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General

Section 18 of Trade Marks Act, 1999

October 9, 2024

This article is written by Prashant Prasad. The present article thoroughly examines Section 18 of the Trade Marks Act, 1999 along with the landmark cases associated with it. Furthermore, this article explores the eligibility to register such a trademark and the different kinds of trademarks that can be registered. Additionally, the article underscores the step-by-step process through which the trademark can be registered and when registration of the trademark can be refused.

Table of Contents

Introduction

The term “trademark” is made up of two words i.e. ‘trade’ and ‘mark’. Therefore, it can be said that a trademark is a mark that represents trade. When a person sees any trademark then, on the basis of that trademark one can easily infer about the object of the business. The term “trademark” has been defined under Section 2(zb) of the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’). It states that the term trademark means a mark that is capable of graphically representing “the identity of the brand” and one that has the potential to distinguish the goods or services of one person from that of another person. It has been further described under the definition that the trademark may include the shape of goods, their packaging, and a combination of colours.

The main purpose of inculcating the trademark with any kind of work is to provide the customer with an opportunity to recognize a particular business and distinguish it from other competitors that are present. Such a trademark prevents unauthorised use of an individual’s product or service without their prior permission. However, it is pertinent to note that to avail of the benefits of the trademark in any product, service, business, work, etc. one needs to register their trademark under the Act.

Chapter III of the Act discusses the procedure and duration of registration. In order to apply for the registration of a trademark a person needs to adhere to the provisions that are mentioned under Section 18 of the Act. Such a registration of a trademark gives an exclusive right to the owner and it performs as a shield by preventing anyone from using a similar trademark. This article tries to bring out an exhaustive analysis of Section 18 of the Act, that discusses the application for registration.

Meaning of trademark and its registration

The trademarks are the unique identifiers that are used to represent some kind of good or service, which is being provided by an individual, organisation, or company. These trademarks are of paramount importance as they help the customer to distinguish and recognise a particular brand from the others that are available in the marketplace.

Trademarks are considered as an intellectual property and are protected from infringement. The trademark and the rights related to it can be protected by registering that trademark under the Act. Registering a trademark is of crucial importance as it prevents others from copying an already registered mark by way of any misrepresentation. The trademark once registered remains valid for the period of 10 years, and after the expiry of the said period the trademark can be renewed again for another 10 years. The process of renewing a trademark can be done indefinitely as long as a person/organisation/company keeps renewing the trademark and will remain protected under the Act.

The main characteristics of a trademark are as follows –

The main purpose of a trademark is that it serves as a source of identification regarding any goods or services. When a customer observes any trademark they tend to associate it with a particular company or organisation that either provides some service or goods. As a result, brand recognition and reputation are established.

For e.g. when people see the logo of McDonald’s, it quickly brings into their mind the famous burgers, and fries that McDonald’s serves. As a result, it could be said that with due time McDonald’s has built a strong recognition and reputation with customers across the globe.

The registration of a trademark provides legal protection to the owner. It gives a right to the owner to take legal action if someone attempts to use a similar mark in the market which might create confusion.
A registered trademark deters the unauthorised use of a trademark by way of fraud or misrepresentation. Registered trademark protects the integrity of a brand, by ensuring that the customer should receive the genuine product or services.

Clause-wise explanation of Section 18 of Trade Marks Act, 1999

Section 18 of the Act provides the process on the basis of which a trademark can be registered. Therefore, in order to apply for the registration of a trademark, the applicant must meet the requirements that are outlined in this Section.

Section 18(1) specifies that any person who claims to be the owner of a trademark, whether it is currently in use or is proposed to be used by them. Then, that person may apply in writing to the registrar in a specified format for the registration of a trademark.

It has been described under Section 18(2) of the Act, that a single application may be given for the registration of trademarks regarding the different classes of goods and services. The classes of goods and services refer to the specific categories under which the goods and services are divided for the purpose of trademark registration, there are a total of 45 trademark classes and each class consists of goods and services of a particular nature. However, the fee that is payable for such registration, shall be in respect of each such class of goods or services.

Section 18(3) described that the application for the registration of a trademark should be submitted in the office of the Trade Mark Registry within whose territorial limit the office of business of an applicant is located. If there are joint applicants applying for the registration of a trademark, then an application should be filed in the office that covers the area where the main office of the first person named in the application is located. However, if any of the joint applicants do not have a place of business in India then, the application should be submitted at the Trade Mark Registry office that covers the area where the address of service in India is located.

Illustration – If there are two companies named “Company A” and “Company B” located in Delhi and Mumbai respectively, and they jointly want to apply for the registration of a trademark. Then the application for the registration of a trademark will be filed at the main office of the first person i.e. in Delhi.

However, if there is any other company named “Company C” that didn’t have a place of business in India but had an address for service in Chennai, then the application should be filed in Chennai.

Section 18(4) of the Act states that the discretion is of the registrar, and he may refuse or accept the application absolutely. Moreover, the registrar may subject the application to amendments, modifications, conditions, or limitations, if any, as he may think fit.

Section 18(5) of the Act mentions that if the application for the registration of a trademark has been refused or conditionally accepted by the registrar, then under that condition, the registrar shall record in writing the grounds for refusal or conditional acceptance, and the material which is used by him for arriving at his decision.

