Trade Marks: Concept and Procedure for Registration

1. Meaning and functions

Section 2(1)(zb) of the Trade Marks Act, 1999 defines a trade mark as a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and includes the shape of goods, their packaging and combinations of colours. “Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours (s.2(1)(m)). Sound marks have been registered; the Trade Marks Rules, 2017 provide for them in MP3 format.

A mark performs four functions: it identifies origin, signals consistent quality, serves as a vehicle for advertising, and protects the owner's goodwill. Law protects the first two mainly; the advertising function underpins protection of well-known marks against dilution.

The 1999 Act replaced the Trade and Merchandise Marks Act, 1958 to meet TRIPS. It introduced service marks, collective marks, certification marks under a fuller scheme, protection of well-known marks, registration of shapes and colour combinations, and a single application for multiple classes.

2. Absolute grounds of refusal (s.9)

A mark shall not be registered if it is devoid of distinctive character; consists exclusively of indications of kind, quality, quantity, intended purpose, values, geographical origin or time of production (descriptive marks); or consists exclusively of marks that have become customary in the current language or established practice of the trade (generic marks). The proviso saves a mark that has acquired distinctiveness through use before the date of application. A mark is also refused if it is likely to deceive or cause confusion, hurts religious susceptibilities, contains scandalous or obscene matter, or is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. Shapes resulting from the nature of the goods, necessary to obtain a technical result, or giving substantial value to the goods are excluded (s.9(3)).

3. Relative grounds of refusal (s.11)

A mark is refused if, because of its identity or similarity with an earlier mark and the identity or similarity of the goods or services, there is a likelihood of confusion on the part of the public, including likelihood of association. A mark identical or similar to an earlier well-known mark is refused even for dissimilar goods where use would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark (s.11(2)). The test of deceptive similarity was set in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 INSC 173, which lists the factors (nature of the marks, degree of similarity, nature of goods, class of purchasers, mode of purchase) and calls for a stricter standard for medicinal products because confusion there can harm health. In Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd., 2018 INSC 642, the Supreme Court allowed a restaurant chain to register NANDHINI for restaurant goods although the Federation used NANDINI for milk, holding that registration in the same class does not bar a mark for different goods where confusion is unlikely.

4. The procedure, stage by stage

1. Search. Not compulsory, but the applicant should search the register for conflicting marks in the relevant classes.
2. Application (s.18). Any person claiming to be the proprietor of a mark used or proposed to be used may apply in writing to the Registrar, in the prescribed form, at the Trade Marks Registry office within whose territorial limits the principal place of business is situated (Mumbai, Delhi, Kolkata, Chennai, Ahmedabad). A single application may cover several classes under the Nice classification. A user date or “proposed to be used” must be stated.
3. Examination. The Registrar examines the application on absolute and relative grounds and issues an examination report.
4. Response and hearing. The applicant replies to objections; if they are not withdrawn, a hearing is given. The Registrar may refuse, or accept absolutely or subject to conditions, amendments or limitations (s.18(4)). Reasons for refusal must be recorded in writing.
5. Advertisement (s.20). On acceptance, the application is advertised in the Trade Marks Journal. The Registrar may advertise before acceptance in exceptional cases, such as where distinctiveness by use is claimed.
6. Opposition (s.21). Any person may, within four months of the advertisement, give notice of opposition. The applicant must file a counter-statement within two months, failing which the application is treated as abandoned. Both sides then file evidence by affidavit, and the Registrar hears and decides. The 2010 amendment fixed the opposition period at a flat four months.
7. Registration (s.23). If unopposed, or if the opposition fails, the Registrar registers the mark, which is registered as of the date of application. A certificate of registration is issued under the seal of the Registry.
8. Term and renewal (s.25). Registration lasts ten years and may be renewed indefinitely for ten years at a time. A mark not renewed is removed, but may be restored within a year on payment of fees.

After registration, a mark may be removed for non-use (s.47) or rectified on grounds such as wrong entry (s.57). Appeals from the Registrar now lie to the High Court.

5. Rights of the registered proprietor

Registration gives the exclusive right to use the mark for the registered goods or services and to obtain relief for infringement (s.28). Infringement (s.29) covers use of identical or similar marks for identical or similar goods causing confusion, and, for marks with a reputation in India, use for dissimilar goods that takes unfair advantage or causes detriment. Registration is prima facie evidence of validity and, after seven years, conclusive subject to listed exceptions (s.31, s.32). An unregistered mark is protected only by passing off.

6. International registration

India acceded to the Madrid Protocol in 2013, and Chapter IVA of the Act (ss.36A to 36G) provides for it. An Indian applicant files one international application through the Indian office, designating other Protocol members; each designated office may refuse within its time limit, otherwise protection follows. A foreign holder may designate India. For five years the international registration depends on the home (basic) mark; if the basic mark falls, the international registration falls too (“central attack”), but it may be converted into national applications.

7. Well-known marks

Section 2(1)(zg) defines a well-known mark as one that has become so to the substantial segment of the public using the goods or receiving the services that use of it on other goods would be taken as indicating a connection with the owner. Section 11(6) lists factors (knowledge in the relevant section of the public, duration and extent of use and promotion, registrations, record of enforcement). Since the Trade Marks Rules, 2017 (Rule 124), an owner may ask the Registrar to determine that a mark is well known. The classic Indian case is Daimler Benz AG v. Hybo Hindustan (Delhi High Court, 1994), where the court restrained use of “Benz” for undergarments.

How this is examined

As a short note, write sections 4 and 6 (the stages and Madrid) with a line on ss.9 and 11. As an essay on registration of trade marks, add the definition, both sets of grounds with Cadila and Nandhini, rights on registration, and well-known marks.