 Section 2 of the Trademarks Act, 1999

Section 2(m)“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging, or combination of colours or any combination thereof;

Section 2 (zb)“trade mark” means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others and may
include shape of goods, their packaging and combination of colours; and—(i)in relation to
Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods
or services for the purpose of indicating or so as to indicate a connection in the course of trade
between the goods or services, as the case may be, and some person having the right as proprietor
to use the mark; 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 trade between the goods or services, as the case may be, and some person having the
right, either as proprietor or by way of permitted user, to use the mark whether with or without
any indication of the identity of that person, and includes a certification trade m ark or collective
mark;

 Scope of Section 9 and 11 of the Trade Marks Act, 1999

Section 9 – Absolute Grounds For refusal of registration

a. Devoid of distinctive character / uniqueness

b. Deceive Public or cause confusion.
c. It contains scandalous or obscene matter.
d. It comprises matter which hurt the religious sentiments of any class / sections of the citizens of
India.
e. It is prevented under the Emblems and Names (Prevention of Improper Use) Act ,2950
f. The shape of goods results from the nature of goods themselves.
g. The shape of goods which is necessary to obtain a technical result.
h. The shape gives substantial value to goods.

Section 11 – Relative Grounds for refusal of registration

I. Identity is matched with earlier trademark.

 II. Its identity or similarity of goods and services is covered by trademark.
III. A trademark which is similar to an earlier trademark.
IV. If the extent of earlier trademark is well known trademark in india and due of mark without due
cause would take unfair advantage of or be detrimental to the distinctive character or repute of the
earlier trade mark
V. If it is protected under any law , by virtue of copyright
VI. Unfair Advantage – e.g. Use of name ‘Electrix’ for electric vacuum cleaner
VII. Consent Matters

Scope of Section 17 of the Trade Marks Act, 1999 – Section 17 deals with marks which consist of
words with a combination of logo. Some examples include are – BMW , McDonalds , Kinder Joy ,
Cadbury etc. Section 17 provides that:

(17) (1) When a trade mark consists of several matters, its registration shall confer on the proprietor
exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in sub-section (1), when a trade mark (a) contains any part—– (i)
which is not the subject of a separate application by the proprietor for registration as a trade mark: or (ii)
which is not separately registered by the proprietor as a trade mark : or (b) Contain any matter which is
common to the trade or is otherwise of a non – distinctive character. the registration thereof shall not
confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered

When a trademark is registered it is taken as a whole and any part of that trademark has to be separately
registered under Section 17 of the Trademarks Act, 1999, if the trader wants to enjoy exclusive rights
concerning his trademark, he has to go through the whole registration process, i.e. each and every mark
has to be distinct and non-descriptive in nature for it to be approved by the Registrar. If a part of the
trademark is not registered separately the trader cannot make claims of infringement against another
trader who uses a part of that trademark. When it comes to the registration of composite marks, the
proprietor needs to apply for separate trademark registration for each of the distinct feature that is an
essential part of the mark. If this is not done, disregarding the fact that the trademark is registered the
owner would not be allowed to claim his exclusive rights over the distinct part of a trademark, but that
trademark as a whole. Hence, it would be governed by section 15 and 17 of the Trade Marks Act, 1999.

 Trade Mark application and registration procedure 1 – Trademark applications are handled by
the office of the Controller General of Patents , Trade marks , Industrial Designs and Geographical
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What Is The Procedure to Register A Trademark In India - iPleaders
Indications. Branches of these offices are located in Mumbai , Kolkata , Ahmedabad , Delhi, and
Chennai. The application for Trade Marks needs to filed as per territorial Jurisdiction. The steps for
registration is given below.

I. Determination of the eligibility and availability of the trademark – the trademark agent
initiates the registration process by checking whether the trademark is eligible for
registration and conducting a clearance search to see if there is a similar mark already
existing in the office of the controller general.
II. Completing the application form and filing – the form contains details such as name and
address of the proprietor , a description of the goods and services associated with the
mark , whether the mark is in use and a copy of the mark.
III. Review by the trademark office – the trademark office reviews the application to see if is
complete and then allots the application a number. After the registration this number is
known as registration number.
IV. Preliminary approval and publication , show cause hearing or rejection of the application
– the trademark association determines if the application is barred from registration either
on absolute or relative grounds for refusal as prescribed in the trademarks act 1999. After
this , they issue an examination report within a period of one month. Depending on the
examination report the registrar of the trademarks determines whether the application
must be accepted , rejected or put up for show cause.
V. Registration – within the term of 3 months publication in the Trademarks Journal , if not
opposed by a third party , the trademark will proceed for registration and the trademark
authority will proceed to give a registration certificate.
 Opposition/Rectification proceedings in India - Scope and procedure2

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Opposition Proceedings in India (mondaq.com)
 The Trademarks Act prescribes that any person can file a notice of opposition against the Trade
mark which is advertised or readvertised in the Trade marks journal within a period of four
months from the date on which trademark application was advertised or re-advertised in the
trademark journal.

Any person can file notice of opposition in India, and he is not required to have an
application/registration in India to oppose any Trade mark. Further, on expiry of the four months
deadline, no notice of opposition can be filed, and the Trade mark proceeds to registration. The
only recourse left thereafter is filing rectification action against the registration.

