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QUESTION BANK
1. Explain the provision relating to registration of Trademark. What are the effects of registration of trade mark?
2. What is trademark? Explain importance of trade mark as intellectual property?
3. Define Trade mark. Discuss in detail the procedure for registration of trade mark.
4. What is Trade mark? Explain procedure to obtain trademarks?
5. Infringement and passing off action in Trade mark.
6. Explain the concept of trade mark and what are the legal remedies available against infringement of trademark?
Short Notes
1. Rights of trademark holder.
2. Authorities under Trade mark.
II. History of Trade Mark Law in India
III. Definition and Meaning of Trade Mark
IV. Registration of Trademark
2. Classification of Goods (Sections 7 and 8)
3. Relevant Factors to be Considered by the Registrar
a) Absolute Grounds for Refusal of Registration (Section 9)
i. Mark Devoid of Any Distinctive Character:
ii. Marks Indicative of Kind, Quality, etc.:
iii. Customary Marks:
iv. Deceiving or Confusing Marks:
v. Marks Hurting Religious Susceptibilities:
vi. Marks Containing Scandalous or Obscene Matter:
vii. Prohibited Marks:
viii. Shape Exclusions:
b) Relative Grounds for Refusal of Registration (Section 11)
i. Likelihood of Confusion with Earlier Trademark:
ii. Unfair Advantage of a Well-Known Trademark:
iii. Prevailing Laws:
4. Limitation as to Colour (Section 10)
5. Honest and Concurrent Use (Section 12)
6. Chemical and Non-Proprietary Names (Section 13)
a) Who May Apply:
b) Single Application:
c) Place of Application:
d) Acceptance or Refusal:
e) Withdrawal of Acceptance (Section 19):
f) Correction and Amendment (Section 22):
2. Advertisement of Application (Section 20)
a. Duration and Renewal:
b. Notice for Renewal:
c. Removal from the Register:
d. Restoration of Removed Mark:
7. Effect of Removal from the Register (Section 26)
V. Rights of Trade Mark Holder
1. Right to Exclusive Use (Section 28(1)):
2. Right to Seek Statutory Remedy Against Infringement (Section 28(1)):
3. Right of Joint Registered Owners (Section 28(3)):
4. Right to Assign (Section 37):
5. Right to Seek Correction of the Register:
6. Right to Alter Registered Trademark:
B. Rights of Unregistered Trademark Holder
1. Limitations Imposed During Registration (Section 28(2)):
2. Already Registered Proprietors:
3. Bona Fide Use of a Person's Own Name:
VI. Infringement of Registered Trade Mark (Section 29)
1. Indicating Kind, Quality, or Quantity:
2. Use Outside the Scope of Registration:
3. Implied Consent:
4. Use in Relation to Accessories and Parts
5. Exercise of Concurrent Right:
VII. Remedies for Infringement of Trade Mark
A) Civil Remedies (Sections 134 and 135)
2. Nature of Remedy
(a) Temporary or Interim Injunction:
(b) Permanent Injunction:
ii. Suit for Damages and for Profits
1. Falsifying and Falsely Applying a Trade Mark (Section 102):
2. Selling Goods or Services with a False Mark (Section 104):
3. Removing Piece Goods Contrary to Section 81 (Section 106):
4. Falsely Representing a Mark as Registered (Section 107):
5. Improperly Describing a Place of Business (Section 108):
6. Falsification of Entries in the Register (Section 109):
C) Administrative Remedies
VIII. Authorities Under the Trade Marks Act
1. Registrar
i. Full Powers of a Civil Court:
ii. Orders as to Costs:
iii. Review Authority:
b. Functions of the Registrar
(c). Certification Trade Mark
(d). Well-Known Trade Mark
(e). Internet Domain Name
IX. Passing Off
(a) Meaning of Passing Off (Section 27(2))
(b) Essential Features of a Passing-Off Action
(c) Modes Adopted for Passing Off
(d) Nature of Passing-Off Relief
*****
The advent of the Industrial Revolution initiated the large-scale production and mass distribution of industrial products. Due to the resulting proliferation of identical or similar categories of goods manufactured by different competitors, manufacturers began to mark or symbolize their products specifically. This distinctive mark or symbol was highly useful to separate their products from those of rival manufacturers, protect their commercial goodwill, and effectively advertise their goods. Day by day, the products of specific producers that carried these distinct marks began gaining significant popularity and generating substantial goodwill in the market.
However, unscrupulous competitive producers soon started to deceive consumers by affixing these popular marks or symbols to their own inferior products to capture market share. Such unauthorized duplication caused popular products to lose their hard-earned goodwill and commercial market share. Therefore, to eliminate this chaos, protect the consuming public from confusion and deception, and safeguard the goodwill, trade, and business interests of honest manufacturers, the Indian Parliament enacted the Trade Marks Act, 1999, which effectively replaced the earlier Trade and Merchandise Marks Act of 1958.
Presently, the market features several prominent trademarks that distinguish their respective products from competing goods and command immense popularity, such as Jio, Samsung, TATA, BATA, Patanjali, Sri Sri Tattva, BSNL, and Lux.
