Trade mark law in India compared with the UK, the US and the EU - Law of Trademarks

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1. International history
2. How rights arise: use or registration
3. What can be a mark
4. Examination: absolute and relative grounds
5. Infringement and the confusion test
6. Marks with a reputation: dilution
7. Use, non-use and term
8. Bad faith
9. Comparative table
How this is examined

Cases checked to exist. Read the judgment before quoting a holding.

Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.

The examinable core. The syllabus asks for the “basic principles underlying the trade mark law in India compared with that of U.K., U.S. and E.U.” and for the international history of trade mark law. Do not describe four systems one after another. Pick six principles, and for each say what India does and how the others differ. The table in section 9 is the frame.

1. International history

England. The common law protected traders through the action for deceit and then passing off. In Millington v. Fox (1838) Lord Cottenham granted an injunction although the defendant had not acted fraudulently, treating the mark as something like property. The Merchandise Marks Act, 1862 made fraudulent marking an offence, and the Trade Marks Registration Act, 1875 opened the first register in 1876. The Trade Marks Act, 1938 introduced registered users and Parts A and B of the register, the model for India's 1940 and 1958 Acts. The Trade Marks Act, 1994 replaced it to implement the EU Directive, and still governs the UK after Brexit.
United States. The first federal statute (1870) was struck down in the Trade-Mark Cases (1879) because the patent and copyright clause did not cover marks; later statutes relied on the commerce power. The Lanham Act, 1946 is the present law, amended by the Trademark Law Revision Act, 1988 (intent-to-use applications), the Federal Trademark Dilution Act, 1995 and the Trademark Dilution Revision Act, 2006.
European Union. The First Council Directive 89/104/EEC (1988) harmonised national laws, and Regulation 40/94 (1993) created the Community trade mark, a single right for the whole Community, administered from 1996 at Alicante. The 2015 reform package (Directive 2015/2436 and the amending Regulation, now codified as Regulation 2017/1001) renamed the right the EU trade mark and the office the EUIPO.
India followed the English path: passing off, the Merchandise Marks Act, 1889, the Trade Marks Act, 1940, the Trade and Merchandise Marks Act, 1958 and the Trade Marks Act, 1999 (see the first note in this unit).

2. How rights arise: use or registration

US. Rights arise from use in commerce. Registration on the Principal Register gives nationwide constructive notice and presumptions, but an unregistered mark is protected against false designation of origin under section 43(a) of the Lanham Act. An intent-to-use applicant must prove use before registration issues.

EU and UK. Rights arise from registration, available on intended use. The UK protects unregistered marks only through passing off; EU law leaves unregistered rights to member states.

India is a hybrid. Registration is available for a mark “used or proposed to be used” (s.18(1)), but the prior user is protected against a later registered proprietor (s.34) and passing off is expressly preserved (s.27(2)). In S. Syed Mohideen v. P. Sulochana Bai (Supreme Court, 2016) the Court held that the passing off right of a prior user prevails even against a registered proprietor, so India gives more weight to use than the UK or the EU does.

3. What can be a mark

The EU dropped the requirement of graphical representation in 2017: a sign need only be represented in a manner that allows the register to show clearly and precisely what is protected, restating the Sieckmann criteria (CJEU, 2002): clear, precise, self-contained, easily accessible, intelligible, durable and objective. The US has never required graphical representation and registers colours alone (Qualitex Co. v. Jacobson Products, 1995), sounds and scents. India still requires a mark to be capable of graphical representation (s.2(1)(zb)), though the 2017 Rules allow sound marks to be filed as MP3 files with musical notation. Non-conventional marks are therefore narrower in India than in the other three.

4. Examination: absolute and relative grounds

The USPTO examines both absolute grounds and likelihood of confusion with earlier registrations (Lanham Act §2(d)) of its own motion. The EUIPO examines only absolute grounds; relative grounds are raised by opposition. The UK IPO since 2007 searches and notifies earlier owners but does not refuse on relative grounds of its own motion. India follows the US model: the Registrar searches and may refuse under section 11(1), though refusals based on reputation (s.11(2)) need an opposition by the earlier owner (s.11(5)). The result is heavier examination and slower registration in India, but fewer conflicting marks on the register.

