REGISTRATION OF TRADEMARK

Trademarks can be registered in India under the Trademarks Act 1999. The registrar
maintains the record of registration of trademark wholly or partly in electronic form to such
safeguards as maybe prescribed. Trademark registration term is 10 years. After the renewal, it
can be possible for further period of 10 years. If the registered mark is not renewed after the
period of 10 years, then it can be removed from the register of trademarks which is
maintained by the registrar. The registration symbol “R” indicates that the mark is registered.
It cannot be used if the mark has not been registered.

The criteria consist of a series of guidelines to be followed.

1. The trademark is required to be different and unique in its form.

2. It should not be such that it identifies or describes the goods and services or its

quality.

3. The mark should be an unusual one.

4. It should not be similar to any of the trademarks, registered or unregistered.

5. It should not cause any dilemma in the minds of consumers in the purchase of such

goods and services regarding its source of origin.

6. It should not contain any word or symbol prohibited under the Emblem and Names

Act (prevention of improper use), 1950.

7. The mark should not be of the shape of the goods, which ethically provides the goods

a substantial value unreasonably.

Registration (Section 18-23)

 Section 18 - Application for registration to Registrar, Single application for

registration in different categories, fee payable for each category. If the Registrar

refuses the application, he will record reasons for it

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  Section 19- The registrar may Withdraw the application after its been accepted but

before the trademark is registered if he has reasons for it after hearing the applicant.

 Section 20- Advertisement of Application

 Section 21 - Opposition to registration (within 3 months of date of advertisement)

 Section 22 - Correction and amendment of application

 Section 23 – Registration of Trademark

Refusal of Trademark Registration:

The registration of trademark can be refused under the following circumstances:

1) If the trademarks are devoid of any distinctive character, say, not capable of
distinguishing goods from services.
2) If they consist exclusively of marks or indications, which may serve, in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or
the time of production of the goods or rendering of service or the characteristics of the
goods or service.
3) If they consist exclusively of marks or indications which have become customary in
the current language and bonafide and established practices of the trade. However, a
trademark shall not be refused registration if, before the date of application, it has
acquired a distinctive character as a result of the use made of it or a well-known trade
mark.

A trademark will not be registered if,

1. It is of such nature as to deceive the public or causes confusion.

2. It contains or comprises of any matter likely to hurt the religious sensibilities of any

class or the section of the citizens in India.

3. It contains or comprises scandalous or obscene matter.

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 4. If it is prohibited under the Emblems and Names (Prevention of Improper Use) Act.

5. Its identity is confusable with an earlier trademark and there is similarity of goods or

services covered by the trademarks.

6. Its similarity to an earlier trademark and the identity or similarity of the goods or

services covered by the trademark on such similarity or identity is likely to cause

confusion in the minds of the public.

7. If the shape of the goods which results from the nature of the goods themselves or the

shape of the goods, which is necessary to obtain a technical result or the shape, which

gives substantial value to the good.

Trademark infringement and remedies:

The infringement of the trademark involves the violation of the exclusive rights which are
attached to the registered trademark without any due permission of the trademark or the
involved licensees, provided that such permission was granted within the scope of the license.

Infringement occurs with two main reasons:

 The infringer uses a trademark which is identical to a registered trademark
owned by another person.
 Infringer uses a trademark which is confusingly similar to such mark.
The owner of the registered trademark may proceed legally against that infringer.
To establish the infringement of a registered trademark, it is enough to show that the
infringing mark is identical or deceptively similar to the registered mark. There is no further
proof requirement.

The following remedies are available to the owner of the trademark for
an unauthorized use of its imitation by a third party:
 An action for infringement will be taken in the case of registered trademark.
 An action for passing off will be taken in case of unregistered trademarks.
Both the above-mentioned things are different from each other. Statutory remedy will be
given in case of infringement and for passing off, the remedy will be provided by a common
law.

