order to have
success in
honest concurrent user defense.
1.
2.
ch
to
3.
4.
5.

The extent and use in time and quantity and the area of the trade.
The degree of confusion likely to ensue from the resemblance of the marks whi
is
a large extent indicative of the measure of public inconvenience.
The honesty of the concurrent use.
Whether any instances of confusion have in fact been proved, and
The relative inconvenience which would be caused if the mark were registered,

subject if necessary to any conditions and limitations.

Section 12 of the TM Act in accordance with the aforementioned rationale provide


s for the
registration of a trademark in case of its honest concurrent use by providing th
at In the case
of honest concurrent use or of other special circumstances which in the opinion
of the
Registrar, make it proper so to do, he may permit the registration by more than
one
proprietor of the trade marks which are identical or similar (whether any such t
rade mark is
already registered or not) in respect of the same or similar goods or services,
subject to such
conditions and limitations, if any, as the Registrar may think fit to impose .

Classification of goods and services


For the purpose of classification of goods and services for registration of trad
emarks, India
follows the International Classification of Goods and Services (Nice Classificat
ion)
published by World Intellectual Property Organization (WIPO). For the purpose of
classification of the figurative elements of marks, India follows the Vienna Agr

eement.
Opposition proceedings
After advertisement of a trademark in the Trade Marks Journal, (which is availab
le online at
the website of Office of Registrar of Trademarks) an opposition challenging the
application
for registration can be filed by any person within a period of 3 months (which m
ay be
extended by a period not exceeding 1 month).
Renewal of registration
The trademark is initially registered for a period of 10 years, which is calcula
ted from the
date of filing of the application and in case of convention application, from th
e date of
priority. The registration is required to be renewed within 6 months before the
date of expiry
of the registration, i.e., 10 years from the date of the application or subseque
nt renewals.
The failure in renewing the trademark within the stipulated period of time and a
grace
period of maximum 1 year granted for restoration of the trademark, automatically
leads to
removal of the trademark from the Register of Trademarks.
Rectification of Trademark
An aggrieved person may file an application before the Registrar of Trademarks o
r to the
Intellectual Property Appellate Board (IPAB) for cancellation or varying the reg
istration of

the trademark on the ground of any contravention or failure to observe a conditi


on entered
on the Register in relation thereto.
The application for rectification can also be filed for removal of an entry made
in Register,
without sufficient cause or wrongly remaining on the Register and for correction
of any
error or defect in any entry in the Register.