5. Infringement and the confusion test

US: multi-factor tests set by each circuit, such as the Polaroid factors (Second Circuit, 1961) and the Sleekcraft factors (Ninth Circuit, 1979): strength of the mark, similarity, proximity of goods, actual confusion, marketing channels, purchaser care, intent.
EU: the “global appreciation” of the likelihood of confusion from the view of the average consumer, who is reasonably well informed and reasonably observant and circumspect (Sabel v. Puma, 1997; Canon, 1998; Lloyd Schuhfabrik, 1999).
India: the purchaser of average intelligence and imperfect recollection, the overall impression, and for medicines a stricter standard (Amritdhara Pharmacy v. Satya Deo Gupta, 1962 INSC 170; Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 INSC 173). The Indian consumer is treated as less careful than the EU's average consumer, which widens protection.

6. Marks with a reputation: dilution

The US protects “famous” marks, widely recognised by the general consuming public, against dilution by blurring or tarnishment; since 2006 likelihood of dilution suffices, reversing Moseley v. V Secret Catalogue (2003), which had demanded actual dilution. The EU protects marks with a reputation against use without due cause that takes unfair advantage of, or is detrimental to, their distinctive character or repute; the CJEU in Intel v. CPM (2008) required evidence of a change in the economic behaviour of the average consumer for detriment, and in L'Oréal v. Bellure (2009) treated free-riding as unfair advantage. India adopted the EU formula in sections 29(4) and 11(2). In Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, 2022 INSC 70, the Supreme Court held that the High Court erred in importing the reputation and unfair-advantage conditions of section 29(4) into a case of an identical mark used for identical services under section 29(2); those conditions apply only where the goods or services are dissimilar, and in the identical case confusion is presumed (s.29(3)).

7. Use, non-use and term

All four systems give renewable ten-year terms. The US requires a declaration of continued use between the fifth and sixth years after registration and at each renewal, and treats three years' non-use as prima facie abandonment. The EU and UK allow revocation after five years of non-use. India allows removal after five years and three months of non-use (s.47), which is the same in substance as the EU.

8. Bad faith

Bad faith is an absolute ground in the EU and the UK; in Sky v. SkyKick (CJEU, 2020; UK Supreme Court, 2024) a registration for goods the applicant never intended to use was held capable of being in bad faith. India refuses bad-faith applications under section 11(10)(ii), which requires the Registrar to consider bad faith where a well-known mark is involved, and through section 18(1), since the applicant must claim to be the proprietor. The US has no general bad-faith bar but treats fraud on the USPTO as a ground of cancellation.

9. Comparative table

Principle	India	UK	US	EU
Basis of right	Registration, with strong prior-user protection	Registration; passing off	Use	Registration
Graphical representation	Required	Not required since 2019	Not required	Not required since 2017
Relative grounds ex officio	Yes, partly	No (notification only)	Yes	No
Confusion standard	Imperfect recollection	Average consumer	Multi-factor tests	Average consumer, global appreciation
Dilution	Reputation in India (s.29(4))	Reputation in the UK	Fame among the general public	Reputation in the EU
Non-use	5 years and 3 months	5 years	3 years presumption	5 years
Appeals	High Court (since 2021)	Appointed Person or High Court	TTAB, then courts	Boards of Appeal, General Court, CJEU

Assessment. India's 1999 Act copied the EU's text on registrability, infringement and reputation, but kept the common law's respect for prior use and an examination system closer to the US. Indian courts read the EU-derived provisions through older Indian precedent on deceptive similarity, so the outcome is often more protective of established marks than EU law would be. An LL.M. answer should say where India has borrowed and where it has kept its own path.

How this is examined

A 16-mark question on the basic principles of Indian trade mark law compared with the UK, US and EU. Begin with a paragraph of history, take the principles in sections 2 to 8, and close with the table and the assessment. The salient features of the 1999 Act, if also asked, come from the first note in this unit.