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Following are some of the civil remedies in the trademark:

 Damages can be claimed;

 Injunction/stay against the use of the trademark;

 Appointment of local commissioner by the court for custody or sealing of

infringing material or accounts;

 Accounts and handing over of profits;

 Application under 39 rule 1 and 2 of the Code of Civil Procedure (CPC) for

grant of temporary/ad interim-ex parte injunction.

Jurisdiction (Section 134) - A plaintiff can file a suit for trademark infringement in a district
court within the jurisdiction: where the plaintiff is actually and voluntarily residing or
carrying on business or personally working for gain. where the defendant resides/carries on
business or. where the cause of action arises.

Limitation Period - 3 years

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Passing off:
“No one has the right to represent his goods as goods of someone else”, this is the
ultimate law procedure in intellectual property rights.
 In simple, if a person sells his goods as the goods of another, then the particular
trademark owner can take the legal proceedings against him. This becomes a case of
passing off.

 This is actually to protect the goodwill which is attached with the unregistered

trademark.
 It should be offensive for a trader to misrepresent his goods or services as those of
another and as a result it deceives the consumers for purchasing such goods or
services by visualizing in their minds as they were purchasing the same goods.

Passing off has been applied broadly to cover things of a great diversity such as
 Similarities between the packaging of products;
 Protect the product trade dress;

It is totally different or distinct from the registered trademark, but often it sits together with
the law of registered trademarks. For a passing off action, there is no necessity that the
trademark needs to be a registered one.

There are three essential elements to consider for passing off:

 First and foremost thing is that show the trademark, trade dress or whatever thing it
has, goodwill or status. Passing off cannot be used to safeguard the mark if it is new
or with little status or no trade has taken place.
 It is mandated to show that misrepresentation has arisen or it’s likely to arise. These
necessities that a trademark complained of must be adequately similar to the
trademark of the applicant for a customer to be misled.
 Finally, there may have some possibilities of damages as a result of deception.
These above-mentioned elements must be proved with the relevant proofs, so that an action
of passing off carries a evidential burden, but it provides a possible remedies when,
If there has been obvious copying of trade dress or when a trademark has not been registered
but has a considerable standard and the usage.

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Difference between Passing Off and infringement.

1) Trademark protects documented products and services, whereas Passing Off shields

unregistered products and services. It is one of the most crucial dissimilarities

between Passing Off and trademark infringement. However, the fact here is that the

treatment in both Passing Off and trademark infringement is similar.

2) The other dissimilarity between Passing Off and trademark infringement is that in

Passing off, the person does not have to use the trademark of the complainant to

obtain an act of passing off. But, trademark infringement is not the same.

3) In the case of trademark infringement, the burden of proof lies on the user.

4) Passing off is a standard law remedy, whereas Trademark infringement is a statutory

therapy.

5) For trademark infringement, prosecution under criminal law is easy comparing to the

case of Passing off.

6) For the case of Passing off, the treatment has to be sought underneath Section 20 of

Civil procedure code 1908, on the other hand, trademark infringement cases can

resolve under Section 134 of the Trademarks Act 1999.

7) Registration is important for trademark infringement, whereas for passing off,

reputation, damage, misrepresentation is vital.

Well-Known Trademarks

The concept of ‘Well-Known’ trademarks is a result of globalisation and interdependence of

economies on a global scale. Well-known Trademarks play a significant role in global
markets in identifying marks that widely known to substantial segment of public.

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Section 2(1)(zb) of the Trade Marks Act,1999 defines well-known mark, in relation to goods
and services, as 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 the person using the mark in
relation to the first-mentioned goods or services”.

Types of Trademarks in India

There are 45 Classes in Trade mark

1) Word Marks - Word Marks are the most common types of trademarks that are registered in
India. These refer to any marks that are used to identify the products and services of a trading
company or service-providing company. If the name of your product or service is text-
based (contains text only) it will be registered under Word Marks. For Example - The
word Nestle® is a registered as a Wordmark.
2) Service Marks - Service Marks represent the service which a company or business deals in.
They distinguish different services available in the market and is filed under trademark
classes 35-45.  For example - FedEx is a registered courier delivery service provider.