Different types of trademarks that can be registered

There are different types of trademarks that can be registered such as product marks, service marks, collective marks, certification marks, shape marks, pattern marks, sound marks, etc. Although there are various types of trademarks, they render similar objects i.e. to enable the consumers to identify the goods or services that are being originated from a particular manufacturer or service provider. The registration of such trademarks is regulated by the Trade Marks Act, 1999 which gives plenty of protection and legal rights to the holder of the trademark. Therefore, the various types of trademarks that can be registered in India are as follows –

Product mark

The mark that is linked to the product or goods is termed a product mark, but such a mark does not include services. The product mark can be used to identify the source of the product and differentiate a particular product manufactured and sold by a company/person from other products. For the registration of product mark, an application can be filed under the trademark class of 1-34 as it represents goods. Once a product or goods is registered as a product mark then a certificate is issued to the trademark holder and it remains valid for a period of 10 years which can further be renewed after the expiry of the said period.

Illustration- the logo of ‘Apple’ on the different electronic items such as iPhone, MacBook etc. distinguishes the product of Apple from the other manufacturers that are registered under the trademark class of goods.

Service mark

The mark that is linked to a particular service and not to a product or good is considered to be a service mark. The main purpose of a service mark is to recognize the source of assistance and to differentiate the services offered by an individual/company/organisation from the services that are offered by the other person/company/organisation. For the registration of a service mark, an application can be filed under class 35-45 as it represents services.

For e.g. – the “FedEx” logo registered under the trademark class of services is used for courier service.

Collective mark

A mark that is used by a group of individuals for collectively protecting goods or services is considered to be a collective mark. The collective mark is used to inform the public at large about the distinctive idea of the product or service. The trademark holder can be an association, a public institution, or a company. In collective marks, a standard of products or services is fixed by the regulatory who owns the mark, and the others who are associated with the regulatory need to adhere to a certain standard while using that mark in the course of business.

For e.g. – the logo of ‘CA’ that represents the Institute of Chartered Accountants of India which is the apex body of Chartered Accountants in India, and the Confederation of Indian Industries.

Certification mark

A sign that depicts the origin, quality, material, and other specific details of the product which is issued by the proprietor is known as a certification mark. The primary purpose of certification marks is to bring out the standard of products and guarantee that product to the customers. A certification mark can also be used to uplift the standard of a product by showing to the customers that the product has undergone the standard of test in order to ensure the quality of the product. The certification mark on any product gives an assurance to the customer that the product has gone through a particular process to safeguard the anticipated quality of the product. The certification mark can be seen on electrical goods, food products, toys, cosmetics, etc.

For e.g. – the ‘AGMARK’ on agricultural products.

Shape mark

A mark that is used to depict the shape of the goods, their packaging, etc. is termed to be the shape mark. Shape marks are exclusively used to protect the shape of the product so that the customer finds that product relatable and can prefer that product over others. The shape of a particular product can be registered when it is unique and is different from the others.

For e.g. – the shape of a Coca-Cola bottle is distinctive and unique from the bottle of other soft drinks and hence it can be registered.

Pattern mark

A pattern mark can be obtained on those products that have a specifically designed pattern on them and that serve as distinguishing factors from the other products. The pattern that fails to stand out as a unique or remarkable pattern is rejected from the registration since it does not serve any purpose. Therefore, for the registration of pattern marks on any product there must be evidence of uniqueness.

For e.g. – the iconic Louis Vuitton checkerboard pattern.

Sound mark

A sound mark is a mark that is used to uniquely identify the source or service through a specific sound. To register the sound mark, the sound should be as such, so that the people can easily identify the service or product that the sound represents.

For e.g. – the tune of IPL, Looney Tunes theme by Time Warner Entertainment.

Eligibility for trademark registration

The entire process of trademark registration is a bit complex and it requires the understanding of various regulations and requirements for a successful trademark registration process. There are certain eligibility requirements for the registration of a trademark and the person falling into those categories can register the trademark.

Entities that are eligible for trademark registration in India

An individual

An individual person may submit an application for the registration of a trademark either for any symbol or word that they intend to use without engaging in any commercial activities.

Joint owners

Two or more persons who are joint owners of the company may jointly apply for the registration of a trademark. When the application is filed for the registration of a trademark by the joint owner, then the application must contain the names of both owners.

Proprietorship firm

An application for the registration of a trademark may be submitted by the proprietorship firm however, it is pertinent to note that the application may be submitted in the name of the owner but not in the name of the business or proprietorship. The name of the business and proprietorship name given in the application will be considered independently.

Partnership firm

An application for the registration of a trademark may be submitted by the partnership firm, however, a partnership business constituting a maximum of 10 must mention all the partner’s names in the application when filing an application for the registration of a trademark. If among the partners there is any minor member then on behalf of that member the guardian must be present.

Limited liability partnership

In case the application for the registration of a trademark is being filed by the limited liability partnership, then the application should be filed in the name of the limited partnership. Every partner in the LLP has their own unique identity and therefore the partners cannot be the applicants during the registration of a trademark.

Indian company

Any Indian company can apply for the registration of a trademark and it is immaterial whether the company is private limited, limited, or in any other form. The Indian company applying for the registration of a trademark must submit the application in the name of the business. Every company’s business has a unique and distinctive identity and therefore, the director of the company cannot be the applicant for the registration of a trademark.

Foreign company

Foreign companies are eligible for the registration of their trademark, however whenever a foreign incorporated company files an application for the registration of a trademark, it must be done under the name registered abroad. Moreover, while registering, it is crucial to mention the kind of registration, the nation it came from, and the law that governs such registration.

Trust or Society

The application for the registration of a trademark can be filed either by the trust or society. The controlling trustee, chairperson, or secretary of a trust or a society must be identified and an application for a trademark is submitted on their behalf.

Documents required by the entities for trademark registration

Certain documents are essential for the registration of a trademark, however, different entities are required to submit different documents for the registration of a trademark. In addition to the documents, the entity needs to submit the registration fee which varies from Rs. 4,500 to Rs. 9,500.