The first formal statutory legislation in India concerning the protection of trade markings was the Indian Merchandise Marks Act, 1889. This colonial-era framework was subsequently replaced by the more comprehensive Trade Marks Act, 1940. As the industrial landscape expanded post-independence, the Trade and Merchandise Marks Act, 1958, was enacted to supersede the 1940 legislation.
The 1958 Act served the Indian commercial ecosystem for about four decades; however, with rapid globalization, it eventually became unable to address modern technological and economic challenges. Moreover, it was felt necessary to pass a new trademark statute to conform domestic laws to international treaties on industrial property. With these objectives in mind, the Parliament enacted the modern Trade Marks Act, 1999, which received assent and fully came into force in the year 2003.
A trademark is essentially a visual representation allocated to goods or services to indicate their specific trade origin. Under Section 2(1)(zb) of the Trade Marks Act, 1999, a "trade mark" is defined to mean 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 it may include the shape of goods, their packaging, and a combination of colours.
From this statutory definition, we may lay down the following essential characteristics and features of a trademark:
Section 2(1)(m) defines a "mark" to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours, or any combination thereof. Furthermore, Section 2(1)(o) clarifies that a "name" includes any abbreviation of a name, while Section 2(1)(q) states that a "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork.
Thus, the statutory definition of a "mark" is illustrative and inclusive rather than exhaustive. It encompasses other unique branding elements that fall within the general and plain meaning of the definition. A trademark is typically a name, word, phrase, logo, symbol, design, image, or a creative combination of these elements.
In the landmark case Gorbatschow Vodka K.G. v. John Distilleries Limited, 2011 (47) PTC 100 (Bom).,
The Bombay High Court observed that the unique physical shape of the goods, the packaging of the products, and specific combinations of colours are now statutorily recognized as protectable trademarks under the expansive definition of the 1999 Act. The current Trade Marks Act, 1999, protects diverse forms of unconventional marks tailored to cover modern categories of trade, business, and services, such as service marks, collective marks, certification trademarks, well-known trademarks, and internet domain names.
The mark must possess the capacity to be represented graphically. Graphical representation means the ability to depict the trademark for goods or services clearly in a paper or electronic form so that it can be recorded in the official register.
A trademark must inherently possess the capacity to distinguish the goods or services of one person from those of another. For example, the visual trademark of Jio is completely distinct from that of BSNL, allowing consumers to identify the source.
A trademark can be registered for both tangible goods and intangible services. According to Section 2(1)(j), "goods" means anything which is the subject of trade or manufacture. According to Section 2(1)(z), "service" means service of any description which is made available to potential users and includes the provision of services in connection with the business of any industrial or commercial matters, such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information, and advertising. The definition of service is illustrative and inclusive rather than exhaustive.
The subject of trademark registration is structurally divided into two primary segments:
(A) Conditions and grounds for refusal of registration, and
(B) The formal statutory procedure for registration.
All trademarks accepted for registration are entered into a centralized Register of Trade Marks maintained by the Registrar. Under Section 3, the Controller General of Patents, Designs, and Trade Marks acts as the official Registrar of Trade Marks. The statute makes it entirely lawful for the Registrar to maintain these records wholly or partly in computer floppies, diskettes, or any other electronic form, subject to prescribed legal safeguards.
To facilitate registration, the Registrar classifies goods and services in accordance with the international classification system (the Nice Classification). Any question arising as to which specific class any goods or services fall within shall be determined conclusively by the Registrar, whose decision remains final. The Registrar may publish an alphabetical index of goods and services classified in the prescribed manner, and if a specific item is missing from the index, the Registrar determines its classification. While a trademark is typically owned by a single person, under the special circumstances of Section 24, it may be held jointly by two or more persons.
Before granting registration, the Registrar must evaluate the application against two distinct sets of statutory limitations:
Absolute grounds for refusal are firmly rooted in public policy. The statutory object is to protect the legitimate interests of the trading community and the general public by preventing any single individual from monopolizing ordinary words, descriptive terms, or generic symbols that ought to remain free for everyone to use. The absolute grounds for refusal include:
i. Mark Devoid of Any Distinctive Character: Marks that completely lack a distinctive character—meaning they are incapable of distinguishing the goods or services of one person from those of another—cannot be registered. In The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks, [AIR 1977 Cal 413], the Calcutta High Court observed that "distinctiveness" denotes some inherent or acquired quality in the trademark which clearly earmarks the goods carrying it as distinct from the goods of other producers.
ii. Marks Indicative of Kind, Quality, etc.: Marks consisting exclusively of signs or indications that serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other descriptive characteristics of the goods or services cannot be registered.
