Trade Marks Act, 1999

Introduction
• The Trademark Act, 1999 replaced the Trademark and Merchandise Act, 1958.
• It provides better protection of trademark and prevents misuse or fraudulent use
of marks on merchandise. The Act provides registration of the trademark so that
the owner of the trademark may get a legal right for its exclusive use.
• This previous Act got replaced with the by the government of India by complying
it with TRIPS (Trade-related aspects of intellectual property rights) obligation
recommended by the World Trade Organization.
• The aim of the Trademark Act is to grant protection to the users of trademark and
direct the conditions on the property and also provide legal remedies for the
implementation of trademark rights.
• Therefore, The Trade Marks Act, 1999 came into force to simplify the law and
meet the international obligations of India under the TRIPS.
Types of Trademark
Service mark
• A service mark is any symbol name, sign, device or word which is intentionally
used in trade to recognize and differentiate the services of one provider from
others. Service marks do not cover material goods but only the allocation of
services. Service marks are used in day to day services :
• Sponsorship
• Hotel services
• Entertainment services
• Speed reading instruction
• Management and investment
• Housing development services
• A service mark is expected to play a critical role in promoting and selling a
product or services. A product is indicated by its service mark, and that product’s
service mark is also known as a trademark.
Collective mark
• A collective mark is used by employees and a collective group, or by
members of a collaborative association, or the other group or organization
to identify the source of goods or services.
• A collective mark indicates a mark which is used for goods and services and
for the group of organizations with similar characteristics.
• The organization or group uses this mark for more than one person who is
acting in a group organization or legal entity for dividing the different
goods or services. Two types of collective marks for distinguishing with
other goods or services of similar nature:
• Collective mark indicates that the marketer, trader or person is a part of
the specified group or organization. Example – CA is a collective
trademark which is used by the Institute of the chartered accountant.
• Collective trademark and collective service mark are used to indicate
the origin or source of the product.
• A collective trademark is used by the single members of a group of an
organization but is registered as a whole group. Example- CA is the
title or mark which given to the member of Institute of a chartered
accountant. That collective mark may be used by the group of
association. This was added to the Trademark Act, 1988.
Certification mark
• A certificate mark is verification or confirmation of matter by providing assurance
that some act has been done or some judicial formality has been complied with.
A certification mark indicates certain qualities of goods or services with which the
mark are used is certified, a certification mark is defined in the Trademark Act,
1999.
• Certification trade mark means a mark competent of identifying the goods or
services in connection with which it is used in the manner of trade, which is
certified by the owner of the mark in respect of source, body, mode of
manufacturer of goods or performances of assistance, quality, accuracy or other
characteristics.
• Those goods or services which not so certified and registrable as such under this
Act, in respect of those goods or services in the name as the proprietor of the
certification trade mark, of that person. Registration of certification mark is done
according to the Trademarks Act, 1999. Requirements for registration is the
product must be competent to certify.
Trade dress

• Trade dress is a term that refers to features of the visual appearance of a

product or design of a building or its packaging that denote the source of
the product to customers. It is a form of intellectual property. Trade dress
protection is implemented to protect consumers from packaging or
appearance of products that framed to imitate other products.
Essential of trade dress
• Anything that makes an overall look or overall dress and feel of brand in
the market.
• The consumer believes that trade dress is the main indicator of
differentiation of one brand or goods from others.
• The requirement for the registration of trade dress is the same as the
registration of the logo, mark. The features in trade dress are size, colour,
texture, graphics, design, shape, packaging, and many more.
Essential of trade dress
• Anything that makes an overall look or overall dress and feel of brand
in the market.
• The consumer believes that trade dress is the main indicator of
differentiation of one brand or goods from others.
• The requirement for the registration of trade dress is the same as the
registration of the logo, mark. The features in trade dress are size,
colour, texture, graphics, design, shape, packaging, and many more.
Designation of trademark
Trademark is designated by:
• ™- ™ is used for an unregistered trademark.it is used to promote or
brand goods.
• ℠ - used for an unregistered service mark.it is used to promote or
brand services.
• ® - letter R is surrounded by a circle and used for registered
trademark.
Uses of Trademark
• Trademark identifies the owner of the product. Under any authorized agreement of
product, a trademark can be used, an example of trademarks goods names are, iPod and
a big mac.
• Company logos like the Golden Arches at McDonald’s and McDonald’s “I’m lovin’ it.
Brand names like Apple, McDonald’s, and Dolce & Gabbana.
• The usage of the trademark by unauthorized means or illegal means by producing it in
trading is known as trademark piracy.
• If there is an infringement of trademark, the owner of the registered trademark can take
legal action and for an unregistered trademark, the only option is passing off.
• Many countries like the United States, Canada and many more also, accept the
trademark policies, so they also gave the right to the master of product to take the action
for the protection of their trademark.
• A common concept of a trademark is that the owner of a registered trademark has a
more legal right for protection than the owner of unregistered trademark.
Meaning of trade mark
• Under the TM Act, 1999, the term “mark” is defined under Section 2(m) includes a device, brand,
heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof.
Section 2(zb) defines the term “trade mark” means 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 may include shape of goods, their packaging and combination of colours; and—
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in
relation to goods or services for the purpose of indicating or so as to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person having the
right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to
goods or services for the purpose of indicating or so as to indicate a connection in the course of
trade between the goods or services, as the case may be, and some person having the right, either
as proprietor or by way of permitted user, to use the mark whether with or without any indication
of the identity of that person, and includes a certification trade mark or collective mark;
• A trademark means a mark capable of being represented graphically.
• It should be capable of distinguishing goods or services.
• It may include shape of goods, their packing and combination of
colours.
• A mark can be comprised even in a single letter.
• Such a mark may include numerous things such as signatures, names,
labels, headings, etc.
Types of Trademarks
• Generic marks: Generic marks are the marks that cannot be qualified as a
trademark. Generic marks cannot be considered as trademarks until they have
more specific characterization and description of the mark. E.g. ‘The Ice Cream
shop’ is a generic mark as it can stop the other ice cream shops to sell the ice
creams.
• Descriptive marks: The descriptive marks are the marks that describe one or
more characteristics and has a primary and secondary unique element. The
primary element talks about the mark being unique and the secondary element
talks about the length, volume, size and other characterizations of the mark. The
descriptive mark evolves from what the brand represents to who the brand
represents.
• Suggestive marks: Suggestive marks are the marks which suggest something
about the product. These marks do not have a secondary meaning and they are
just the creation of a person’s imagination. E.g. Jaguar, Ninja and Trip Advisor.
These names suggest something about their company.