The cheapest trademark registration fee is Rs. 4,500 which is available to small businesses, startups, proprietors, and individuals. The applicant in order to be categorised as a small business must present a Udyog Aadhar registration. The various documents that need to be submitted by the different entities for the registration of the trademark are as follows –

Individual and sole proprietorship

An individual whether of an Indian or foreign nation can register a trademark in India. For the registration of a trademark there is no requirement for the formation of any legal or business entity and an individual or a sole owner does have the right to apply for the registration of a trademark. The documents that are required for the registration of a trademark by an individual are the same as those of a sole proprietorship, which are as follows –

PAN Card of an individual or sole proprietor.
Copy of the logo (preferably in black & white), however in case there is no logo then an application can be filed for the registration of word.
Description of trademark i.e. about goods or services.
Signed Form-48 (form-48 is an authorisation from the applicant to the trademark attorney for filing the trademark on behalf of the applicant).
Other important details of the applicant such as a mobile no., email ID, GST (if any), MSME (if any), etc.

Partnership firm/ Limited Liability Partnership/Company

The documents that are required to be submitted for the registration of a trademark on behalf of the partnership firm are –

Identity proof such as PAN Card, Aadhar card, etc.
If the partnership firm has obtained any GST in its name then the details of it must be submitted.
Copy of logo (if any)
Signed Form-48
A partnership deed or incorporation certificate.
Other important details of the applicant such as a mobile no., email ID, GST (if any), MSME (if any), etc.

Other Applicants

All the other applicants including companies that do not have the Udyog Aadhar registration, and are applying for trademark registration, need to submit the following documents –

Copy of logo, however in case there is no logo then an application can be filed for the registration of word.
Signed Form-48.
Incorporation certificate or partnership deed.
Identity proof of signatory
Identity proof of signatory.

Other eligibilities for trademark registration

Apart from the above-mentioned entities that are eligible for the application for the registration of a trademark along with the document that they are required to submit, there are certain key requirements for trademark registration which are as follows –

Distinctiveness – The most important and crucial factor before applying for the registration of a trademark is the distinctiveness of the trademark. The trademark must be capable of distinguishing a particular goods or services from the others that are present in the marketplace. The mark should be as such which is not used commonly and it must not be descriptive in nature.

The Delhi High Court in the case of Living Media India Limited vs Jitender V. Jain And Anr. (2002), ruled that common words or descriptive words cannot be trademarked unless such words have acquired a great reputation and goodwill in the market.

Non-offensive – The trademark should not be offensive, vulgar, contrary to law, or against public order or morality. If a mark is considered to be offensive in nature that is likely to cause offence or is socially unacceptable in accordance with the standard laid down by society then, in that case, the mark is unlikely to be registered.

In the case of Lal Babu Priyadarshi vs. Amrit Pal (2015), it was held by the Hon’ble Supreme Court of India that names of gods and holy books cannot be trademarked, as it might offend the people’s sensibility.

Non-fraudulency – The trademark that is applied for the registration must not create any kind of confusion in the minds of the consumers regarding the nature, quality, or origin of the goods or services. The mark that misleads the consumers by making them believe that the mark has certain characteristics, but originally such mark does not possess any such character is not eligible for registration.

In the case of Boots Company Plc, England And Anr. vs Registrar Of Trade Marks (2002), it was ruled that the trademark should not cause any confusion to the people by containing any false or misleading matter, irrespective of the fact that the applicant has acted in good faith.

Non-descriptiveness – The trademark should not consist of a word or phrase that describes the characteristics, features, or quality of the goods or services. Therefore, the descriptive term that is used to identify the product or service in question cannot be registered as a trademark unless such word or phrase has acquired a distinctiveness through previous use.

In the case of ELGI Ultra Industries Limited vs. The Assistant Registrar of Trade Marks (2008), it was held that the words ‘ultra’ and ‘perfect’ are highly descriptive in nature and hence, it cannot be trademarked.

In the case of Aegon Life Insurance Company Ltd. vs. Aviva Life Insurance Company India Limited (2019), it was ruled by the court that the plaintiff’s mark i.e. ‘iTerm’ was descriptive of the service that was provided by the plaintiff i.e. insurance term.

Not prohibited by the Trademarks Act, 1999 – There are several restrictions imposed by the Trademarks Act, 1999 that prohibit the registration of certain marks such as identical, similar to existing well-known marks, obscene, or any mark that creates confusion in the minds of consumers. Therefore, the marks prohibited under the Act cannot be registered, apart from that the mark that adheres to the above-mentioned eligibility can be registered.

Process of trademark registration

The registration of a trademark is a long process and it involves multiple steps. For the registration of a trademark, an individual or company needs to file a trademark registration application, thereafter the examination of such trademark is done and there is a publication or advertisement of the trademark. Upon the publication or advertisement of a trademark, it is open for the opposition to raise any objection, once the objection is resolved then the further process of registration initiates. The step-by-step process to register a trademark is as follows –

Step 1 Search for the trademark

The applicant must be careful while selecting the trademark as there are already many trademarks in existence. Therefore, it is necessary that once the trademark is selected then it must be publically searched on the database which is available with the Trade Mark Registry, in order to make sure that there is no other trademark that is similar to the trademark which is chosen by the applicant.

The trademark search enables the applicant to get an idea regarding all the available trademarks in the market that are already registered or unregistered. Moreover, the search for a trademark helps the applicant to know whether the chosen trademark has competition or not. Therefore, the first step for the registration of a trademark is the search for a trademark that is of vital importance.

Step 2 File the trademark application

The application for the registration of the trademark can be filed online through the IP India website (https://www.ipindia.gov.in/) or it can be filed physically at the Trade Mark Office depending on the jurisdiction of the trademark. The application of a trademark must be supported with multiple documents along with the complete details of the trademark for which the registration is sought. In case the applicant is claiming the prior use of the trademark, then a user affidavit needs to be filed supporting the usage along with the evidence of prior use of such trademark.