In M/s. Hindusthan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks & Anr., [AIR 1955 Cal 519]
The Calcutta High Court held that the word "Rasoi" used for hydrogenated groundnut oil referred directly to the character and cooking purpose of the goods, making it generic and non-registrable.
iii. Customary Marks: Marks consisting exclusively of signs or indications that have become customary in the current language or in the established, bona fide practices of the trade cannot be registered. Words falling within the public domain are prohibited; thus, the mark "INDIA" is refused for electric fans, and geographical or common words like "Liverpool," "Yorkshire," and "Janta" are denied registration.
iv. Deceiving or Confusing Marks: If a mark is of such a nature as to actively deceive the public or cause commercial confusion, it shall be refused registration. For instance, applications to register marks like "TI-ECO," "BARAGAN," and "HITAISHI" were rejected because they were deceptively similar to and confusingly copycatted famous registered trademarks like "TELCO," "BARALGON," and "HITACHI".
v. Marks Hurting Religious Susceptibilities: Marks containing or comprising any matter likely to hurt the religious susceptibilities of any class or section of Indian citizens are strictly barred.
vi. Marks Containing Scandalous or Obscene Matter: Marks comprising scandalous, defamatory, or obscene matter are refused.
vii. Prohibited Marks: Marks whose use is expressly prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950, cannot be registered.
viii. Shape Exclusions: While shape marks are generally registrable, a mark shall be refused if it consists exclusively of: (a) the shape of goods resulting from the nature of the goods themselves, (b) the shape necessary to obtain a technical result, or (c) the shape that gives substantial intrinsic value to the goods. Consequently, a standard "apple" shape cannot be registered for actual apples or for packaging shaped like an apple.
Proviso Exception: If a trademark, prior to the date of application, has acquired a distinctive character due to prolonged commercial use or is recognized as a well-known trademark, registration will not be refused under the absolute grounds.
Relative grounds protect the rights of pre-existing trademark owners. The Registrar can refuse a new application if it conflicts with an earlier trademark already on the register:
i. Likelihood of Confusion with Earlier Trademark: Registration is refused if there is a likelihood of public confusion or association with an earlier trademark, either because the marks are identical and the goods/services are similar, or because the marks are similar and the goods/services are identical. "Identity" denotes being identical in essential character, whereas "similarity" denotes a deceptive resemblance.
In Amrutdhara Pharmacy v. Satya Deo Gupta, [AIR 1963 SC 449],
The Supreme Court of India refused to register the mark "Lakshmandhara" for a medicinal preparation, ruling that it was deceptively similar to the famous registered trademark "Amrutdhara" and would cause confusion in the minds of the purchasing public.
ii. Unfair Advantage of a Well-Known Trademark: The Registrar will refuse registration if the earlier mark is an established well-known trademark in India, and the unauthorized use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the well-known mark.
In Khoday India Limited v. The Scotch Whisky Association & Others, (2008) 10 SCC 723,
An Indian distiller had registered the mark "Peter Scot" for its whisky in 1974. After 13 years, the Scotch Whisky Association sought cancellation, arguing the term "Scot" deceptively suggested the whisky originated in Scotland. The Supreme Court evaluated the facts and ruled that the mark was not deceptively similar enough to lead an average consumer to believe the product was manufactured in Scotland, thereby upholding the mark.
iii. Prevailing Laws: Registration is refused if the use of the mark is liable to be prevented by the common law of passing off protecting an unregistered trademark, or by the law of copyright.
Consent Exception: Under the proviso to Section 11, if the proprietor of the earlier registered trademark or right provides express written consent to the registration of the later mark, the Registrar may permit its registration.
A trademark may be registered with a strict limitation to certain colours or specific colour combinations, or it may be registered without any colour limitations. When a trademark is registered without limitation of colour, it is legally deemed to be registered for all colours. If the registration profile does not mention specific colours, the visual presentation is fully protected across the entire colour spectrum.
In the case of honest concurrent use or other special circumstances, Section 12 empowers the Registrar to permit the registration of identical or nearly resembling trademarks for different proprietors, even if one of them is already registered. This provision balances equities when multiple businesses have honestly built parallel reputations using similar marks over time without causing public deception.
No word can be registered as a trademark if it is the commonly used and accepted name of a single chemical element or compound (as distinguished from a chemical mixture). Furthermore, any international non-proprietary name declared by the World Health Organization (WHO) and notified by the Registrar, or any name deceptively similar to it, is completely barred from registration.
If a trademark application falsely suggests a personal connection with a living individual or a person who died within twenty years prior to the application date, the Registrar will halt proceedings. The applicant must furnish the formal written consent of the living person or the legal representatives of the deceased individual. This prevents the unauthorized commercial exploitation of famous personalities.
If a proprietor claims an exclusive right to use a specific part of a larger trademark separately, they may apply to register the whole mark and the individual part as separate trademarks. Each separate trademark must independently satisfy all statutory conditions and enjoys the full privileges of an independent mark. Under Section 17(1), when a trademark consists of several distinct matters, its collective registration confers an exclusive right to the use of the trademark taken as a whole, rather than giving an absolute monopoly over every un-registered individual component.
Where a proprietor claims ownership of several trademarks for the same or similar goods or services that resemble each other in material particulars but differ in non-distinctive matters—such as statements of goods, price, number, quality, colour, or geographical place names—they can register them collectively as a series in a single registration. A series covers marks that share an identical core identity and vary only in minute, non-distinctive trade features that do not alter the trademark’s identity in the consumer’s eyes.
Section 2(1)(c) defines "associated trademarks" as trademarks deemed to be, or required to be, registered as associated trademarks under the Act. Section 2(3) clarifies that goods and services are associated with each other if it is likely that those goods might be sold or traded in the same business that provides those corresponding services.