3) Logos and Symbols - A logo is a printed/painted figure/design/character and do not consist of

any letters/words/numerals. For word marks that are also used as a logo, the trademark needs
to be registered both as a word mark and a device marks. In India, the registration for both
these aspects can be made in a single application. For example - Apple has a
registered logo which is used on each of their products.
4) Shape of Goods - The shape of goods are categorized in Trade Dress (appearance of a
product) wherein, other than a logo or label a product can also be distinguished based on its
packaging. For example - The bottle of Coca-Cola is distinguished from other brands on the
basis of its bottle's shape.

5) Series Marks - Service marks are trademarks which have a common syllable, prefix or
suffix, thus denoting as a family of marks sharing a 'common name.' They should differ
only as to matters of non-distinctive characters(goods, price, quality or size). For example

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 - McDonald's have a series of 'Mc' registered as word mark which represents their different
product range such as Mc Chicken, Mc Veggie etc.
6) Collective Trademarks - These marks are linked with a group of people and not one
single product or service. These trademarks are primarily owned by an organization,
institutes or any association. They can be used by members of the organization to represent
them as one the part.
7) Certification Mark - The certification mark is created to show a specific quality standard that
the company has met. This means that the public will be aware that the trader's goods or
services are certified as it has met a particular standard, as defined by the certifying body that
owns the certification mark. Certification marks are used to define "Standard" of goods and
services.

Dilution Of Trademarks

An act that weakens the exclusivity of a well-known trademark, resulting in the tarnishment
or blurring of that well-known mark is known as Trademark dilution. Trademark dilution is
different from trademark infringement in the way that the former involves the application of a
mark concerning the commodities and services that are not in a competing position to those
associated with the well-known trademark. For example, a trademark dilution law may
prevent a harmonica manufacturer from adopting a ‘Ferrari’ mark on its goods, even though
customers would never be confused in differentiating between both the marks. Trademark
dilution, therefore, stands for the proposal that some marks so well-known that they are
worthy of protection beyond the standard likelihood-of-confusion study for determining
trademark violation.7 Also, for a mark to be considered and recognized as well known, the
mark must necessarily achieve widespread public recognition meaning that the mark should
be immediately identifiable by the public at large. For example, Coca-Cola, IKEA, Sony,
Nike

With the incorporation of the Trademarks Act in 1999, the concept of ‘Dilution’ was first
inscribed in any Indian statute. Section 29(4) of the Act talks about the Doctrine of Dilution

According to this section, a trademark infringement is to be constituted as dilution only when

a person uses:-

1. A mark that is similar to an already registered trademark having a reputation in India.

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 2. A mark on different goods and services other than those covered by the already
registered mark.

Dilution of trademarks occurs when a third party's use of a similar trademark or trade name
weakens the distinctiveness of the original trademark or trade name. Dilution can occur either
through blurring or tarnishment. Blurring occurs when the trademark or trade name is used in
relation to a different product or service than that which is associated with the original
trademark or trade name, diminishing the consumer's association between the two.
Tarnishment occurs when the trademark or trade name is used in an unwholesome or negative
manner, creating an unfavorable association between the original trademark or trade name
and the new product or service.

Forms of dilution include:

1. Blurring: Use of a trademark or trade name in relation to a different product or

service than that which is associated with the original trademark or trade name.

2. Tarnishment: Use of a trademark or trade name in an unwholesome or negative

manner, creating an unfavorable association between the original trademark or trade

name and the new product or service.

3. Free Riding: Use of a trademark or trade name to benefit from the goodwill and

reputation of another's trademark or trade name without bearing the costs of creating

that goodwill.

4. Unfair Competition: Use of a trademark or trade name to deceive consumers into

believing they are purchasing the original product or service.