Step 3 Examination of trademark application by the govt. Authority

After the filing of an application for the registration of a trademark, a mandatory examination report is issued by the examiner. The report is prepared after an extensive examination of the application for the registration of a trademark in consonance with the guidelines laid down by the Act. It is not necessary that the examination report will disclose some of the objections that are raised which can be either absolute, relative, or procedural.

The examination report of the application by the trademark authority needs to be issued within the period of 30 days after the application for the registration of a trademark is filed. After receiving a report of the examination of trademark a reply must be filed within the period of 30 days from the date of receipt of such application by asserting the arguments and evidence against any objection that is raised.

Step 4 Post examination

Once the reply is filed by the applicant to the examination report, the examiner i.e. trademark authority may appoint a hearing if the examiner is not satisfied with the reply filed by the applicant or if the objections are not met. After the hearing and the clarification regarding the persistent objection the trademark authority may accept the mark and subsequently forward that application for the publication of the mark and other details in the journal or the trademark authority does have the power to reject the mark if the objection still subsists.

Step 5 Advertisement of trademark

Once the application for the registration of a trademark is accepted, the said mark is advertised and published in the Trade Marks Journal for a period of 4 months. The main purpose behind the publication of trademarks in the journal is to invite the general public to raise any objection against such registration. One can access the Trade Mark Journal on the official registry website which gets updated every Monday of the week.

Step 6 Resistance from the general public

After the advertisement and publication of a trademark in the trademark journal, any aggrieved person can file a notice to oppose such advertisement or publication in the journal. The notice to oppose the trademark has to be filed vide Form TM-O within 4 months of the publication of mark in the trademark journal. In case any objection is raised or is opposed then the due process of law needs to be followed which includes filing of counter-statement application, evidence, as well as hearing in order to get the trademark registered without any objection.

Step 7 Registration of trademark

After the resolution of the objections and the other ambiguities in the application, the final process of the entire process is the registration where the application proceeds to registration. In case there is no objection raised against the trademark during the advertisement or publication of the trademark in the trademark journal for the period of 4 months, then the trademark gets issued within one week after the lapse of the said period. Once the entire process of registration is completed the trademark remains valid for a period of 10 years, after which the trademark needs to be renewed within a prescribed time period.

Refusal of registration of a trademark

The registration of a trademark provides an exclusive right to use the trademark in certain businesses. The registration of a trademark involves filing an application to the Trade Mark Registry, the application is being examined by the registry and the report of examination is sent within 30 days to the applicant. The registry may either refuse it or conditionally accept it.

There are two major grounds on which the registry may refuse the registration of a trademark. Those grounds of refusal are mentioned under Section 9 and Section 11 of the Act.

Absolute grounds for refusal of registration

Section 9 of the Act encompasses various grounds on the basis of which it becomes difficult for a trademark to be registered if such a mark is found to fulfil the conditions laid down under Section 9. Therefore, the various grounds enshrined under Section 9 based on which the trademark can be refused for registration are as follows –

Trademarks that lack uniqueness or distinctiveness.
Trademarks that indicate something or the mark that is used in commerce to define quality, quantity, value, type, purpose, or geographical origin of that goods or services.
Mark or sign that is commonly used in everyday language or trade practices cannot be registered.
Marks that mislead the general public and create confusion should not be registered.
Mark that contains scandalous or obscene content cannot be registered.
Mark comprises any matter that is likely to hurt the religious sentiment of any class or any section of citizens of India.
The use of marks is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Any mark that adds significant value to the goods.
Any mark whose shape adds significant value to the goods.

These are the absolute grounds for refusal of registration of a trademark. These grounds of refusal are related to the benefit of public policy with the intent of the legislature to protect the legitimate interest of the traders as well as the public who are genuine and bona fide users of various marks in respect to the use of goods or services. However, it is pertinent to note that if a mark has acquired a distinctive character over a period of time and has become a well-known mark then in that situation the trademark can’t be refused to be registered, although the applicant needs to prove such a fact.

Relative grounds for refusal of registration

Section 11 of the Act mentions some of the grounds on the basis of which the trademark registration can be refused. This Section mentions that if the mark is found to confuse the general public on account of the fact that the identity of the mark resonates with the already existing mark then the registration won’t be allowed. Therefore, various relative grounds on the basis of which the registration can be denied are as follows –

A trademark that confuses the general public as it is similar to the already existing mark.
A trademark that takes unfair advantages over already existing or similar well-known marks.
Trademarks that could harm the unique identity or reputation of already existing well-known trademarks in India.
If there is a use of a trademark that is not registered but is known in business, the law can stop the usage of such a trademark.
If the usage of a trademark is prevented by the law of copyright.

These are the relative grounds on the basis of which the trademark can be refused to be registered. However, the onus is on the applicant to prove that his trademark does not fall under any of the grounds of refusal, in order to get that trademark registered.

Whether Section 18 is applicable to the ‘well-known mark’

The term “well-known mark” is used in relation to particular goods or services that have become well-known to a substantial section of people. Before the year 2017, the court used to recognise a well-known trademark by a trademark registrar, a list of such well-known trademarks was published on the trademark registry website. However, there was no such procedure based on which the well-known trademark used to get registered. Therefore, it can be said that Section 18 of the Act was not applicable to the well-known mark for the process of registration.