• Fanciful marks: Fanciful marks are the marks which are different and
unique and they don’t compete with any other marks. They don’t affect
any other company or mark or infringe the trademark of anyone and they
don’t have a specific meaning. E.g. Kodak, Nokia, Adidas.
• Arbitrary marks: These are the marks that do not resemble their name and
product. E.g. Apple, Blackberry, Orange company, Alphabet and Co.
• Service marks: It is the same as a Trademark, but different because it
provides services rather than the product. E.g. McDonald’s, Domino’s, etc.
• Trade Dress: Trade dress is an identifying element that helps to identify the
product. E.g. Bottle cap of Listerine mouthwash.
What can’t be registered as a trade mark?
• The following cannot be registered as a trade mark in India:
• The marks that are bereft of any distinctive character, this includes marks or
indications which can serve in trade to designate the kind, quality or the intended
purpose of the goods or services, or the marks or indications that are customary
in the current language;
• The marks that are such that it may led to deceive the public or cause confusion,
or it contain any matter likely to hurt the religious sentiments of the citizens of
India, or contain indecent or obscene matter;
• The marks that consist of the shape of goods which results from the nature of the
goods themselves;
• The marks that are quite similar or identical to a previous registered trade mark;
and/or
• Any national flag, emblem or logo, which includes that of any United Nations
body or any other international organization.
Advantages of registration of a trademark
• It protects the common goodwill of the company or services and
helps to find the origin of goods and services. Moreover, prevents
anyone else to use your mark.
The trademark shall be: –
• Distinctive in nature
• No sentiments of any community shall be hurt.
• No obscene materials to be used in the mark
• Not to be prohibited by the emblems act, 1950
• Any person claiming to be the owner of the trademark or supposed to
used the trademark by him in future for this he may apply in writing
to the appropriate registrar in a prescribed manner.
• The application must contain the name of the goods, mark and
services, class of goods and the services in which it falls, name and
address of the applicant and duration of use of the mark.
• Here the person means an association of firms, partnership firm, a
company, trust, state government or the central government.
Chapter 2- Register and Conditions for
registration
• Section 3- The Central Government appoints the Controller-General
of Patents, Designs and Trade Marks.
• Controller-General acts as the Registrar of Trade Marks.
• The Controller General of Patents, Designs and Trademarks is the
relevant trade mark authority, managing the functions of the offices
of the Trade Marks Registry which is located in Ahmedabad, Chennai,
Delhi, Kolkata and Mumbai.
Register of Trade Marks
• Section 6 states that the register of Trade Marks has to be maintained
in the office of the Trade Marks registry.
• All registered Trade Marks have to be entered in the register with the
name, address and description of proprietors, notification of
transmissions and assignments.
• A copy of the register has to be kept at each branch office of the
Trade Marks Registry.
Classification of Goods and Services- Section
7
• For the purpose of registration of trade marks under the Act, the Registrar
has to classify goods and services.
• Any question as to the class in which a particular goods or services should
fall has to be decided by the Registrar and the same shall be final.
• Section 7 of the Act requires the classification of the trademark according
to the international classification of goods and services. There is a total of
45 classes under this classification. The international classification which is
called ‘Nice classification’ under the nice agreement in 1957. There are 45
classes of nice classification under goods and services. The classification
from 1 to 34 is for goods and 34 to 45 is for services.
Procedure for registration of a trademark
• The procedure is given in Section 21-26 of the Act where the
application is written to any office of the Commerce and industry.
• The forms for the distinctiveness and inquiry to be filled along with
the prescribed fees.
• Further, the registrar will book it in the Trademark Journal for the
third-party objections. Once cleared, the trademark will be renewed
every ten years.
• If after that, not renewed from 5 years and 3 months, it will be struck
out of the trademark journal.
Conditions of registration
• The central government by mentioning in the official gazette appoint a
person to be known as the controller, general of patents, designs and
trademark who shall be the registrar of the trademark. The central
government may appoint other officers also if they think that they are
appropriate, for the purpose of discharging, under the superintendence
and direction of the registrar, the registrar may authorize them to
discharge.
• The registrar has the power to transfer or withdraw the cases by in writing
with reasons mentioned. At head office the particulars of registered
trademarks and other prescribed, particulars, except notice of the trust,
shall be recorded. The copy of the register is to be kept at each branch
office. It gives for the preservation of records in computer or diskettes or in
any other electronic form.
Procedure and Duration of registration
• The registrar on the application made by the proprietor of the trademark in
the prescribed manner within the given period of time with the adequate
payment of fees.
• Registration of a trademark shall be of ten years and renewal of the
registered trademark is also for a period of ten years from the date of
expiration of the original registration or of the last renewal of registration.
• The registrar shall send the notice before the expiration of last registration
in the prescribed manner to the registered proprietor.
• The notice mentions the date of expiration and payment of fees and upon
which a renewal of registration may be obtained if at the expiration of the
time given in that behalf those conditions have not duly complied with the
registrar may remove the trademark from the register.
• But the registrar shall not remove the trademark from the register if
implication made within the prescribed form and the prescribed rate
is paid within six months from the expiration of the final registration
of the trademark and shall renew the registration of the trademark
for an interval of ten years.
• If the trademark is removed from the register for non-payment of the
prescribed fee, the registrar shall after six months and within one
year from the expiration of the last registration of the trademark
renew the registration,
• And also on receipt of implication in the prescribed form and on
payment of the prescribed fee the registrar restores the trademark to
the register and renew the registration of the trademark, for a period
of ten years from the expiration of the last registration.
International registration of a trademark
• The law of trademark passed by the Indian government is applicable
only within the territory of India.
• The trademark which is registered in has effect only in India, for the
protection of trademark in other countries needs to be registered in
another country as well.
• Each country has its own trademark law with rules and law for the
registration of a trademark in that country.
• In other words, if an individual desire to obtain trademark registration
in any particular nation then a separate application must be moved in
all such international locations.
• Within the year 2013, the Indian government agreed to the Madrid
conference which prescribes a methodology of submitting a
worldwide application to the contracting events from India by means
of the workplace of the Registrar of Trademark.
• For example- India’s mobile phone manufacturing Micromax received
1.25 millionth international trademark registration for its trademark
‘MICROMAX’ protection in over 110 countries.
• The international trademark registration for Micromax filed under
the Madrid Protocol, under mark can be protected in many
jurisdictions by only filing an application for international registration.
There are two methods by which an international application can be
filed:
• International application in each foreign country: For the protection
of trademark in any foreign country, an international application must
be filed to the trademark office by following the rules and regulations
of that country. For this purpose the applicant must hire a firm
dealing in trademark registration in foreign, the applications to
countries which is not a party to the Madrid system can be filed as
per above. It provides services that engaging an Attorney in the
foreign countries works closely for registration of a trademark in the
foreign country.