Under Section 16(1), if an application involves a mark identical or highly similar to an existing mark held by the same proprietor for the same description of goods or services, the Registrar will require the marks to be entered as associated trademarks to prevent confusion if assigned separately. Similarly, under Section 16(2), marks registered in the name of the same proprietor for associated goods and services must be registered as associated. Separate parts registered under Section 15(1) and series marks registered under Section 15(3) are automatically deemed associated trademarks.
Unlike regular independent marks, associated trademarks cannot be assigned or transferred separately; they must be assigned together as a collective cluster to avoid creating deceptive duplicates in the market. For example, a distiller named Anderson can register "Anderson Wines" as a primary mark, and subsequently register associated trademarks for "Anderson Beer" and "Anderson Whisky," keeping the brand ecosystem unified under one proprietor.
The formal administrative procedure for securing registration involves the following steps:
a) Who May Apply: Any person claiming to be the proprietor of a trademark used or proposed to be used by them can apply in writing to the Registrar in the prescribed manner.
b) Single Application: A single consolidated application can be made to register a trademark across different classes of goods and services, provided the statutory fees are paid separately for each class.
c) Place of Application: Every application must be filed in the specific branch of the Trade Marks Registry within whose territorial limits the applicant’s principal place of business in India is situated. For joint applicants, the location is determined by the party whose name is listed first. If the applicant does not carry on business in India, the application must be filed in the Registry branch that covers the address for service disclosed in the application.
d) Acceptance or Refusal: The Registrar can refuse the application outright, accept it absolutely, or accept it subject to amendments, modifications, conditions, or limitations. In cases of refusal or conditional acceptance, the Registrar must record the written grounds and material facts relied upon for the decision.
e) Withdrawal of Acceptance (Section 19): If the Registrar discovers that an application was erroneously accepted before the mark is officially registered, they can formally withdraw the acceptance.
f) Correction and Amendment (Section 22): The Registrar retains the power to permit the correction of clerical errors or formal amendments to the application at any stage, whether before or after acceptance.
Once an application is accepted, either absolutely or subject to conditions, the Registrar directs that the application be advertised in the official Trade Marks Journal, detailing any limitations imposed. Under special circumstances—such as if the mark lacks inherent distinctiveness or is identical to a prior mark—the Registrar may direct the application to be advertised before formal acceptance to invite public scrutiny early.
Any person can file a formal written notice of opposition with the Registrar within four months from the date of the journal advertisement or re-advertisement, upon payment of the prescribed fee. The Registrar serves a copy of the opposition notice on the applicant.
[Opposition Notice Served on Applicant]
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(Must reply within 2 Months)
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[Applicant Files Counter-Statement] ───► (If not filed, application is Abandoned)
Within two months from receiving the opposition notice, the applicant must file a formal counter-statement detailing the grounds upon which they rely; if they fail to do so, the application is legally deemed abandoned. If the counter-statement is submitted, the Registrar serves a copy on the opponent, collects evidence from both parties within the prescribed timelines, and provides an opportunity for a formal hearing. After hearing both sides, the Registrar decides whether registration will be permitted and under what conditions.
If the application is not opposed within the four-month window, or if the opposition proceedings are decided in favor of the applicant, the Registrar must formally register the trademark within eighteen months of the filing date, unless the Central Government directs otherwise.
Once registered, the registration dates back retroactively to the exact date on which the application was originally made, meaning the application date is legally deemed the date of registration. The Registrar then issues an official Certificate of Registration under the seal of the Trade Marks Registry. If the registration process is delayed past twelve months due to default or non-compliance by the applicant, the Registrar can treat the application as abandoned after serving a notice. The Registrar also retains the power to correct obvious clerical errors in the register or certificate.
The Act does not permit two or more persons to be registered as joint proprietors if they intend to use the trademark completely independently. However, if their business relationship requires that the mark be used exclusively on behalf of all of them, or in relation to goods or services with which all of them are collectively connected in trade, they can be registered as joint proprietors. The joint right is treated legally as if it were vested in a single person.
a. Duration and Renewal: A trademark registration is valid for an initial period of ten years. It can be renewed indefinitely for successive periods of ten years upon timely payment of the prescribed renewal fees.
b. Notice for Renewal: Before the expiration of the ten-year term, the Registrar sends a formal notice to the registered proprietor reminding them of the upcoming expiration date and the fee conditions required for renewal.
c. Removal from the Register: If the renewal conditions and fees are not complied with upon expiration, the Registrar can remove the trademark from the register. However, the Registrar cannot remove the mark if the proprietor submits the renewal application along with the prescribed fee and surcharge within a six-month grace period following the expiration date.
d. Restoration of Removed Mark: If a mark is removed for non-payment, the proprietor can file a restoration application after six months and within one year from the expiration date. If the Registrar is satisfied that it is just to do so, they can restore the mark to the register and renew the registration for ten years from the expiration date, subject to any conditions deemed fit.