However, the Trademark Rule, 2017 provides a detailed process based on which a well-known mark can be registered. It has been described under the Trademark Rule, 2017 that, for the registration of a well-known trademark an online application must be filed supporting the essential documents and necessary evidence describing the applicant’s right over the well-known mark, for its registration. After the submission of the application, the registrar of trademark determines whether a trademark qualifies as a well-known trademark or not. Finally, on successful examination and satisfaction of the registrar, the trademark gets published in the Trademark Journal and it is open for the general public to raise objections. In case there is no objection, or on the successful resolution of the objection the trademark gets included in the list of well-known trademarks.

Advantages and disadvantages of trademark registration

The registration of a trademark plays a crucial role in safeguarding the identity and reputation of any business or work in India. Apart from the present fundamental purpose of safeguarding the intellectual property rights of trademark owners, the registration of a trademark offers a wide range of advantages that can definitely have a positive impact on the growth and success of Indian business. However, the registration of a trademark comes with certain limitations and disadvantages. It is necessary for a person/ organisation/ company to understand these drawbacks in order to make informed decisions when they are seeking trademark protection for their valuable assets.

Advantages of trademark registration

The various advantages of trademark registration are as follows –

Safeguard Intellectual asset

The registration of a trademark allows an individual/organisation/company to establish their ownership on a particular and distinctive mark that they intend to use for their business. Once a trademark has been registered, an intellectual property right is obtained that grants legal protection and exclusivity in the use of that mark.

Exclusive authority over the use of trademark

Section 28 of the Act discusses that on successful completion of the process of registration, an exclusive right is created to use the trademark with respect to the goods and services for which the trademark is registered. If any third party uses a similar mark without authorised permission for their product, then, in that case, legal action can be taken by the owner of that trademark.

Build goodwill

The registration of a trademark helps to build goodwill and trust in the brand. The goodwill of a brand increases, when it becomes popular among the customers. Such goodwill helps to generate a regular loyal customer, who recognises products or goods from the name of the brand and opts for a similar one.

Differentiates products from services

The trademark aims to differentiate the goods and services from its competitors and creates an identity of a brand. The identity of the brand communicates the services and company’s quality, vision, and several other features of the product, thereby establishing the uniqueness that can easily be identified by the customer for seeking service.

Legal protection against infringement

Section 29 of the Act, provides legal protection against the infringement of a registered trademark. The owner of a registered trademark does have the authority to take legal action in case of any unauthorised use or an attempt to pass off a similar mark. The owner of the trademark under such a situation can initiate a legal proceeding and seek a suitable remedy such as an injunction or claiming damages from the party to have infringed the trademark. The court under such a situation can issue an injunction order and can also direct the third party to give back the profit made by him by using such a trademark.

In the case of Parle Products (P) Ltd vs J. P. & Co. Mysore (1972), Parley a biscuit maker, has a particular unique trademark for their “Parle’s Glucose Biscuit” wrapper. It was noticed by them that a similar wrapper was used by JP & Co. in the year 1961. As a result, the Parley took legal action. It was noted by the Hon’ble Supreme Court of India that although the difference was minor, it was enough to cause confusion. The court highlighted the importance of avoiding confusion in the trademark cases and it was held by the court that the defendant had infringed the registered trademark of the plaintiff. The court issued an injunction order, restraining the defendants from using the wrapper that is similar in appearance to the registered trademark of the plaintiffs on their packets.

In the case of Starbucks Corporation vs. Sardarbuksh Coffee & Co. (CS (COMM) 1007/2018), Starbucks objected to the logo and name used by the Sardarbuksh Coffee & Co. despite receiving the cease and desist letter, Sardarbuksh continued to use the name and logo which was objected by Starbucks. As a result, an infringement suit was filed by Starbucks, the court ruled in favour of the plaintiff and it was directed that the defendant should change the name of the business from “Sardarbuksh Coffee & Co.” to “Sardarji-Bakhsh Coffee & Co.”

In the case of Adidas AG vs. Keshav H Tulsiani (2024), the Delhi High Court granted Adidas AG a permanent injunction, prohibiting the defendants from using the ‘ADIDAS’ mark or any similar mark in the textile business. The court stated that the defendants had failed to prove that their adoption of a similar mark was honest and in good faith. Furthermore, the court observed that the use of a similar mark by the defendant was likely to cause confusion and thereby restrained the defendants from using a similar mark in the future.

Legal recognition of trademark

The registration of a trademark establishes a legal record of proprietorship which has a significant value in any legal proceeding. Section 31 of the Act, establishes that in any legal dispute that involves a registered mark and if a person has a registered mark then it serves as a prima facie evidence of the validity of the trademark. The recognition under such cases simplifies the process of the enforcement of trademark rights, and it becomes easier for the proprietor to defend their mark against any infringement or possibility of infringement.

Apply for multiple categories of trademark

The Act applies to various categories of trademarks and accommodates various trademarks that can be registered such as collective marks, certification trademarks, product marks, service marks, etc. This allows an individual or organisation to register not merely a standard trademark but along with that, various other categories of a trademark can be registered with much ease.

Protection for the period of ten years

Once a trademark is registered it remains valid for a period of 10 years. The registered trademark cannot be used in an unauthorised way by any third party. Therefore, the registration of a trademark helps to protect the brand value for at least 10 years in an effective and cost-efficient manner. After the period of 10 years, the proprietor of the trademark should apply for renewal of the trademark for 10 more years.

Aid in global trademark registration

A trademark registered in India does not grant global recognition, however, the trademark registered in India can be used as a base for international trademark registration. Once a trademark registration is obtained in a foreign country then a third party cannot use the trademark in that foreign country. Therefore, it can be said that the registration of a trademark can help in establishing a uniqueness and distinctiveness in the global market.