• The international application under the Madrid system: The
trademark registration may also be initiated by means of filing an
international application under Madrid protocol before the Registrar
of Trademark for different nations. The Indian Trademark office
collects international Trademark application and after finding it in
conformity with the Madrid protocol transmits such a global
application to the WIPO (World Intellectual Property Organization),
which further transmits it to the situation overseas. Each and every
global software is processed by way of the overseas nation as per
their legislation and all communications are routed by means of
Indian executive.
Absolute grounds for refusal of registration-
Section 9
• Absolute grounds for the refusal of registration is defined under
Section 9 of the Act. The trademarks which can be lacking any
distinctive characteristics or which consists exclusively of marks or
signals, which can be used in trade to indicate the kind, fine, quantity,
supposed grounds, values, geographical origin.
• And also a time of production of goods or rendering of the offerings
or different characteristics of the goods or offerings which consists
solely of marks or indications which have come to be average in the
present language. That marks are not entitled to registration. Except
it is confirmed that the mark has in fact acquired a new character as a
result of use before the date of application.
It gives that a mark shall not be registered as trademarks if:
• It frauds the public or causes confusion.
• There is any matter to hurt religious susceptibility.
• There is an obscene or scandalous matter.
• Its use is prohibited. It provides that if a mark contains exclusively of
(a) the shape of goods which form the nature of goods or, (b) the
shape of good which is needed to obtain a technical result or, (c) the
shape of goods which gives substantial value of goods then it shall not
be registered as trademark.
Test of similarity
• For the conclusion, if one mark is deceptively similar to another the
essential features of the two are to be considered.
• They should not be placed side by side to find out if there are any
differences in the design and if they are of such a character to prevent
one design from being mistaken for the other.
• It would be enough if the disputed mark has such an overall similarity
to the registered mark as it likely to deceive a person usually dealing
with one to accept the other if offered to him.
• Apart from the structural, visual, and phonetic similarity or
dissimilarity, the query needs to be viewed from the of view of a man
typical intelligence.
Acquisition of secondary distinctive meaning
• Acquisition of secondary meaning dos not take place by mere use. It has to
be supported by survey reports of consumers or any other evidence.
• The trademark law stipulates that a trademark which has secured a
secondary meaning or secondary significance shall not be refused
registration even if it falls under the categories as stated under Section 9.
• It is a well-settled law that common language words or descriptive words
or common words and names cannot be trademarked by any trader unless
and until such trade names have acquired such a great reputation and
goodwill in the market that the common language word has assumed a
secondary significance.
• Secondary significance here would mean that other traders in that line of
trade acknowledge that such common words have come to denote the
goods belonging to a particular trade.
• It has already been established that a common/descriptive word per
se cannot be trademarked, and it must have had acquired
distinctiveness/secondary meaning for the trademark to be
registered.
• The rule relating to "secondary significance" and "acquired
distinctiveness" has been well explained in various case laws over the
years.
S.NO. COURT OF LAW CASE LAW JUDGMENT/ANALYSIS KEY TAKE AWAYS
1. House of Lords Reddaway and Co Ltd v This is a leading case law which talks Common words of a
Banham and Co Ltd2 about descriptive words having language and/or
acquired secondary descriptive words can
meaning/secondary significance. And be trademarked,
rule derived from this case law forms when they have
an essential part of the Indian acquired
Trademark law. distinctiveness/
secondary meaning.
In this case, the plaintiff manufactured
and sold Camel Hair Belting. The
defendant also began to sell belting
made of camel's hair in the name of
Camel Hair Belting. The trader claimed
a right in the term 'Camel Hair'.

It was held that- the term "CAMEL

HAIR" was descriptive but had
acquired secondary significance in the
trade of business and had come to be
associated with the plaintiff's business
and therefore is liable for protection.
2. Delhi High Court Living Media India The issue before the court was- Both the words
Limited v. Jitender V. Jain whether the name and style of "AAJ "AAJ" and "TAK"
and Anr.4 TAK" and its logo is a generic term may be individually
and as such is not the monopoly of descriptive and may
any particular person either in not be monopolized
relation to the news programme or by any user. But
otherwise5. The court observed that together the
even if the words "AAJ TAK" are combination of
descriptive in nature and even if words has acquired
they have a dictionary meaning, distinctiveness by
together it is still coined word of the virtue of prior,
plaintiff and has acquired a continuous and
secondary meaning by virtue of extensive use and
prior, continuous and extensive use therefore, is
and therefore the combination of protected.
the two words "AAJ TAK" cannot be
used by any other user.
Limitation as to colour- Section 10
1) A trade mark may be limited wholly or in part to any combination of
colours and any such limitation shall be taken into consideration by
the tribunal having to decide on the distinctive character of the
trade mark.
2) So far as a trade mark is registered without limitation of colour, it
shall be deemed to be registered for all colours.
Relative grounds for refusal of registration-
Section 11
• Under this Section of the Act, it gives relative grounds for the refusal of
registration of a trademark.
• A trademark cannot be registered if because of
(i) its identity with an earlier trademark and similarity of goods or services,
(ii) its similarity to an earlier trade mark and the similarity of the goods and there is
a probability of confusion.
• It also gives that a trademark cannot be registered which is identical or similar to
an earlier trademark.
• And also which is to be registered for goods and services which are not similar to
those for which earlier trademark is registered in the name of a different
proprietor if, or to the extent, the earlier trademark is well known in India.
• It further gives that a trademark cannot be registered if, or to the extent that, its
use in India is liable to be prevented by virtue of any law.
• Section 11 further states that nothing shall prevent the registration
of a trade mark where the proprietor of the earlier trade mark or
other earlier right consents to the registration, and in such case the
Registrar may register the mark under special circumstances under
section 12.
Registration in the case of honest concurrent
use, etc.—Section 12
• In the case of honest concurrent use or of other special circumstances
which in the opinion of the Registrar, make it proper so to do, he may
permit the registration by more than one proprietor of the trade
marks which are identical or similar (whether any such trade mark is
already registered or not) in respect of the same or similar goods or
services, subject to such conditions and limitations, if any, as the
Registrar may think fit to impose.
• This may be done only in special circumstances which the Registrar
makes it proper to do so.
• However, he may impose conditions and limitations as he may think
proper.
• In the case of Eco Learn Research & Development vs. Intellectual
Property Appellate Board (2011)- One party’s educational institution
was started in 1995 and the others in 1994. One of them applied
“Goenka” and the other as “G D Goenka Public School”. It could not
be said that in one year’s time the institution had acquired such a
high name and fame that the other could divert students by using the
word “Goenka” which was the surname of both parties. This was a
case of honest concurrent use. The subsequent institution was
established out of Delhi.
