Law of Trademarks

The Trade Marks Act 1999 (in force 15 September 2003) replaced the Trade and Merchandise Marks Act 1958 and brought Indian law in line with TRIPS. The Trade Marks Rules 2017 (in force 6 March 2017) replaced the 2002 Rules and streamlined forms (single Form TM-A for all applications, e-filing fee concessions). The Registrar of Trade Marks works from the Trade Marks Registry (HQ Mumbai; offices at Delhi, Kolkata, Chennai, Ahmedabad). Classification follows the Nice Classification: 45 classes (classes 1–34 goods; 35–45 services). Functions of a trademark: indication of origin, guarantee of quality, advertising and investment function.

Definitions (Section 2(1)):

• Trade mark (zb): a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods, their packaging and combination of colours. (Sound marks can be represented graphically through musical notation, and the 2017 Rules allow an MP3 file; the first Indian sound mark was the Yahoo! yodel (2008).)

• Mark (m): includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours, or any combination.

• Well-known trade mark (zg): a mark that has become so to the substantial segment of the public which uses the goods/receives the services that its use on other goods/services would likely be taken as indicating a connection with the proprietor.

• Certification trade mark (e), collective mark (g), service (z), permitted use (r), deceptively similar (h) (a mark that so nearly resembles another as to be likely to deceive or cause confusion).

Note: defensive registration (Section 47, TMMA 1958) was abolished by the 1999 Act; protection of well-known marks in dissimilar goods replaces it.

Absolute grounds (Section 9): a mark shall not be registered if it:

• is devoid of any distinctive character (not capable of distinguishing);

• consists exclusively of marks or indications that may serve to designate the kind, quality, quantity, intended purpose, values, geographical origin, time of production or other characteristics of goods or services (descriptive);

• consists exclusively of marks which have become customary in the current language or in bona fide and established practices of trade (generic);

• is of such nature as to deceive the public or cause confusion; is likely to hurt the religious susceptibilities of any class; contains scandalous or obscene matter; or is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950;

• Section 9(3): a mark that consists exclusively of the shape of goods resulting from the nature of the goods, or necessary to obtain a technical result, or which gives substantial value to the goods.

• Proviso to 9(1): acquired distinctiveness (a mark that has become distinctive through use before the application date, or is a well-known mark, is registrable). Spectrum of distinctiveness: generic \< descriptive \< suggestive \< arbitrary \< fanciful (coined) marks; fanciful/arbitrary marks get the strongest protection.

Relative grounds (Section 11):

• Registration is refused where, because of identity or similarity with an earlier trade mark and identity or similarity of goods/services, there exists a likelihood of confusion, including likelihood of association (11(1)).

• Section 11(2): a mark identical or similar to an earlier mark with a reputation in India shall not be registered for dissimilar goods where use would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

• Section 11(3): prohibited where use is liable to be prevented by the law of passing off or copyright.

• Section 11(6)–(9): factors in determining a well-known mark: knowledge in the relevant sector of the public (including as a result of promotion), duration, extent and geographical area of use, promotion, registration or applications, record of successful enforcement. Section 11(9): it is not necessary that the mark has been used in India, registered in India, or is well known to the public at large in India.

• Section 12: honest concurrent use and special circumstances allow registration of identical or similar marks.

1. Search the register (optional but advisable) and file the application (Section 18): by a person claiming to be the proprietor of a mark used or proposed to be used; one application for a single class (multi-class permitted in a single application now).

2. Examination by the Registrar (Section 19, 20): objections raised by an examination report; the applicant replies and may be heard.

3. Acceptance and advertisement in the Trade Marks Journal (Section 20).

4. Opposition (Section 21): any person may oppose within three months from the advertisement, extendable by one month (maximum 4 months); notice of opposition in Form TM-O; counterstatement within two months.

5. Registration (Section 23): if no opposition or opposition fails, the mark is registered and a certificate issued. The date of registration is the date of application.

6. Duration and renewal (Section 25): registration is for 10 years and renewable for 10-year periods indefinitely; renewal is due before expiry; a lapsed mark can be restored with surcharge (within one year after expiry, Section 25(3)).

7. Appeal (Section 91): appeals from the Registrar's orders lie to the High Court (earlier the IPAB, abolished in 2021).

8. Removal for non-use (Section 47): a registration can be removed on the ground that the mark was registered without a bona fide intention to use it, and has not been used for a continuous period of 5 years and 3 months from the date of registration. Section 57: rectification of the register.

Assignment, transmission and use by others:

• Section 37–45: a registered/unregistered trademark is assignable with or without goodwill (Section 38); an assignment creating overlapping exclusive rights in different places is restricted (Sections 40–42).

• Registered users (Sections 48–55) and permitted use: the use of a mark by a registered user or permitted user is deemed use by the proprietor (licensing with quality control).

• Section 28: registration gives the exclusive right to use the mark in relation to the goods/services and to obtain relief for infringement.

• Section 31: registration is prima facie evidence of validity; Section 32: protection of registration on ground of acquired distinctiveness; Section 33: acquiescence for five years bars the proprietor of an earlier mark from objecting to later use (unless registration was applied for in bad faith).

Infringement is a statutory wrong: a person who, not being a registered proprietor or permitted user, uses in the course of trade a mark identical or deceptively similar to the registered mark, in a way likely to be taken as use as a trademark, infringes. Under Section 29:

• 29(1): the mark is identical/deceptively similar and goods/services are those for which the mark is registered.

• 29(2): (a) the mark is identical and goods are similar; (b) the mark is similar and goods are identical; (c) both are similar; in each case with likelihood of confusion.

• 29(3): the court presumes confusion where the mark and goods are both identical.