Retention of trademark right during business extension

The registration of trademarks provides a foundation for the businesses that are planning to expand and operate in the new areas within India. The registration of a trademark can help them to operate in new areas with the same trademark without any fear of infringing. Additionally, the registration establishes a clear path for future growth, licensing, and franchising opportunities.

Disadvantages of trademark registration

A few disadvantages of trademark registration are as follows –

No alteration in class once registered

One of the disadvantages of trademark registration is that once it gets registered in a particular class it cannot be altered and therefore, cannot be applied for the goods belonging to another class of the same company. Moreover, only one trademark class can be chosen while filing an application for the registration of a trademark. If a company applies for the registration of a particular class and after registration, the company starts selling the goods under another trademark category then, the company needs to apply again for the registration of a trademark. Therefore, it is necessary for a company to choose the class of trademark wisely before applying for registration.

Third-party opposition

Once the trademark application is filed, it is published in the Trademark Journal and it is open for anyone to raise objections against such registration. When any objection is raised by the opposition against such registration, the registrar will go through the objection raised by the opposition, counterstatement, and statement and will conduct a hearing. After such a hearing, the trademark can only be registered when the registrar decides in favour of the application which is given for the registration of a trademark. This entire process of trademark opposition is time-consuming and the proprietor may have to pay the fees to legal counsel for defending the registration of the trademark.

Trademark registration requires renewable

The trademark registration is valid merely for a period of 10 years and after that, the trademark needs to be renewed. Moreover, during the time of renewal, the renewable fee needs to be paid, and non-payment of the renewable fee results in the removal of the trademark from the trademark register.

Trademark protection is limited to specific goods

The registration of a trademark merely protects the classes of goods or services for which it is registered. If some other person starts using the same mark for some other service that is not covered by the registration, then the rights of the owner might not extend to those areas. Therefore, trademark registration provides limited protection when compared with the protection of other property rights.

All trademarks can’t be registered

There are certain trademarks that can’t be registered due to legal restrictions such as a descriptive trademark, generic trademarks, deceptive trademarks etc. Moreover, a trademark that causes confusion with existing registered trademarks or those trademarks that are considered offensive or against public morality cannot be registered.

However, it is pertinent to note that the benefits of registration of a trademark outweigh their disadvantages and therefore it is necessary that an individual/organisation/company should register their trademark in order to prevent the unauthorised use of the trademark by any third party.

Relevant case laws

L.D. Malhotra Industries vs Ropi Industries (1975)

Facts

In the present case, there were two industries that were engaged in the manufacturing of the dress hooks, the hooks were of such kind that are generally used in the garments. The Ropi industry was set up in the year 1963 and they were manufacturing the hooks at a place called Navsari in Gujarat. In the beginning, they started with decent sales, and their sales at that time were around a few thousand. However, in due course of time ranging about a year, their sales increased and they started selling their goods at various places in India including Delhi. The other company was named L. D. Malhotra Industries was also manufacturing the dress hooks and the industry was situated in Delhi. They claimed that they got the mark ‘Kismat’ registered with the registrar of trademark on December 26, 1967. On that particular date, they were not using the word as a trademark. In the application filed under Section 18(1) of the Act, they said to the registrar that they proposed to use that word as a trademark. The registrar registered that word ‘per se’ and L. D. Malhotra Industries started using this mark on the hook that is manufactured by them.

On December 31, 1969, the Ropi industry made an application for the registration of the trademark, and on November 1, 1970, their application was advertised in the trademark journal. The Ropi industry sought the registration of marks of the word ‘Kismat’. Subsequently, on February 1, 1971, an opposition was filed by the L. D. Malhotra Industries under the various Sections of the Act. In the application presented by the Ropi Industry, it was stated that they had been using the label mark ‘Kismat’ since May 4, 1963, along with that they submitted evidence of using the said made from the specified date to the Assistant Registrar. The Ropi industry submitted the sales figure from April 1, 1963, to the date of filing an application, additionally, they also filed a number of affidavits of their dealers and other traders.

It was held by the Assistant Registrar that the Ropi industry is the ‘prior user’ of the trademark ‘Kismat’ and therefore the claim was upheld. The registrar found that there is ample evidence present to support the claims made by the Ropi industry and it was concluded by the Assistant Registrar that the Ropi industry has established the prior use of the trademark. All these proceedings took place in Bombay and none of the parties preferred to appeal against such an order.

However, on April 2, 1971, an application was filed in Delhi by the Ropi industry for the rectification of the registration under Section 56(2) of the Act. In the application, the grievances on the part of the Ropi industry was that L. D. Malhotra Industries’ mark ‘Kismat’ is violative of Sections 9 and 11 of the Act. In order to support the application many affidavits and documentary evidence were filed by the Ropi industry and in turn no evidence was filed by L. D. Malhotra Industries. As a result, the Assistance Registrar has applied his power and removed the mark of L. D. Malhotra Industries under Section 56(2) and ordered that their mark be expunged from the trademark register. Aggrieved by the decision of the Assistant Registrar an appeal was filed by the L. D. Malhotra Industries.

Issues

Whether the L. D. Malhotra Industries have a right to claim that their mark should not be expunged from the trademark register?
Whether the priority in the adoption of a trademark is superior to the priority in registration?

Judgment

The Delhi High Court considered that in the present case, the dates are crucial and the Ropi industry has established that they have been using the trademark ‘Kismat’ since April 1, 1963. However, they made an application for the registration of a trademark in the year 1969. The L. D. Malhotra Industries registered their trademark in the year 1967 and they do not claim any prior use of this work. The court considered that Ropi Industries was the first to use the trademark and the L. D. Malhotra Industries was the first to get the trademark registered. The court considered that the Ropi industry is first in the field because priority in the adoption of a trademark is superior to priority in registration.