13. Prohibition of registration of names of
chemical elements or international non-
proprietary names- Section 13
• No word—
(a) which is the commonly used and accepted name of any single chemical
element or any single chemical compound (as distinguished from a
mixture) in respect of a chemical substance or preparation, or
(b) which is declared by the World Health Organisation and notified in the
prescribed manner by the Registrar from time to time, as an
international non-proprietary name or which is deceptively similar to
such name,
shall be registered as a trade mark and any such registration shall be deemed
for the purpose of section 57 to be an entry made in the register without
sufficient cause or an entry wrongly remaining on the register, as the
circumstances may require.
• Section 13 states that names of certain chemical elements or
international non-proprietary names cannot be registered as trade
marks.
• Prohibition applies to a word commonly used and is an accepted
name of any single chemical element or compound.
• Prohibition also applies to an international or non-proprietary name
something which is deceptively similar to such name and necessary
that such word should have been notified by the WHO and notified by
the Registrar in the prescribed manner.
Use of names and representations of living
persons or persons recently dead- Section 14
• Where an application is made for the registration of a trade mark
which falsely suggests a connection with any living person, or a
person whose death took place within twenty years prior to the
date of application for registration of the trade mark, the Registrar
may, before he proceeds with the application, require the applicant to
furnish him with the consent in writing of such living person or, as the
case may be, of the legal representative of the deceased person to
the connection appearing on the trade mark.
• The Registrar may refuse to proceed with the application unless the
applicant furnishes such consent.
Registration of parts of trade marks and of
trade marks as a series- Section 15
(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part
thereof separately, he may apply to register the whole and the part as separate trade marks.
(2) Each such separate trade mark shall satisfy all the conditions applying to and have all the
incidents of, an independent trade mark.
(3) Where a person claiming to be the proprietor of several trade marks in respect of the same or
similar goods or services or description of goods or description of services, which, while
resembling each other in the material particulars thereof, yet differ in respect of—
(a) statement of the goods or services in relation to which they are respectively used or proposed
to be used; or
(b) statement of number, price, quality or names of places; or
(c) other matter of a non-distinctive character which does not substantially affect the identity of
the trade mark; or
(d) colour, seeks to register those trade marks, they may be registered as a series in one
registration
• This section comes into play when a person claims himself to be the
proprietor of several trade marks in respect of the same or similar goods
and when he seeks to register such trade marks they may be registered as
a series in one registration.

• Aravind Laboratories vs. Modicare (2011)- “Eyetex Dazller” was used as a

trade mark on nail polish and nail glitters. The plaintiff had obtained
registration of the word “Eyetex” separately but not for the word
“Dazeller”. By reason of the provision of Section 15(1) the word “Dazeller”
could not have allowed a separate registration because it is a common
word. The defendant’s use of the word Dazeller as part of their mark “Daily
Dazeller” could not be held as an act of infringement. The court stated that
in order to succeed in an action of passing off, the plaintiff must satisfy the
classical trinity of reputation, goodwill, misrepresentation and damage.
There was nothing on record to show that the word Dazeller has acquired a
distinctive or secondary meaning.
 Registration of trade marks as associated
trade marks- Section 16
(1) Where a trade mark which is registered, or is the subject of an
application for registration, in respect of any goods or services is
identical with another trade mark which is registered, or is the subject
of an application for registration, in the name of the same proprietor in
respect of the same goods or description of goods or same services or
description of services or so nearly resembles it as to be likely to
deceive or cause confusion if used by a person other than the
proprietor, the Registrar may, at any time, require that the trade
marks shall be entered on the register as associated trade marks.
(2) Where there is an identity or near resemblance of marks that are
registered, or are the subject of applications for registration in the
name of the same proprietor, in respect of goods and services which
are associated with those goods or services, or goods or services of
that description, sub-section (1) shall apply as it applies as where there
is an identity or near resemblance of marks that are registered, or are
the subject of applications for registration, in the name of the same
proprietor in respect of the same goods or description of goods or
same services or description of services.
(3) Where a trade mark and any part thereof are, in accordance with
the provisions of sub-section (1) of section 15, registered as separate
trade marks in the name of the same proprietor, they shall be deemed
to be, and shall be registered as, associated trade marks.
(4) All trade marks registered in accordance with the provisions of sub-
section (3) of section 15 as a series in one registration shall be deemed
to be, and shall be registered as, associated trade marks.
(5) On application made in the prescribed manner by the registered
proprietor of two or more trade marks registered as associated trade
marks, the Registrar may dissolve the association as respects any of
them if he is satisfied that there would be no likelihood of deception or
confusion being caused if that trade mark were used by any other
person in relation to any of the goods or services or both in respect of
which it is registered, and may amend the register accordingly.
Effect of registration of parts of a mark-
Section 17
(1) When a trade mark consists of several matters, its registration shall
confer on the proprietor exclusive right to the use of the trade mark
taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade
mark— (a) contains any part—
(i) which is not the subject of a separate application by the proprietor for
registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or

(b) contains any matter which is common to the trade or is otherwise of a

non-distinctive character, the registration thereof shall not confer any
exclusive right in the matter forming only a part of the whole of the trade
mark so registered.
Withdrawal of acceptance- Section 19
• Where, after the acceptance of an application for registration of a
trade mark but before its registration, the Registrar is satisfied—
(a) that the application has been accepted in error; or
(b) that in the circumstances of the case the trade mark should not be
registered or should be registered subject to conditions or
limitations or to conditions additional to or different from the
conditions or limitations subject to which the application has been
accepted, the Registrar may, after hearing the applicant if he so
desires, withdraw the acceptance and proceed as if the application
had not been accepted.
Advertisement of application- Section 20
1) When an application for registration of a trade mark has been
accepted, whether absolutely or subject to conditions or
limitations, the Registrar shall, as soon as may be after acceptance,
cause the application as accepted together with the conditions or
limitations, if any, subject to which it has been accepted, to be
advertised in the prescribed manner: Provided that the Registrar
may cause the application to be advertised before acceptance if it
relates to a trade mark to which sub-section (1) of section 9 and
sub-sections (1) and (2) of section 11 apply, or in any other case
where it appears to him that it is expedient by reason of any
exceptional circumstances so to do.
Where— (a) an application has been advertised before acceptance
under sub-section (1); or
(b) after advertisement of an application,—
(i) an error in the application has been corrected; or
(ii) the application has been permitted to be amended under section
22, the Registrar may in his discretion cause the application to be
advertised again or in any case falling under clause (b) may, instead
of causing the application to be advertised again, notify in the
prescribed manner the correction or amendment made in the
application.