• 29(4): dilution: infringement even for dissimilar goods if the registered mark has a reputation in India and use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark.

• 29(5): use of the registered mark as a trade name or part of a trade name of the defendant's business.

• 29(6)–(9): forms of "use" (affixing, selling, importing, using on business papers, advertising, spoken use); infringement by advertising that takes unfair advantage or is contrary to honest practices.

Limits on the effect of registration (Section 30): use of the mark that is in accordance with honest practices in industrial or commercial matters is not infringement, including: use of one's own name or place of business; indications of kind, quality, quantity, geographical origin (descriptive/nominative fair use); use to indicate the intended purpose of goods (spare parts); exhaustion of rights after lawful sale (Section 30(3)–(4), subject to impairment of condition of goods); and Section 34: prior user rights (continuous use from before the registration/use of the registered proprietor).

Tests for deceptive similarity (Indian case law):

• Amritdhara Pharmacy v. Satya Deo Gupta (SC 1963): the test is how the mark would strike a person of average intelligence and imperfect recollection; the marks are compared as wholes ("Amritdhara" vs "Lakshmandhara").

• Corn Products Refining Co. v. Shangrila Food Products (SC 1960): "Gluvita" vs "Glucovita"; overall structural and phonetic similarity.

• Parle Products v. J.P. & Co. (SC 1972): the question is whether a person acquainted with the original would be deceived; Cadila Health Care v. Cadila Pharmaceuticals (SC 2001): in pharma cases, courts apply stricter standards (nature of the goods, the consumers, the risk of harm); factors include nature of marks, degree of resemblance, nature of goods, class of purchasers, mode of purchase and surrounding circumstances.

• Ruston & Hornsby v. Zamindara Engineering (SC 1969): infringement is a statutory remedy, passing off is a common-law remedy, and the plaintiff in an infringement action need not prove actual deception where the marks are identical.

• Territoriality: Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries (SC 2017) reaffirmed the territoriality principle (reputation in India is required; a foreign mark's spillover reputation must be proved in India) and distinguished earlier cases like N.R. Dongre v. Whirlpool and Milmet Oftho Industries v. Allergan (SC 2004), where transborder reputation was accepted.

• Dilution: Daimler Benz v. Hybo Hindustan (Delhi HC 1994) ("Benz" on underwear); Tata Sons v. Manoj Dodia (Delhi HC 2011) on well-known marks and dilution.

Passing off is a common-law tort preserved by Section 27(2) (no action lies for infringement of an unregistered trade mark, but the right of action for passing off is unaffected). It protects goodwill. Classical trinity (Reckitt & Colman v. Borden, "Jif Lemon", House of Lords 1990): (1) goodwill or reputation in the plaintiff's goods/services; (2) misrepresentation by the defendant (leading or likely to lead the public to believe the goods are the plaintiff's); (3) damage (or likelihood) to the plaintiff. Indian cases: Laxmikant V. Patel v. Chetanbhat Shah (SC 2002) (injunction against passing off even without proof of actual damage; honest adoption is not a defence); Cadbury India v. Neeraj Food Products (Delhi HC 2007); S. Syed Mohideen v. P. Sulochana Bai (SC 2015) (registration is not a defence to passing off by a prior user).

• Civil (Section 135): injunction (including interim injunction, Anton Piller (search/seizure) and John Doe orders), damages or account of profits, delivery up of infringing labels and marks for destruction. Section 134: the suit shall be instituted in a District Court not inferior to the court having jurisdiction, and the plaintiff can sue where he actually and voluntarily resides, carries on business or personally works for gain (the plaintiff-friendly jurisdiction clause). Section 142: relief against groundless threats.

• Criminal (Chapter XIII):

  • Section 103: applying a false trademark or false trade description: imprisonment 6 months to 3 years and fine ₹50,000 to ₹2 lakh.

  • Section 104: selling goods with false trade marks; Section 105: enhanced penalty for repeat offences; Section 107: falsely representing a trade mark as registered (up to 3 years or fine, as amended).

  • Section 115(4): police officers of the rank of Deputy Superintendent of Police or above may search and seize without a warrant after obtaining the Registrar's opinion on facts involved.

• Offences by companies: Section 114; Customs: the Registrar may stop importation of infringing goods (Section 11 of the Customs Act read with IPR Rules 2007).

• Madrid Protocol (2013) has increased international filings; sound mark and shape mark registrations are growing.

• E-commerce intermediaries: Christian Louboutin v. Nakul Bajaj (Delhi HC 2018) and Amazon Seller Services v. Modicare (Delhi HC DB 2020) discuss the "active role" of marketplaces and safe harbour under Section 79 IT Act in trademark cases.

• Well-known marks: Registrar's list under Rule 124 and judicial declarations (Delhi High Court has declared many marks well known).

• Keyword advertising and meta-tags (Google India v. Vishwa Bharti; Consim Info v. Google India, Madras HC 2013) and domain-name disputes (INDRP, .IN registry).

• Dilution of famous marks in unrelated goods; trade dress disputes (shape and packaging).

• Abolition of IPAB: High Courts hear all trademark appeals.

Quick facts for revision (Section 6). Act: 1999 (in force 2003); Rules 2017. Classes: 45 (Nice). Registration: 10 years, renewable. Opposition: 3 months + 1. Non-use removal: 5 years 3 months. Absolute grounds: Section 9; relative grounds: Section 11. Infringement: Section 29; limits: Section 30; passing off preserved: Section 27(2). Appeals: Section 91 (High Court). Suit jurisdiction: Section 134. Penalties: Sections 103–107 (6 months–3 years; ₹50,000–₹2 lakh). Certification marks: Sections 69–78; collective marks: 61–68. Well-known mark: Section 2(1)(zg).