Where a trademark has been removed from the register for failure to pay the renewal fee, it is still deemed to be an active trademark on the register for one year for the purpose of evaluating any new applications filed by third parties. This block prevents other applicants from securing the same mark immediately, unless the tribunal is satisfied that: (a) there has been no bona fide trade use of the removed mark during the two years immediately preceding its removal, or
(b) the use of the new mark is highly unlikely to cause public deception or confusion.
Trademark law recognizes distinct bundles of rights for both registered proprietors and unregistered trademark users.
1. Right to Exclusive Use (Section 28(1)): Registration vests the registered proprietor with the absolute, exclusive right to use the trademark in relation to the specific goods or services for which it is registered.
2. Right to Seek Statutory Remedy Against Infringement (Section 28(1)): The registered proprietor can initiate formal civil proceedings in the event of an infringement. They can secure temporary or permanent injunctions and elect to claim either compensatory damages or an account of profits from the infringer.
3. Right of Joint Registered Owners (Section 28(3)): Where two or more persons are registered as independent proprietors of identical or nearly resembling trademarks, their registration does not give them exclusive rights against each other. However, each joint owner holds the same statutory rights against the rest of the world as if they were the sole registered proprietor.
4. Right to Assign (Section 37): The registered proprietor holds the absolute power to assign or transmit the trademark to another party and give valid receipts for any financial consideration received. This right remains subject to the general provisions of the Act and any third-party rights displayed on the register.
5. Right to Seek Correction of the Register: The proprietor has the right to apply to the Registrar to correct errors relating to their personal particulars or other technical details entered in the register.
6. Right to Alter Registered Trademark: The proprietor can apply to the Registrar for leave to add to or alter the trademark in any manner that does not substantially affect its core identity. The Registrar can grant or refuse leave on terms they deem appropriate.
Although unregistered trademark holders do not enjoy statutory infringement remedies, they are protected under the common law remedy of passing off. The proprietor of an unregistered trademark can initiate civil proceedings to prevent a competitor from using an identical or deceptively similar mark, provided they can establish that:
(a) their mark has acquired significant commercial goodwill,
(b) the defendant's unauthorized use amounts to a misrepresentation, and
(c) the claimant has suffered or is highly likely to suffer irreparable damage to their business reputation. The court can award both injunctions and financial remedies.
Statutory trademark rights are not absolute and remain bounded by the following explicit exceptions:
1. Limitations Imposed During Registration (Section 28(2)): The exclusive right to use is bound by any conditions or geographic limitations entered on the register. Any deployment outside these boundaries is not protected, and an action for infringement cannot lie against others using the mark outside those limits.
In Perry and Co. Ltd. v. Truefitt / Perry and Co. v. Perry and Co., (1940) 1 MLJ 431,
The Madras High Court ruled that if a trademark is granted for a specific product like biscuits, the proprietor cannot extend that statutory monopoly to block others in a separate product category like confectionery.
2. Already Registered Proprietors: A new registration cannot be enforced against individuals who are already registered proprietors of identical or similar marks for similar goods.
3. Bona Fide Use of a Person's Own Name: A registered proprietor cannot interfere with the bona fide use by any person of their own name, the name of their place of business, or the use of any honest descriptive indications regarding the character or quality of goods.
Any unauthorized commercial use of the exclusive statutory rights vested in a registered trademark constitutes an infringement. Section 29 identifies the specific acts that amount to infringement:
A registered trademark is infringed by any person who, not being a registered proprietor or permitted user, uses a mark in the course of trade that is identical or deceptively similar to the registered trademark, in relation to the goods or services for which it is registered, in a manner likely to be taken as trademark use.
Prem Nath Mayer v. Registrar of Trade Marks, [AIR 1973 Cal 396]
The Calcutta High Court ruled that when determining deceptive similarity, it is fatal to compare two marks side-by-side. Instead, the court must apply the test of imperfect recollection, evaluating whether an ordinary purchaser of average intelligence, with a general memory of the plaintiff's mark (here, the visual device of a lion on chaff-cutter blades), would be deceived or confused when encountering the defendant's mark separately in the market. The Court held the defendant's "Ma Durga Brand" (also featuring a prominent lion for identical goods) to be a deceptive infringement.
A registered trademark is infringed if an unauthorized person uses a mark in the course of trade which, because of:
(a) its identity with the trademark and similarity of goods/services,
(b) its similarity to the trademark and identity/similarity of goods/services, or
© its identity with the trademark and identity of goods/services, creates a strong likelihood of confusion among the public or leads to an association with the registered mark.
Infringement occurs when a person uses a mark in the course of trade that is identical or similar to a registered mark, even if it is used for completely dissimilar goods or services, provided the registered mark has an established reputation in India and the unauthorized use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the registered mark.
A person infringes a registered trademark if they use it as their official trade name, part of their trade name, or as the business name of a concern that deals in the same goods or services for which the trademark is registered.
A trademark is infringed by any person who applies the registered mark to materials intended to be used for labelling, packaging, business papers, or advertising, provided the person knew or had reason to believe that the application was completely unauthorized by the proprietor or licensee.
A registered trademark is infringed by any advertising that:
(a) takes unfair advantage of and runs contrary to honest industrial or commercial practices,
(b) is detrimental to its distinctive character, or
(c) acts against the hard-earned reputation of the trademark.