• Advertisement of application- Section 20
After an application has been accepted whether absolutely or subject
to conditions and limitations, the Registrar has to advertise the
application in the prescribed manner.
The proviso authorises the Registrar to cause the application to be
advertised even before acceptance by reason of any exceptional
circumstances.
In case of an error has been corrected in the application after the
advertisement, the Registrar may cause the application to be re-
advertised or notify in the prescribed manner as per his discretion.
Opposition to registration- Section 21
• Any person may give a notice to the Registrar of his opposition to
registration.
• The notice has to be in writing and has to be given in the prescribed
manner in the prescribed format and fee.
• The application has to be made within 3 months from the date of
advertisement or re-advertisement or within such period as the Registrar
may allow but cannot exceed one month.
• The Registrar has to serve a copy of the notice on the applicant.
• The applicant has to send a counter statement to the Registrar within 2
months from receipt of notice.
• If he does not he is said to have abandoned the application.
• The evidence on which the applicant or owner rely has to be submitted in
the prescribed manner and also within the prescribed time.
• The Registrar has to consider the evidence and arguments of the
parties and decide subject to what conditions and limitations the
application is to be allowed.
• Where the person giving notice of opposition or the applicant
submitting counter-statement neither resides nor carries on business
in India, the Registrar may require him to security for costs of the
proceedings. On his failure to do so, the Registrar may treat the
opposition or application, as the case may be as abandoned.
• The right of opposition has to exercised vigilantly. The Registrar
cannot extend the time beyond that which is permitted by the section
for filing notice of opposition.
Correction and amendment- Section 22
• The Registrar on his discretion can permit correction of any error in or
amendment of application on such terms as he thinks fit. He may do
so at any time whether before or after acceptance of the application
for registration under Section 18.
• If an amendment is made to a single application involving division of
the application into two or more applications, the date of making the
initial application is to be considered as the date of making divided
application.
Registration – Section 23
• When the application has been accepted and has not been opposed or the
time for opposition has expired, or if opposed has been decided in favour
of the applicant, the Registrar may register the trade mark unless the
Central government has directed otherwise.
• The trade mark when registered becomes registered as the date of making
of the application and that date is deemed to be the date of registration.
• On registration , the Registrar has to issue certificate of registration in the
prescribed form and sealed with the seal of the Trade Marks registry.
• Where the process of registration has not been completed within 12
months from the date of application by reason of defauilt on part of the
applicant, the Registrar may give him notice specifying the time of
completion.
• Failing such completed, the application is treated as abandoned.
Jointly owned Trade Marks- Section 24

• The Act does not authorise two registration of a trademark by two or

more persons. They have to register as joint proprietors.
• In the law of trademarks there can be only mark, one source and one
proprietor.
• It cannot have two origins.
Duration, renewal, removal and restoration of
registration- Section 25
• Term- 10 years.
• Can be renewed from time to time.
• At the prescribed time before expiration the Registar has to send
notice to the registered proprietor for renewal and payment fee.
• If by the time of expiration the renewal has not been complied with
the Registrar may remove the trademark from the register.
• Concession given-Registrar not to remove the trade mark from the
register if application is to made within six months.
Effect for removal from register for failure to
pay fee for renewal- Section 26
• Removal of trade mark from register for non-payment of renewal fee
does not wipe out its existence completely.
• For purposes of defeating any application for registration of another
trade mark, the expired trade mark is deemed to remain on the
register during one year after removal from the register.
• However, this effect will not follow if the Tribunal is satisfied that
there has been no bona fide trade use of the trade mark which has
been removed during two years immediately preceding its removal or
that no confusion would be likely to arise from the current
registration.
No action for an unregistered trademark-
Section 27
• This is defined under Section 27 of Act that no infringement will lie
with respect to an unregistered trademark, but recognises the
common law rights of the trademark owner to take action against any
person for passing off goods as the goods of another person as
services provided by another person or the remedies thereof.
• Passing off is a common law action in the law of torts.
• A suit can be filed by an unregistered partnership firm.
• An infringement action is maintainable where there is violation of a
specific property right acquired under and recognized by any
statutory provision.
• A passing off action is independent of any statutory right to a trade
mark.
• It is against the conduct of the defendant which leads to deception or
intended or calculated to so lead.
• The tort of passing off involves a misrepresentation made by a trader
to his respective customer calculated to injure the goodwill of
another’s business.
• The action is in essence an action for deceit.
Rights conferred by registration- Section 28
• Exclusive right to the use of the trade mark in relation to the goods or
services in respect of which the trade mark has been registered.
• Entitled to obtain relief for infringement of his trade mark.
Infringement of trademark- Section 29
• A registered trademark is infringed by a person who not being a registered
proprietor or a person using by way of permitted use in the course of trade, a mark
which is identical with or deceptively similar to the trademark in relation to goods
or services in respect of which the trademark is registered.
• After infringement, the owner of the trademark can go for civil legal proceedings
against a party who infringes the registered trademark.
• Basically, Trademark infringement means the unapproved use of a trademark on
regarding products and benefits in a way that is going to cause confusion, difficult,
about the trader or potentially benefits.
• The party complaining of infringement of trade mark must show that
the mark was of novel quality or had its own distinctive features.
• A registered trade mark is said to be infringed if a person who not
being a registered proprietor uses in course of trade, a mark which
• Is identical with or similar to the registered TM
• Is used in goods or services which are not similar to those for which the TM
was registered
• The registered TM has a reputation in India and use of the mark would cause
unfair advantage to its rival.
• Case Law:
Alaknanda Cement (P) Ltd. vs. Ultratech Cement Ltd.
Ultratech Cement and Ultra Tuff Cement. Visual comparison of rival
marks showed striking similarity and capable of creating confusion and
therefore party was entitled to refrain the other from using the mark.
Bhavesh Mohanlal Amin vs. Nirma Chemicals Works Ltd.
Held that the mark NIMA was deceptively similar to NIRMA.
• Case laws on application of mark to different brand
K.C. Das (P) Ltd. vs. K.C. Dass, 2011
In this case the plaintiff was doing business of manufacturing sweet
meats under the trade name “K.C. Das” the defendant’s firm was doing
a readymade garments business in the same trade name and style by
adding a letter “K.C. Dass”. The court held that thought the nature of
goods sold were different, adoption of the same style of writing the
trade name as that of the plaintiff was deceptive. The people in general
would be deceived. It amounted to passing off. The plaintiff was
entitled to an injunction.
Infringement of trademark on the internet
• The expansion of the web is also leading to an expansion of inappropriate
trademark infringement allegations. Probably, a company will assert trademark
infringement each time it views one among its trademarks on an online page of a
Third party.