The court after considering the facts and issues associated with the case allowed the appeal. The court issued an injunction order restraining L. D. Malhotra Industries from manufacturing and selling the hooks under the trademark ‘Kismat’ or any similar mark that can cause confusion and deception in trade and in the minds of the general public.

M/S. Nandhini Deluxe vs. M/S. Karnataka Cooperative Milk (2018)

Facts

In the present case, appellants i.e. Nandhini Deluxe have been engaged in the commerce of eateries and restaurants under the mark ‘Nandhini’ since the year 1989 and the restaurant applied for the registration of said mark after 12-13 years. On the other hand, the respondents i.e. Karnataka Cooperative Milk Producer Federation Ltd. have been operating the milk business under the same mark since the year 1985 and the said mark was registered by them under classes 29 and 30.

When the appellants applied for the registration of the mark, it was opposed by the respondents on the ground that the mark proposed to be registered by the appellants is deceptively similar to that of the respondents. The respondents contended that the mark ‘Nandhini’ has acquired a distinctive character and has become a well-known mark among the public. Therefore, the respondents have the exclusive right to use the said mark and if appellants use this mark it may mislead the general public to believe that the foodstuff sold by the appellants are of respondents. However, the objection raised by the respondents was dismissed by the Deputy Registrar and an order was passed on August 13, 2007, allowing the registration of the said mark in favour of the appellants. Aggrieved by the decision of the deputy registrar the respondents filed an appeal to the Intellectual Property Appellate Board, with the prayer that the registration granted by the deputy registrar in favour of the appellant should be cancelled. The appeal made by the respondent was allowed by the Intellectual Property Appellate Board via an order dated October 4^th, 2011. As a result, the appellants filed a writ petition before the High Court of Karnataka which was dismissed by vide impugned order dated December 2^nd, 2014. Therefore, the case finally came up before the Hon’ble Supreme Court of India by way of appeal for a final decision.

Issues

The major issue before the Hon’ble Supreme Court of India was to decide whether different companies could use similar marks for different and unrelated products.

Judgement

The Hon’ble Supreme Court of India after analysing the facts, issues, and arguments put forward by the parties was of the opinion that in such situations the burden of proof lies on the party who is seeking registration. The party seeking registration of a trademark needs to prove the fact that his mark is not identical to the already existing mark. Hence the proposed mark does not cause any kind of confusion or deception in the mind of the general public.

The Hon’ble Supreme Court of India dismissed the order given by the Karnataka High Court and the order given by the Intellectual Property Appellate Board. It was observed by the court that the products of both the parties are different and along with that the nature of trade among the parties is also different and it may not cause any kind of confusion among the general public. Therefore, it was concluded by the Supreme Court that both the marks shall not cause any kind of deceptiveness in the mind of the general public.

The Hon’ble Supreme Court of India ruled that the appellant has applied for the registration of products of sugar, tea, coffee, etc. that do not belong to Class 29 and Class 30 of the Act, therefore, it is hard to decide confusion or deceptiveness. As a result, the Supreme Court of India allowed the registration of a trademark in favour of the appellants on the condition that the appellant shall not indulge in the activities of milk or milk products.

S. Syed Mohideen vs. P. Sulochana Bai (2015)

Facts

In the present case, Mr. R. Krishna Singh started a business of halwa in the year 1900, after Mr. R. Krishna Singh passed away, his son, the late K. Bijili Singh took over the business till the year 2000. After the death of K. Bijili Singh, his wife (i.e. respondent/plaintiff) took over and continued the business of halwa. As time went by, the halwa sold at their shop became famous with the name “Iruttukadi Halwa”. The ‘Iruttukadi Halwa” was famous in the state of Tamil Nadu and was also renowned all over India and in foreign countries as well. The Iruttukadi Halwa Shop used to run only for a few hours in the evening i.e. from 5:00/5:30 p.m. to 10:30/11:00 p.m. since the year 1900. Each day only one item was being sold in the shop i.e. halwa, as for the shop the quality of halwa was of paramount importance. Initially, when the shop was established there used to exist a single oil lamp however, with the passage of time the shop was illuminated with the 40W bulb. Unlike other shops, no other decorative items were used in the shop for the purpose of decoration.

On the other hand, the appellant i.e. the father of the respondent, zealous of the goodwill enjoyed by the respondent, started a shop named ‘Raja Sweets’ opposite to Tirunelveli Railway Station, and the shop sold halwa and other savors. Moreover, the appellant also opened another shop named “Nellai Raja Sweets” at a distance of 5 kilometers from the shop of the respondent and sold various kinds of other eatables by decorating the shop with fancy lights. Further, the appellant again opened a new shop at Tirunelveli Railway Station on Madurai road with the name “Tirunelveli Iruttukadai Halwa” in order to deceive the general public that the respondent had opened another shop moreover, an advertisement was provided in the Tamil Murasu newspaper dated 26/06/2007, in order to create the publicity of the said shop.

After viewing the advertisement in the newspaper some people started asking respondents about another branch of “Tirunelveli Iruttukadai Halwa”. Since the respondent didn’t have any other shop with the same name, therefore, a notice was issued to the appellant not to use the trademark of the respondent for selling their sweet and other products, as the respondent’s mark i.e. “Iruttukadai Halwa” has already been registered under the Trade Mark Act, 1999. The appellant sent a reply to the notice, refusing to agree to the demand made by the respondent.

As a result, the respondent filed a suit for a permanent injunction of the appellant from using the said mark. It was contended by the appellant they have also been registered under Section 25(2) of the Trademarks Act, 1999 with the name “Tirunelveli Iruttukadai Halwa”, and when the registrar accepted the name of the trademark then the respondent has no right to seek an injunction. However, the reliefs sought by the appellants were denied by the Trial Court and an appeal was filed before the Hon’ble Supreme Court of India for final decision.