In Compaq Computer Corp v. Dell Computer Corp Ltd, [1992] FSR 93,
Dell Company ran advertisements stating that their computers functioned identically to Compaq computers but were much cheaper. The court held that this specific comparative advertisement constituted an infringement of Compaq’s trademark rights.
Where the distinctive elements of a registered trademark consist of specific words, the mark can be actively infringed by the spoken use of those words just as effectively as by their visual representation.
The Act protects the honest commercial use of descriptive language. Section 30(1) clarifies that the use of a registered trademark by any person to identify goods or services as those of the proprietor is permitted, provided the use:
(i) is in accordance with honest practices in industrial or commercial matters, and
(ii) does not take unfair advantage of or cause detriment to the distinctive character or repute of the mark. The following specific acts do not constitute infringement:
1. Indicating Kind, Quality, or Quantity: A trademark is not infringed if it is used honestly to indicate the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other organic characteristics of the goods or services.
2. Use Outside the Scope of Registration: If a trademark is registered subject to specific conditions or limitations, its use in a manner or location outside the scope of that registration does not constitute infringement.
In Rich Products Corporation & Anr. v. Indo Nippon Foods Ltd., 2010 (44) PTC 515 (Del).,
The proprietor of the registered mark "RICH’S WHIP TOPPING" initiated an infringement action against a competitor using the mark "BELLS WHIP TOPPING," claiming deceptive similarity. The evidence revealed that the mark was registered in the U.S. and New Zealand with the explicit exclusion of the descriptive words "Whip" and "Topping". The Delhi High Court observed that the phrase "Whip Topping" merely describes the nature and quality of the cream product as it is commonly understood and sold. Consequently, using these descriptive words outside the restrictive scope of the registration did not constitute an infringement by the respondent. Similarly, no infringement occurs if the use takes place in a foreign country or market where the territorial jurisdiction of the Indian registration does not extend.
3. Implied Consent: There is no infringement if a person uses the mark on goods or services that were manufactured and marked by the proprietor themselves, and have not been subsequent altered, provided the proprietor has consented to their circulation.
4. Use in Relation to Accessories and Parts: Where a mark is used honestly to indicate that a product functions as a compatible spare part or accessory for a primary trademarked item, it does not constitute infringement, provided such usage is reasonably necessary and does not deceive consumers regarding the true origin of the accessory.
5. Exercise of Concurrent Right: The use of a trademark by one of two or more registered concurrent proprietors in the exercise of their valid statutory right does not constitute infringement against the other.
While unregistered marks are protected through common law actions for passing off, registered trademark proprietors can deploy powerful civil, criminal, and administrative remedies.
Under Section 134, a suit for trademark infringement or passing off must be instituted in a court not inferior to a District Court holding competent jurisdiction. The suit can be filed before the District Court within whose territorial limits the plaintiff actually or voluntarily resides, carries on business, or personally works for financial gain.
In an infringement or passing-off action, the court can grant a comprehensive set of reliefs, including injunctions, damages or an account of profits, and delivery-up of all infringing materials for destruction:
An injunction is a judicial process whereby a party is ordered:
(a) to refrain from doing a particular act, or
(b) to perform a specific act. It restrains the commission or continuance of a wrongful omission. If it restrains an act, it is a prohibitory injunction; if it commands performance, it is mandatory. Injunctions provide preventive relief, operating on the maxim "prevention is better than cure". Courts grant this specific relief when financial compensation would be inadequate or futile. It is awarded under the court's discretion according to the Code of Civil Procedure, 1908, and is divided into two types:
(a) Temporary or Interim Injunction: An order that restrains the defendant during the pendency of the litigation until a further specified time or order of the court. It can be granted at any stage of the suit to instantly halt ongoing infringement.
(b) Permanent Injunction: A final decree granted at the conclusion of the trial based on the merits of the suit. It perpetually restrains the defendant from committing any further acts of infringement for the lifetime of the mark. Permanent injunctions are governed by Section 38 of the Specific Relief Act, 1963.
In Intel Corporation v. Dinakaran Nair & Anr., CS(COMM) 1032/2018,
The plaintiff, the globally renowned Intel company, filed a suit protecting its mark "INTEL" against the defendant's use of the mark "ARTINTEL". The Delhi High Court observed that the defendant's deceptive practice was explicitly designed to mislead consumers into believing its products originated from or were connected to the famous Intel brand, thereby granting injunctive relief.
Ex-Parte and Interlocutory Orders (Section 135(2)): The court can issue ex-parte interim orders without prior warning to the defendant for:
(a) the discovery of documents,
(b) the preservation of infringing goods, labels, or evidence, and
(c) restraining the defendant from disposing of or dealing with their assets in a manner that would defeat the plaintiff's ability to recover final costs and damages. This provision incorporates the established English principles of the Anton Piller Order (a search and seizure order executed without prior warning to prevent the destruction of evidence, named after Anton Piller KG v. Manufacturing Processes Ltd.) and the Mareva Injunction (an asset-freezing order). Proprietors must act swiftly, as unreasonable delays, laches, acquiescence, or the suppression of material facts will defeat the plaintiff's right to secure an injunction.