• For example, an individual who develops a website online that discusses her
expertise with Microsoft software could use Microsoft’s trademarks to consult
exact merchandise without the worry of infringement.
• However, she mainly would no longer be competent to use the marks in this kind
of means as to intent viewers of her internet web page to feel that she is
affiliated with Microsoft or that Microsoft is someway sponsoring her net web
page.
• The honour could simplest be analyzed upon seeing how the marks are sincerely
used on the web page. In this way, there is an infringement of trademark on the
internet.
Passing off
• If a person sells his goods as the goods of another” then the
trademark owner can take action as this becomes a case of passing
off. Passing off is used to protect or safeguard the goodwill attached
to an unregistered trademark.
• When the trademark has been registered by the owner and
infringement happens, then it becomes a suit for infringement, but if
the trademark has not been registered by the owner and
infringement happens then it becomes a case of passing off.
Difference between passing off and
infringement
• The measures for passing off is different from the measures of an
infringement.
• The claim for infringement is a lawful remedy whereas the claim for
passing off is a common law remedy.
• Therefore, in order to establish infringement with respect to a
registered trademark, it is only required to prove that the infringing
mark is same or deceptively similar to the certified mark and no more
proof is required.
• In the case of a passing off claim, proving that the marks are same or
deceptively similar only is not sufficient.
REMEDIES AGAINST INFRINGEMENT
• CIVIL REMEDIES- When instances of infringement occur, the court of competent jurisdiction, not
lower than District Court can be approached for grant of interlocutory injunction, Anton Piller
Orders, damages, account of profits, confiscation and destruction of goods using the infringing
trademark and cost of legal proceedings.
• Following sections can be invoked for remedy under Trade Marks Act 1999-
• Temporary, permanent and interim injunction, restraining further use of trade mark.
• Damages- Account of profits
• Order for delivery-up of the infringing goods, labels and marks for destruction or erasure
• Cost of legal proceedings
• Appointment of a local commissioner which is akin to an “Anton Piller Order” for search, seizure and
preservation of infringing goods, account books and preparation of inventory, etc.
• Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect
plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the
plaintiff.
• (Anton Pillar Order- A court order which requires the defendant to permit the plaintiff or their
legal representative to enter into the defendant’s premises to obtain the legal evidences for that
particular case)
• Suit for Infringement under Section 134 of Trade Marks Act- Suit under
this section can be instituted before a District Court/High Court within the
local limits of whose jurisdiction, at the time of the institution of the suit,
the person instituting the suit or proceeding, or, where there are more
than one such persons any of them, actually and voluntarily resides or
carries on business or personally works for gain. As per the Act, Person
includes the registered proprietor and the registered user.
• Relief available under Section 135(1) of Trademarks Act - As per Section
135(1), reliefs which a court may usually grant in a suit for infringement u/s
134 are-
• Relief under Section 135(2) of Trademarks Act- Court can give Ex parte or
interlocutory injunction order (Interim Relief- grant of order for short term
help) in accordance with Section 36- 42 of Specific Relief Act, 1963 or Order
XXXIX, Rules 1 & 2 and section 151 of the code of civil procedure,
1908 for the following-
CRIMINAL REMEDIES
• A Complaint may also be filed against the person infringing the trademark (the actions
under civil law and criminal law can be initiated simultaneously, under the civil law
proceedings, the plaintiff seeks relief for himself while under the criminal law
proceedings the complainant seeks award of punishment to the infringer.) Criminal
Prosecution can be obtained by following two procedures-
• Complaint before Magistrate- In order to initiate prosecution under the Penal provisions
of the Trade Marks Act, the right holder may file a complaint before the Magistrate
seeking orders for investigations under section 156 (3) Cr. P.C. and may also move an
application under section 93/94 of the Cr.P.C. for issuance of General Search Warrants for
affecting general search and seizure.
• Direct complaint before the Police- The procedure for filing a direct complaint before
the Police for infringement of Trademarks is contained in section 115(4) of the
Trademarks Act. The minimum level Police Officer empowered under the Act is Deputy
Superintendent of Police (DSP)/Assistant Commissioner of Police (ACP). The concerned
DSP/ACP is required to then seek an opinion from the Registrar of Trademark and can
only then initiate an action.
Following sections can be invoked for remedy
under Trade Marks Act 1999
• Penalty under Section 103 of Trademarks Act- Any person falsifies any trademark or
falsely applies to goods or services any trade mark shall be punishable with
imprisonment for a term which shall not be less than 6 months but which may extend to
3 years and with fine which shall not be less than Rs. 50,000 but which may extend to Rs.
2,00,000.
• Penalty under Section 104 of Trademarks Act- if any person who helped the accused by
selling, providing or hiring services of the such good, possessing such goods for sale or
any other possible way will be punished with imprisonment for a term which shall not be
less than 6 months but which may extend to 6 years and with fine which shall not be less
than Rs 50,000 but which may extend to Rs. 2,00,000.
• Penalty under Section 105 of Trademarks Act- if a person commits any of the offence
provided in section 103 or 104, he shall be punishable for the second and for every
subsequent offence, with imprisonment for a term which shall not be less than 1 year
but which may extend to 3 years and with fine which shall not be less than Rs. 1,00,000
but which may extend to Rs. 2,00,000.
LIMITATION
• The period of limitation for filing a suit for infringement of a
trademark is three years from the date of infringement. Where the
infringement is a continuing one, a new course of action arises every
time an infringement occurs.
• ADMINISTRATIVE REMEDIES- The registration of a deceptively similar
trademark can also be stopped by filing the opposition within four
months from date of publication. One can also apply for rectification
of Register by applying for removal of deceptively similar trademark in
case if it is registered.
ESSENTIAL ELEMENTS TO CONSIDER FOR
PASSING OFF
In the case of Reckitt & Colman Products Ltd., v. Borden Inc, (1990) 1
All.ER 873, Lord Oliver, court enumerated three essentials for a passing
off action-
• Misrepresentation
• Goodwill owned by a trader
• Damage to goodwill
DIFFERENCE BETWEEN TRADEMARK
INFRINGEMENT AND PASSING OFF
• The difference between an action in passing off and trademark infringement was
expounded by the Delhi High Court in the landmark case of Cadbury India
Limited and Ors. v. Neeraj Food Products, 2007 (35) PTC 95 Del as follows:
1. An action for passing off is a common law remedy whereas an action for
trademark infringement is a statutory remedy.
2. The use by the defendant of the trademark of the plaintiff is a prerequisite in the
case of an action for infringement while it is not an essential feature for an action
for passing off.