Assignment of Trademark

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As physical properties are transferred, the same way trademarks are also transferred. This

transfer of trademark is called Assignment of trademark. In general terms, Assignment means

transfer of title, rights, interest and benefits from one person to another person. Thus,

Assignment of trademark means transfer of Owner’s title, rights, interest and benefits to other

person. The transferring party is called as “Assignor” and the receiving party is called as

“Assignee”.

Section 2(1)(b) of the Trade Marks Act, 1999 “Assignment” means an assignment in writing

by the act of the parties concerned;

As per section 37 of the Trade Marks Act, 1999, the person entered in the register of

trademarks, as the proprietor of a trademark, shall have power to assign a trade mark and to

give effectual receipt of for any consideration for such assignment.

ASSIGNABILITY OF REGISTERED OR UNREGISTERED TRADEMARK:-

As per section 38 of the Act, a registered trademark can be transferred with or without the

Goodwill of the business concerned either in respect of all the goods or services in respect of

which the said trademark is registered or of some of the goods or service. Moreover, as per

section 39 of the Act, an unregistered trademark may be assigned with or without the

Goodwill of the business concerned.

TYPES OF ASSIGNMENT:-

1. Assignment with Goodwill of Business: Where an assignor assigns to the assignee,

the value, rights and entitlements also, as associated with a trademark with respect to
the goods or services already in use by the assignor. After taking over the goodwill
associated with the trademark, the assignee is free to use the trademark assigned to
him for all goods or services including for the goods or services which were already
in use by the Assignor. Such assignment is called assignment with Goodwill of
Business.

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 2. Assignment without the Goodwill of Business: Where an assignor assigns to the
assignee, the right and entitlements in a trademark with respect to the goods or
services which are not in use by the assignor. In other words, where the assignor
restricts the assignee with a condition that the assignee is not entitled to use the
trademark assigned in relation to the goods or services already in use by the assignor.
Such assignment is called assignment without the Goodwill of Business.

RESTRICTION ON ASSIGNMENT OF TRADEMARK:-

1. Parallel use Restriction: Where assignment results in creation of exclusive right in

different persons, in relation to same or similar goods or services and the use of the
trademark will be likely to deceive or cause confusion. Thus, multiple exclusive right
in relation to same or similar goods or services, in different person is not allowed.
This prevents the parallel use of a trademark by more than one person concerned in
relation to same or similar goods or services. (Section-40)

2. Multiple Territorial use Restriction: Where the assignment results in creation of

exclusive right, in different person in different parts of India, in relation to same or
similar goods or services. Thus, assigning of scattered right in different parts of India
is not allowed. (Section-41) 

RIGHT OF THE ASSIGNOR ON ASSIGNMENT OF TRADEMARK:

The assignor terminates to have his rights, title or any interest in the trademark, the moment
assignment deed is executed in favour of the assignee, irrespective of the fact that the name
of the assignee has not been updated in the record of the Registrar of trademarks.

RIGHTS OF THE ASSIGNEE: WHEN ASSIGNMENT IS COMPLETE BUT

REGISTRATION IS PENDING:

Though as per section 45 of the Act, it is mandated that the assignee shall apply before the
Registrar of the trademarks to register his title. But this does not mean that recording of
assignment of registered trademark asserts all rights or titles or interest in the assignee.

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The reason behind this understanding are the opening words of section 45 of the Act, which
says “where a person becomes entitled by assignment or transmission of a registered
trademark, ……..”. Therefore, the first condition is entitlement of rights, title or interest by
way of assignment or transmission of a registered trademark followed by registration of
assignment of a registered trademark. Thus right in assignee does exist even before the
registration of assignment.

The assignee of a trademark is also entitled to file a civil suit, even though the recording of
assignment of registered trademark is pending before the registrar of trademarks. Moreover,
section 45 does not confer any title over the trademark assigned. Instead the registration
granted under section 45 is only proof of title of the trademark of assignee or the person who
acquired it by way of assignment.

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