The plaintiff can elect between claiming actual financial damages or seeking an account of profits. Damages are calculated based on evidence proving the actual commercial loss suffered by the plaintiff. An account of profits requires the defendant to surrender the net profits they earned through their unauthorized use of the mark. The court can also order the delivery-up and destruction or erasure of all infringing labels and packaging.
The Trade Marks Act, 1999, provides criminal punishments for offences involving the falsification of trademarks. Criminal prosecutions can be initiated parallel to and independent of a civil suit. The statutory penalties are categorized as follows:
1. Falsifying and Falsely Applying a Trade Mark (Section 102): Subject to Section 103, the offence carries a mandatory minimum term of imprisonment of six months which may extend up to three years, along with a fine of not less than fifty thousand rupees which may extend to two lakh rupees.
2. Selling Goods or Services with a False Mark (Section 104): Selling or exposing goods carrying a false mark attracts an identical penalty of six months to three years of imprisonment, and a fine ranging from fifty thousand to two lakh rupees.
3. Removing Piece Goods Contrary to Section 81 (Section 106): Failing to properly stamp pieces of cotton yarn or thread results in the forfeiture of the goods and a fine up to one thousand rupees.
4. Falsely Representing a Mark as Registered (Section 107): Falsely claiming an unregistered mark is registered carries a penalty of imprisonment up to three years, or a fine, or both.
5. Improperly Describing a Place of Business (Section 108): Falsely implying a shop or business is connected to the official Trade Marks Office carries a penalty of imprisonment up to two years, or a fine, or both.
6. Falsification of Entries in the Register (Section 109): Making fraudulent entries in the official register carries a penalty of imprisonment up to two years, or a fine, or both.
Recidivism Penalty: If a person is convicted for a second or subsequent offence under Sections 103 or 104, the mandatory minimum punishment increases to one year of imprisonment, and the minimum fine increases to one lakh rupees. The government can also order the outright forfeiture of all seized goods. Under Section 114, the principle of vicarious liability applies to corporate crimes; in the event of an offence committed by a company, the corporate entity itself as well as every individual director or manager in charge of and responsible for the conduct of its business at the time of the crime shall be deemed guilty and punished accordingly.
The Act vests the administrative authorities, primarily the Registrar, with powers to regulate the marketplace and prevent infringement:
1. The systematic classification of goods and services for registration under Section 7.
2. The publication of an alphabetical index for classification under Section 8.
3. The power to grant, condition, or refuse registrations under Sections 9 to 16.
4. Correcting, rectifying, and amending the register under Section 22 and Chapter VII.
5. Managing the renewal, removal, and restoration of marks under Section 25.
6. Regulating the assignability and transmissibility of registered marks under Section 38.
7. Enforcing restrictions on assignments and transmission updates under Section 45.
The administrative and quasi-judicial enforcement of the Act is managed through two key functionaries: the Registrar and the Appellate Board.
The Central Government appoints the Controller General of Patents, Designs, and Trade Marks to function as the official Registrar of Trade Marks under Section 3. The government can also appoint other auxiliary officers to discharge specific duties under the superintendence and direction of the Registrar.
i. Full Powers of a Civil Court: The Registrar is vested with the full powers of a civil court for the purpose of receiving evidence on affidavit, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents, and issuing formal commissions for the examination of witnesses.
ii. Orders as to Costs: The Registrar can make reasonable orders regarding litigation costs, and these orders are directly executable as a formal decree of a civil court.
iii. Review Authority: The Registrar has the statutory power to formally review their own administrative decisions.
The core functions include managing the classification of goods under Section 7, processing and deciding applications under Sections 8 to 16, and maintaining or rectifying the register under Section 22.
Note: While the text references the Intellectual Property Appellate Board (IPAB), it is historically accurate to note that modern Indian practice has transitioned these appellate functions directly to the High Courts. Based on the statutory structure provided:
The Appellate Board consists of a Chairman, a Vice-Chairman, and a designated number of judicial and technical members appointed by the Central Government. Its authority is exercised through functional benches. The benches sit at Ahmedabad, Chennai, Delhi, Mumbai, and Kolkata, with each bench comprising one Judicial Member and one Technical Member under Section 84.
The Chairman manages the judicial administration of the board, including discharging duties on a bench, transferring members between benches, authorizing cross-bench duties, hearing points of dissent when two members differ, and deciding whether a matter falls within the purview of a specific bench. The decision of the Chairman remains final, and members hold office for a five-year term or until they reach the retirement age of 65 years.
The Board holds the same powers as a civil court under the Code of Civil Procedure, 1908, regarding receiving evidence, issuing commissions for witness examination, and requisitioning public records. However, the Board is not bound by the technicalities of the Code of Civil Procedure; it is guided by the principles of natural justice and retains the power to regulate its own procedure, including fixing the times and places of its hearings.
In modern trade, services command immense national and international economic value. Just like physical goods, services are represented using unique visual markings. A service mark functions identically to a trademark, but it identifies and distinguishes the source of an intangible service rather than a physical product. Examples include marks used in banking, communication, education, financing, insurance, boarding, lodging, entertainment, transport, and tourism. Service marks are fully recognized and protected under the modern Trade Marks Act, 1999.