3. In order to establish infringement with respect to a registered trademark, it is
only required to prove that the infringing mark is same or deceptively similar to
the registered mark and no more proof is required while In the case of a passing
off, only proving that the marks are same or deceptively similar is not sufficient.
4. In a passing off claim it is necessary to verify that the use of the trademark by the
defendant is expected to cause injury or damage to the plaintiff’s goodwill,
whereas, in an infringement suit, the use of the mark by the defendant may not
cause any injury to the plaintiff.
5. When a trademark is registered, registration is given only with respect to
a particular category of goods. Protection is, therefore, provided only to these
goods in infringement action whereas in a passing off action, the defendant’s goods
must not be the same; it may be different.
• In, Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical
Laboratories, 1965 AIR 980 the Apex court held that there are some differences
between the trial for passing off and trial for infringement of a trademark.
• In American Home Products Corpn. Vs. Lupin Laboratories Ltd., AIR 1995, the
Court held that it is well-settled law that in the infringement of a registered
trademark is important to carry in mind the difference between the search for
infringement and the search in passing off. In a passing off action, the courts
seem to see whether there is deception whereas, in infringement matter, it is
important to note that the Trademark Act gives to the owner an exclusive right to
the use of the mark which will be infringed in the case of indistinguishable and/or
related marks, even though there is deception, infringement can still take place.
• Delhi High Court in Infosys Technologies Ltd. v. Adinath Infosys Pvt.
Ltd. & Ors, (November, 2011) held that by using the word INFOSYS
which is the registered trade mark of the plaintiff as the key feature of
its corporate name, defendant has clearly infringed the registered
trade mark of the plaintiff. The Court restrained the defendant from
using the expression “INFOSYS” or any other expression which is
identical or deceptively similar to the trade mark “INFOSYS” as a part
of its corporate name or for providing any of the services in which the
plaintiff-company is engaged.
Trademark and passing off action: compared
• Trademark is essentially adopted to advertise one's product and to make it
known to the purchaser. It attempts to portray the nature and quality of a
product.
• And over a period of time when the product becomes popular, temptations
sprout up and induce others to pass off a similar or nearly similar product
of theirs as that of the original owner, though not in the same words and
same symbols, but in a way that makes the gullible consumer believe the
product that he is purchasing is the same as the one on whose quality he
has full faith and confidence.
• While an action for passing off is a common law remedy for passing off of
one's own goods as those of another, action for infringement of a trade
mark is a statutory remedy for vindication of one's own exclusive right to
the use of trade mark in relation to those goods.
• The use by the defendant of a trademark is not essential in an action
for passing off but is a sine qua non in the case of an action for
infringement.
• In a passing off action the plaintiff's right is "against the conduct of
the defendant which leads to or is intended to lead to deception.
• Passing off is said to be a species of unfair trade competition or of
actionable unfair trading by which one person, through deception,
attempts to obtain an economic benefit of the reputation that the
other has established for himself in a particular trade or business.
• The action is regarded as an action for deceit".
• Passing off action depends upon the principle that nobody has a right to
represent his goods as the goods of some body else.
• That is, a man shall not sell his goods or services under the pretense that they
were those of another person.
• The modern tort of passing off has five elements—
(1) a misrepresentation;
(2) made by a trader in the course of his trade;
(3) to prospective customers of his or ultimate consumers of goods or services
supplied to them;
(4) which is calculated to injure business or goodwill of another trader (in the
sense that this is a reasonably foreseeable consequence); and
(5) which causes actual damage to a business or goods of the trader by whom the
action is brought or will probably do so.
Safeguards to be Taken by the Proprietor of a
Registered Trade Mark to Protect his Rights
• The proprietor of a registered trade mark has to take some safeguards
to protect his rights.
• He should use and renew the trade mark regularly and in time.
• If the trade mark is misused by others he should file a suit for
infringement and passing off and also take criminal action.
MADRID AGREEMENT CONCERNING THE
INTERNATIONAL REGISTRATION OF MARKS (1891)
AND THE PROTOCOL RELATING TO THAT
AGREEMENT (1989)
• The system of international registration of marks is governed by two
treaties:
1. The Madrid Agreement, concluded in 1891 and revised at Brussels
(1900), Washington (1911), The Hague (1925), London (1934), Nice
(1957), and Stockholm (1967), and amended in 1979, and
2. the Protocol relating to that Agreement, which was concluded in
1989, with the aim of rendering the Madrid system more flexible and
more compatible with the domestic legislation of certain countries
which had not been able to accede to the Agreement.
• The Madrid Agreement and Protocol are open to any State which is
party to the Paris Convention for the Protection of Industrial Property.
• The two treaties are parallel and independent and States may adhere
to either of them or to both.
• In addition, an intergovernmental organization which maintains its
own Office for the registration of marks may become party to the
Protocol.
• Instruments of ratification or accession must be deposited with the
Director General of WIPO.
• States and organizations which are party to the Madrid system are
collectively referred to as Contracting Parties.
DOMAIN NAMES
• Domain names are the human-friendly form of Internet addresses. A domain
name is a unique name that identifies a website.
• For example, the domain name of the Tech Terms Computer Dictionary is
"techterms.com." Each website has a domain name that serves as an address,
which is used to access the website. Whenever we visit a website, the domain
name appears in the address bar of the web browser. Some domain names are
preceded by "www" (which is not part of the domain name), while others omit
the "www" prefix.
• All domain names have a domain suffix, such as .com, .net, or .org. The domain
suffix helps identify the type of website the domain name represents.
• For example, ".com" domain names are typically used by commercial website,
while ".org" websites are often used by non-profit organizations. Some domain
names end with a country code, such as ".dk" (Denmark) or ".se" (Sweden),
which helps identify the location and audience of the website.
• When we access a website, the domain name is actually translated to an IP
address, which defines the server where the website located.
• This translation is performed dynamically by a service called DNS. Domain
names are formed by the rules and procedures of the Domain Name
System (DNS).
• Technically, any name registered in the DNS is a domain name.
• It is common-place for traders to have their electronic mail address and use
the same in respect of their goods /services as trade name.
• In other words the domain name is being used as a trade name or trade
mark, and the Registrar will, subject to the usual criteria of the Act, permit
domain names to be registered as trade marks if otherwise registerable.
Honest Concurrent User
• The trademark law allows the trademark of an honest and concurrent user to
coexist with another similar mark. The defense of honest concurrent user came
into being through the cases of Dent v. Turpin and Southorn v. Reynolds.
In John Fitton & Co. the following five factors were laid down in order to have
success in honest concurrent user defence.

1. The extent and use in time and quantity and the area of the trade.
2. The degree of confusion likely to ensue from the resemblance of the marks
which is to a large extent indicative of the measure of public inconvenience.