Issues

The main question that was raised in the case was “What are the rights of registered trademark holders against another person who also holds a valid registration of his trademark”?

Judgement

The Hon’ble Supreme Court of India looked into what would happen when two parties have registered for similar trademarks. The court was of the opinion that if two parties have registered a similar or identical trademark, then under such conditions both parties can use that trademark concurrently and neither of the parties has an exclusive right to use the trademark against the other party. The court clarified that even if the trademark is registered then also one party might not be able to sue for the infringement of the trademark, instead they can sue for “passing off” if such trademark misleads the general public or harms the reputation of the business.

After analysing the entire facts and the issues associated with the case, the court found that the respondent has had the logo “Iruttukadi Halwa” since 1900 and it is a well-established logo not only in the country but also abroad. The court further stated that the trademark was so famous that it was used in one of the famous Tamil songs, shedding light on the fact that only respondents can use that trademark. Therefore, the court decided that the claim made on the part of the respondent was strong, and therefore, the appeal was rejected and the decision given by the Trial Court was upheld.

Abu Dhabi Global Market vs. The Registrar of Trade Mark (2023)

Facts

In the present case, an appeal was filed against the order that was made by the Assistant Registrar of Trademark Registry, in which the application filed by the appellant for the registration of trademark “ABU DHABI GLOBAL MARKET” was rejected. Aggrieved by the decision of trademark registry an appeal was filed by the appellant before the Delhi High Court. The counsel appearing on behalf of the appellant contended that the finding of the trademark registry that the trademark “ABU DHABI GLOBAL MARKET” is not distinctive is completely unsupported by any reason.

Further, it was submitted that the mark is already registered (merely the logo), which means that the trademark office has recognised that the mark does not attract any inhibiting factors as enshrined under Section 9 of the Act. Furthermore, it was submitted that, if the mark is distinctive then the entire mark cannot lose its distinctiveness merely by the addition of the words “ABU DHABI GLOBAL MARKET”. The counsel also submitted that the trading name “ABU DHABI GLOBAL MARKET” has been adopted by the appellants under the Federation Law of UAE. On the contrary, the counsel appearing on behalf of the respondent submitted that the said trademark involves the name of a place i.e. Abu Dhabi and therefore the assistant registrar correctly refused the registration in view of the restriction that is inculcated under Section 9(1)(a) of the Act. The counsel also submitted that the mark was also lacking distinctiveness and therefore, it was rejected from being registered.

Issue

Is it valid to say that the appellant didn’t prove the distinctiveness of the mark by filing an affidavit of evidence of use of the mark?
Is it valid to say that “Abu Dhabi” can’t be registered as a trademark as it is the place i.e. capital of UAE?

Judgment

The Delhi High Court after analysing the facts and the other vital elements of the case, concluded that the Assistant Registrar’s refusal to register the trademark was unjustified. Therefore, the court decided that the mark i.e. “ABU DHABI GLOBAL MARKET” is distinctive and it must be registered. The court criticised the registrar for not properly considering the distinctiveness of the mark, and it was further clarified by the court that the mark needs to be distinctive and not necessarily inventive to get registered.

Conclusion

The registration of trademarks under the Trade Marks Act, 1999 is one of the vital and crucial steps towards protecting the intellectual property right in businesses. The registration of a trademark does not only serve as a legal protection towards the trademark, but along with that registration helps in building a brand identity among the general public. By following the structured process that is outlined under Section 18 of the Act one can ensure the exclusive right over the mark, thereby protecting that mark from unauthorised use. The registered trademark serves as a powerful tool as the customer can differentiate the different products and services that are available in the marketplace.

The entire process of trademark registration is a bit complex process which is time-consuming and does contain some inhibition while the process of registration such as opposition by third parties or need for periodic renewal. However, the benefit of registration outweighs these subsisting challenges and hence it is highly advised to register the trademark as it builds a solid foundation for business and further enhancement of such business in the market both at national and international level. Therefore, it can be concluded by stating that it is vitally important for businesses to understand and apply the registration process as enshrined under the Act, in order to secure their trademark’s identity in this competitive environment.

Frequently Asked Questions (FAQs)

What is Trademark Class?

The trademarks are categorised into different classes on the basis of the types of goods or services that they represent. The World Intellectual Property Organization (WIPO) has established a system of classification that comprises 45 trademark classes. Each class of trademark represents a particular category of goods or services, while registration it is crucial that the trademark must be assigned and registered under a correct class in order to receive effective protection of such registration. It is important that a right trademark class must be chosen while registering otherwise the Trademark Registration Department has the authority to reject the registration if one selects the incorrect trademark class.

Can a trademark be altered after it is registered?

A registered trademark is capable of being amended at a later period in accordance with Section 22 of the Act. However, it is pertinent to note that the change can’t be a substantial change in the character, although some kind of superficial or insignificant change can be allowed.

Where trademark applications can be filed?

In India, the application for the registration of a trademark can be filed at the Trademark registry that operates in five locations i.e. Delhi, Mumbai, Ahmedabad, Kolkata, and Chennai. The jurisdiction of the applicant is decided on the basis of the principal place of the applicant. In case the applicant is a foreigner then the jurisdiction is decided on the basis of the fact where the applicant’s agent or attorney is situated.

What are the legal implications of using a trademark prior to its registration and after it is registered?

The use of any trademark before its registration gives limited or least protection. The right to use the trademark before its registration is generally weak and less comprehensive. On the contrary, once a trademark is registered under the Act, it provides a stranger legal protection and grants exclusive rights to the person using such registered trademark.

References

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