According to Section 2(g), a "collective mark" means a trademark that distinguishes the goods or services of members of an association of persons (which is the proprietor of the mark and not a partnership firm) from those of others. While a standard trademark belongs to an individual enterprise, a collective mark belongs to an organization and is used by its members to identify themselves with a specific level of quality, accuracy, or geographical origin set by the association.
Examples include the "CA" mark used exclusively by members of the Institute of Chartered Accountants, the "CPA" mark used by the Society of Certified Public Accountants, and overarching corporate organization marks like "TATA" or "Reliance" when applied across all member entities. Applications for collective marks must be accompanied by the association's formal usage regulations. The mark will be refused if it is likely to deceive the public, and it can be removed for non-compliance like any regular mark.
Under Sections 69 to 78, a "certification trade mark" is a mark capable of distinguishing goods or services that are certified by the proprietor of the mark in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristics, from goods or services not so certified. It acts as a guarantee that a product complies with specific standards.
The standards are set exclusively by the owner of the certification mark, who cannot deny its use to any manufacturer who successfully meets and maintains those characteristics. Common examples include "Agmark" for agricultural products and "Hallmark" for gold jewelry.
The Distinction: While a collective mark limits its use to members of an association, a certification mark can be used by anyone who meets the quality standards, regardless of membership. However, their functions overlap when an association limits its collective mark to a specific geographical region, matching the origin-guarantee of a certification mark. The rights of a certification mark holder are subject to the identical exceptions that govern regular trademarks.
Section 2(zg) defines a "well-known trade mark" as a mark which has become so well-known to a substantial segment of the public using such goods or services that its unauthorized use in relation to other completely unrelated goods or services would likely be taken as indicating a trade connection with the original proprietor. Famous examples include Reliance, Bata, TATA, Jio, Patanjali, and Parle-G.
In Enfield India Ltd. v. Deepak Engineering Works, 1997 (17) PTC 461 (Del),
An applicant attempted to register the trademark "Bullet" for a line of diesel oil engines. Enfield India Ltd., the famous manufacturer of "BULLET" motorcycles, opposed the registration, arguing the applicant was trying to free-ride on its well-known brand reputation. The Appellate Board held that a third party cannot be permitted to take unfair advantage of a highly reputed, well-known mark like BULLET. To protect these marks, a well-known trademark registered in one specific class will be blocked from being registered by others even in completely non-competing classes of goods or services, as established in Sony Kabushiki Kaisha v. Mahalaxmi Textile Mills, 2009 (41) PTC 170 (IPAB), where the famous electronic mark "SONY" was protected against unauthorized use on textile products.
With the rise of e-commerce, commercial activities are routinely carried out using unique web addresses known as domain names. A domain name functions effectively as an online trademark. It acts like a business address that enables consumers to locate an enterprise on the internet, meaning no two domain names can be identical.
Computers use numeric Internet Protocol (IP) addresses to communicate, which are highly difficult for humans to remember; the domain name system emerged to replace these numbers with simple, memorable words or acronyms separated by dots. Registering a domain name provides an enterprise with a unique commercial identity in the electronic marketplace, and given its immense value, domain names receive full protection under the Trade Marks Act, 1999.
The Trade Marks Act, 1999, protects not only registered trademarks but also unregistered marks through the common law remedy of passing off. Because the statutory remedy for infringement under the Act is more stringent and easier to prove, registered proprietors usually rely on infringement actions rather than passing off.
Section 27(2) explicitly provides that nothing in the Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods or services of another person, or the remedies in respect thereof. This common law remedy existed long before statutory trademark acts were drafted and was preserved to ensure that unregistered traders can defend their business reputation against unfair competition.
The foundation of a passing-off action is misrepresentation. It blocks an unscrupulous person from passing off their own goods or services as those of another. The object is to protect the goodwill and commercial reputation of a business from unauthorized encroachment. As established in the classic English case of Erven Warnink v. Townend, the plaintiff in a passing-off action must successfully satisfy the "Classical Trinity" tests by proving:
i. The defendant made a misrepresentation in the course of trade to prospective or ultimate customers.
ii. The misrepresentation was calculated to injure the plaintiff’s business or commercial goodwill.
iii. The plaintiff has suffered or is highly likely to suffer actual damage due to the defendant's act.
In Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65
The plaintiff ran a long-standing photo studio under the name "MUKTI JIVAN COLOUR LAB". The defendant opened a studio named "Gokul Studio" but later changed it to "MUKTI JIVAN COLOUR LABS STUDIO" with the clear intention of passing off its services under the plaintiff's established name. The Supreme Court of India granted an injunction, ruling that the unauthorized name change created a high likelihood of public confusion and caused clear injury to the plaintiff's business.
An infringer can pass off their goods or services through several deceptive means, including:
Under Section 135, the judicial relief granted for a passing-off action includes interim or permanent injunctions, and the option to claim either actual financial damages or an account of profits, alongside orders for the delivery-up and destruction of all deceptive labels. Consequently, the remedies available for passing off are identical to those available for registered trademark infringement.
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