3. The honesty of the concurrent use.
4. Whether any instances of confusion have in fact been proved, and
5. The relative inconvenience which would be caused if the mark were registered,
subject if necessary to any conditions and limitations.
Assignment and Transmission
• Assignment and Transmission have been defined under Section 2(1)
(b) and 2(1)( zc) of the Trade Marks Act, 1999 respectively.
• Section 2(1) (b) defines “assignment” as assignment in writing by act
of the parties concerned.
• Under section 2(1)(zc) “transmission” means transmission by
operation of law, devaluation on the personal representative of a
deceased person and any other mode of transfer, not being
assignment.
• Assignment of trade mark involves transfer of ownership of the trade mark
to another person or entity.
• The provisions concerning assignment and transmission of trade mark are
contained in section 37 to 45 of the Trade marks Act, 1999 read with rule
68 to 79 of the trade marks rules.
• Section 37 entitles the registered proprietor of a trade mark to assign the
trade mark and to give effectual receipts for any consideration for such
assignment.
• Under the Act, a registered trade mark is assignable and transmissible
whether with or without goodwill of the business either in respect of all
goods or services or part thereof.
• The assignment or transmission of trade mark has been prohibited under
Section 40, where multiple exclusive rights would be created in more than
one person in relation to same goods or services; same description of
goods or services; or goods or services or description of goods or services
associated with each other, the use of such trade marks would be likely to
deceive or cause confusion.
• Assignment of a trade mark without goodwill of business is not
allowed unless the assignor obtains directions of the Registrar and
advertises the assignment as per the Registrar’s directions.
• The assignment and transmission of certification trade marks is
allowed only with the consent of the Registrar.
• Associated trade marks are assignable and transmissible only as a
whole but they will be treated as separate trade marks for all other
purposes.
• The assignment and transmission of trade marks are absolute.
• The validity of the assignment can be challenged only on the basis of
the provisions contained in Sections 37 to 45 of Trade Marks Act,
1999.
• Section 39 of Trade Marks Act, 1999 has simplified the provisions in
relation to assignment of unregistered trade mark without goodwill.
• It lays down that an unregistered trade mark may also be assigned
with or without goodwill.
• Three conditions in Section 38(2) of Trade and Merchandise Marks
Act, 1958 which were applicable on assignment of a trade mark
without goodwill have been abrogated.
• Now, both unregistered and registered trade mark are subject to
same conditions stated in Section 42, wherein such an assignee is
required to apply to the Registrar within six months extendable by
three months for directions with respect to advertisement.
• The assignee must issue the advertisement as directed for assignment
to take effect, as the two limbs are cumulative.
REGISTERED USERS
• Sections 48 to 54 contain provisions relating to registered users.
• Section 50 empowers the Registrar to vary or cancel registration as
registered user on the ground that the registered user has used the trade
mark otherwise than in accordance with the agreement or in such a way as
to cause or likely to cause confusion, or deception or the
proprietor/registered user misrepresented or has failed to disclose any
material facts for such registration or that the stipulation in the agreement
regarding the quality of goods is not enforced or that the circumstances
have changed since the date of registration, etc.
• However, Registrar has been put under obligation to give reasonable
opportunity of hearing before cancellation of registration.
• Section 51 empowers the Registrar to require the proprietor to
confirm, at any time during the continuation of registration as
registered user, whether the agreement on the basis of which
registered user was registered is still in force, and if such confirmation
is not received within a period of three months, the Registrar shall
remove the entry thereof from the Register in the prescribed manner.
• The Act also recognises the right of registered user to take
proceedings against infringement.
Collective mark
• The primary function of a collective mark is to indicate a trade
connection with the Association or Organisation.
• To be registerable, the collective mark must be capable of being
represented graphically and meet other requirements as are
applicable to registration of trade marks in general.
• Sections 61 to 68 contain provisions relating to the registration of
collective trade marks.
• These provisions provide for registration of a collective mark which
belongs to a group or association of persons and the use thereof is
reserved for members of the group or association of persons.
• Collective marks serve to distinguish characteristic features of the
products or services offered by those enterprises.
• It may be owned by an association which may not use the collective
mark but whose members may use the same.
• The association ensures compliance of certain quality standards by its
members, who may use the collective mark if they comply with the
prescribed requirements concerning its use.
CERTIFICATION TRADE MARK
• The purpose of certification trade mark is to show that the goods on which
the mark is used have been certified by some competent person in respect
of certain characteristics of the goods such as origin, mode of manufacture,
quality, etc.
• The proprietor of a certification trade mark does not himself deal in the
goods.
• A certification trade mark may be used in addition to the user’s own
trade mark on his goods.
• Unlike the old Act which empowered the Central Government to register
certification trade mark, the new Act delegates the final authority for
registration of certification trade mark to the Registrar.
• Sections 70 to 78 of the Trade Marks Act, 1999 deal with registration of
certification trade marks.
Distinction between “Trade Mark” and
“Certification Mark”
• Trade marks in general serve to distinguish the goods or services of
one person from those of others.
• The function of a certification trade mark is to indicate that the goods
or services comply with certain objective standards in respect of
origin, material, mode of manufacture of goods or performance of
services as certified by a competent person.
Summary
• The Trade Marks Act, 1999 has been enacted as indicated in the Preamble
to the Act to amend and consolidate the law relating to trade marks, to
provide for registration and better protection of trade marks for goods and
services and for the prevention of the use of fraudulent marks. It repealed
the earlier Trade & Merchandise Marks Act, 1958.
• The current law of trade marks contained in the Trade Marks Act, 1999 is in
harmony with two major international treaties on the subject, namely, The
Paris Convention for Protection of Industrial Property and TRIPS
Agreement, to both of which India is a signatory.
• Under the Trade Marks Act, the Controller -General of Patents, Designs and
Trade Marks under Department of Industrial Policy and Promotion,
Ministry of Commerce and Industry is the ‘Registrar of Trade Marks’.
• The Controller General of Patents, Designs & Trade Marks directs and
supervises the functioning of the Trade Marks Registry (TMR).
• The Trade Marks Registry administers the Trade Marks Act, 1999 and
the Rules thereunder.
• TMR acts as a resource and information centre and is a facilitator in
matters relating to trade marks in the country.
• The main function of the Registry is to register trade marks which
qualify for registration under the Act and Rules.
Conclusion
• Over the time the trademarks law has changed to a great extent and
now it provides protection to the trademark of a trademark owner at
every stage. With the advancement of technology and
communication, the law expects that users are reasonably aware of
others trademarks before registering their own trademark. No one
can use even a similar mark which creates deception or confusion for
the customers. The trademark owners have to be more careful about
similar marks in existence, even beyond national boundaries.
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