 The distinction between Section 47 and 57 of the Trade Marks Act, 19993

Section 47 and 57 of the Trade mark Act pertain to the cancellation and rectification of
trademarks.

Section 47 of the Trademark Act deals with the grounds for cancellation of a registered
trademark. According to this Section, any interested person can file a petition for cancellation of a
registered trademark on the grounds that the trademark was registered without sufficient cause, or
it is not distinctive, or that it has become generic, or it is likely to cause confusion, among other
grounds.

Section 47 lays down 2 situations in which a registered trademark is liable to be removed

1. When it is established that the trademark was registered in absence of a bonafide intention by
the applicant.
2. When it is established that there has been no bonafide use of trademark for a continuous
period of 5 years from the date of registration of mark and three months prior to filing the
application for registration.

Subsequently, Section 57 of the Trademark Act deals with the rectification of the register. This
section empowers the Registrar of Trademarks to make corrections or amendments to the register
of trademarks if it appears to him that there has been an error or omission in the register or if it is
necessary to rectify the register for any other reason.

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The Interplay between Sections 47, 57 and 124 of the Trademarks Act, 1999 (amlegals.com)
 Difference between infringement and passing off

S. No. Infringement Passing off

1. Type of The statutory remedy under Section 29(1) Common-Law remedy (court
remedy of the Trade mark Act, 1999 decision & precedent)

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

3. Proof Plaintiff is only required to show deceptive Apart from proving deceptive
similarity, as there is a presumption of similarity, the Plaintiff is also
confusion required to prove confusion in
public and the likelihood of injury to
the plaintiff's goodwill

4. Jurisdiction The registered proprietor or registered user Section 20 of the Civil Procedure
of the trade mark can institute the suit Code, 1908 would apply
where they actually and voluntarily reside
or carries his business or personally work
for gain

 Defence available in case of an infringement/passing off-suit

Fair Use

The accused infringer in order to take this defence needs to establish that he has taken the consent
of the authorized owner of the trademark or either proves that he doesn’t have any intention to
defraud or mislead the consumers of the goods.

Descriptive fair use

It can be taken as a defence when a mark is used in good faith mainly for the descriptive purpose
and not for a specific mark or product.

Nominative fair use

This can be taken as a defence when a mark is listed in reference to the registered proprietor’s
goods and not the user’s goods. It is justifiable when such mark is used for facilitating
identification of the goods.

An application for such defence needs following conditions to be satisfied:

The product or service is not identifiable without the mark,

The mark was used only to a reasonable extent to facilitate its identification,

The use does not falsely suggest endorsement or sponsorship by the trademark

Prior Use

Prior user of the mark has more rights than the subsequent user even if he is the registered one. It
can be taken up as a defence by the defendant when he is using it for a long duration of time and
has gained reputation too in his business as compared to the registered user. It is further stated
that this defence can be taken up in a situation when defendant has not renewed his previously
registered trademark but his business is continued under the same mark.

No Confusion or Difference in Essential Features

It refers to a situation in which the courts not only consider the phonetic similarity between the
marks but also whether the two marks have different features.

In the leading case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd1,the Supreme Court laid down
that in deciding a case of trademark infringement , court must have a look into the differences and
laid down the test:

Is there any special aspect of the common features which has been copied?

Whether the dissimilarity of the part or parts is enough to mark the whole thing dissimilar?
Whether when there are common elements, should one not pay more regard to the parts which are
not common, while at the same time not disregarding the common parts?

What is the first impression?

Applying this test in the case, it was held that the two marks were different in essential features
and would not be a cause for confusion. Therefore, no cost was awarded.

Non-use of the Mark by the Registered Proprietor

It refers to a situation in which the burden of proof is on defendant to prove the non-usage of the
mark by the proprietor of the trademark. Further he need to show that he has a legitimate interest
for the same and also the non-usage of the mark by the trademark owner is not due to his
negligence or fault but is mainly the case of force majeure or any unforseable circumstances.

Delay and Acquiescence

In situations when there has been a delay in bringing action of the infringement by the plaintiff, it
is stated that the plaintiff’s right have been waived off as the trademark owner and implicitly or
explicitly permitted use of its mark by the subsequent user.

Parody

It is being stated by the Delhi High Court in the case of Tata Sons Ltd v. Greenpeace
International that reasonable parody, comment of a registered trademark can be made if the
intention of the person is to draw attention to some activity of the owner of the trademark. Where
the use is not completely for a commercial purpose, the court may allow parody. This emerged
because the courts gave more importance to the freedom of speech and expression as against
trademark law.

Invalidity of Registered Mark

It can be taken up as a defence by the defendant that the registration of mark by the plaintiff is
invalid i.e. is being done through an unfair advantage . in such case , it would not be called as a
trademark infringement.
Remedies for Trademark Infringement

There are the remedies for which the plaintiff is entitled to claim for infringement or passing off
of his trademark.

Injunction by prohibition of use of the infringing

Injunction by cancellation of the registration, if the mark has been

Damages (may include punitive damages)

In order for a court to award compensatory as well as punitive damages, proof of deception and
intention of the infringer to infringe the plaintiff’s trademark must be established.

In the case of a criminal proceeding, as per section 103 of the Act , the court may dictate:

Imprisonment for a period not less than six months that may extend to three years

A fine that is not less than Rs 50,000 that may extend to Rs 2 lakh