Protection of Designs and

Trademarks in India UNIT 5 TRADEMARK LAW IN INDIA-I:

REGISTRATION AND RIGHTS
Structure
5.1 Introduction
Objectives
5.2 What is a Trademark?
5.3 Characteristics of a Good Trademark
5.4 Registration of Trademark
5.5 Registrability of Trademark
5.6 Similar and Deceptively Similar Trademarks
5.7 Rights Conferred by Registration of Trademarks
5.8 Rectification of Register
5.9 Salient Features of 1999 Trademarks Act
5.10 Summary
5.11 Terminal Questions
5.12 Answers and Hints

5.1 INTRODUCTION
A trademark is a visual symbol that distinguishes the goods or services of one
enterprise from those of the competitors. Trademarks are at the centre of global
business today. They are the major source of product differentiation and non-price
competition in a modern, market driven economy. Consumers come to associate
certain value in terms of performance, durability, price, after-sales service etc. in the
goods sold under specific brands, which may be among the greatest assets of the
enterprise. In the language of the law, brand names are known as trademarks. Several
products, of the same category or of different categories, can be marketed under one
brand name.
In 1940 the then British Government of India passed the Trademarks Act for uniform
and systematic registration of trademarks in India, which came into force on
June 1, 1942. The Trade and Merchandise Marks Act, 1958, which came into effect
from November 25, 1959, replaced it. It became necessary to effect changes in the
trademark law as India joined WTO as an original member in 1995 and it was
obligatory to bring the Indian law in consonance with TRIPS. Hence new Trademark
Act, 1999, repealed the old Act.
The Act of 1999 makes important departures from the Act of 1958 in two important
respects:

• Shape of goods is recognised as a trademark; and

• Trademarks are now granted for services also, besides goods.
Goods is defined as anything which is the subject of trade or manufacture. Service
means service of any description offered to users. Banking, finance, insurance,
transport, energy supply, construction, hotels, entertainment, information and
broadcasting etc. are all examples of areas where services are offered in connection
with business, industry or commerce. Definition of service is meant to be all
subsuming.
The Registration of Trademarks is done in Mumbai where the Trademarks Registry is
situated. There are branch offices of the Registry at Calcutta, Delhi, Chennai and
Ahmedabad with separate jurisdictions.

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Objectives Trademark Law in
India-I: Registration
After studying this unit, you should be able to: and Rights

• define the meaning of trademark;

• enlist the different kinds of marks recognized under the Trademark Act of 1999;
• explain what kind of trademarks can be registered and what cannot be;
• describe the procedure for registration of trademark;
• enumerate the rights conferred on the owner of a trademark by its registration; and
• explain the procedure of transfer of these rights to other individuals.

5.2 WHAT IS A TRADEMARK?

A trademark, as currently recognised in India, is a visual symbol (in the form of a
word, a name, a device, a symbol, or a label) which identifies any merchant's or
manufacturer's goods or services and distinguishes them from similar goods or
services of competitors in the trade. The mark should be capable of being represented
graphically. It may include shape of goods, their packaging and combination of
colours. The Act makes a distinction between a trademark and a well-known
trademark. If a substantial segment of public associates a trademark with a particular
class of goods and services, and if this trademark is used for other goods or services,
and the public is inclined to associate the new goods/services with the earlier
goods/services, then the mark is a well known trademark. If the proprietor of a
trademark is an association of persons, who do not make a partnership within the
meaning of the Indian Partnership Act, 1932, the trademark is called a collective
mark. A special class of trademarks is termed as certification marks. These
trademarks do not indicate the origin of the goods, but are certified by the proprietor
of the mark as conforming to certain characteristics, like quality, ingredients,
geographical origin etc. Agmark used for food items in India is a certification mark.
Similarly ISI marks on goods certifies that the goods bear a prescribed
quality/specification as per the applicable ISI standards.
A trademark is a sign used on, or in connection with the marketing of goods. Saying
that the sign is used on the goods means that it may appear not only on the goods
themselves but also on the container or wrapper of the goods. Saying that the sign is
used in connection with the marketing of the goods refers mainly to the appearance of
the sign in advertisements (in newspaper, on television, etc.) or in the windows of the
shops in which the goods are sold. Where a trademark is used in connection with
services, it may be called service mark, e.g. service marks used by banks, hotels,
restaurants, airlines, tourist agencies. In the following text the term trademark will be
considered to include also service mark, collective mark, certification mark unless
there is need to mention any of them separately.
A person who sells his product under a particular trademark acquires an exclusive
right to the use of the mark in relation to those goods. Such a right can be registered
under the new Trademark Act 1999. A registered trademark can be protected against
unauthorised use by others by an action against infringement. An unregistered
trademark also can be protected against unauthorised use by others by an action of
passing off. A trader is guilty of passing off, if he attempts to pass off his goods by
misrepresentation that leads the consumer to believe that the goods are the same as
those of another better-known trader in those goods. For example, using Coco Cola to
cause confusion with Coca Cola is an action of passing off.
Well-known Trademarks
A trademark is well-known trademark if the consumers, on seeing it applied on some
goods relate it to the same trademark already applied on some other goods. The
definition implies that any ordinary trademark can acquire the character of a well-
known mark.
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Protection of Designs and In determining whether a trademark is a well-known trademark the Registration is
Trademarks in India required to consider any relevant fact, including the following:

• the knowledge or recognition of the trademark in the relevant section of the public
including knowledge in India as a result of business promotion;

• the duration, extent and geographical area of any use of that trademark or of any
promotion of the trademark, or of any registration or application for registration of
the mark to the extent they reflect the use or recognition of the mark;

• the record of successful enforcement of the rights in the trademark; in particular,

the extent to which the trademark has been recognised as a well-known trademark
by any court or Registrar;

• the number of actual or potential consumers, persons involved in the channel of

distribution, besides the business circles dealing with the goods or services.
None of the following is taken into account while determining whether a trademark is
a well-known trademark:

• that the trademark has been used in India;

• that it has been registered;

• that the application for its registration has been filed in India;

• that the trademark −

a) is well-known in; or
b) has been registered in; or
c) in respect of which an application for registration has been filed in any
jurisdiction other than India.
While considering an application for registration of a trademark and opposition filed
in respect thereof, the Registrar shall (i) protect a well-known trademark against the
identical or similar trademarks, and (ii) take into consideration the bad faith involved
either of the applicant or the opponent affecting the right relating to the trademark.
Thus well-known trademarks enjoy large trademark rights in consonance with the
TRIPS Agreements.
Collective Marks
A collective mark distinguishes the goods or services of members of the Association
which owns the mark from those of others. Members of the Association are the
authorised users of the mark, and the use of the mark by the members of the
Association is considered as the use by the proprietor. A collective mark can not be
registered if it is likely to deceive the public, or confuse the public that the mark may
be something other than a collective mark. In such a case the Registrar may require
that the mark may carry some indication that it is a collective mark. The Association
registered as the proprietor of a collective mark can file a suit for infringement. A
collective mark can be removed from the register on following additional grounds
(Refer 5.6):

• the manner it has been used is liable to mislead the public; or

• the proprietor has failed to observe, or to secure the observance of the regulations
governing the use of the mark.

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Certification Marks Trademark Law in
India-I: Registration
Certification trademarks certify goods in respect of origin, material, mode of and Rights
manufacture, quality, accuracy or some other characteristics of the goods, which bear
them. They distinguish goods so certified from competing goods which do not carry
the certification mark. Thus, these marks benefit the consumer. The trading
community is not always enthusiastic about these marks. Some examples of
certification trademarks are ISI, Agmark, Woolmark, Sanforized.
Because certification trademarks are functionally different from other trademarks,
which distinguish a trader’s/producer’s goods from those of others, several provisions
of the Trade Marks Act, 1999, do not apply to these marks. These provisions pertain
to

• Absolute grounds of refusal of registration:

A certification mark need not be distinctive for registration. Similarly, the
provision denying registration to a mark if it consists exclusively of marks or
indications which have become customary in the current language or in the bona
fide and established practices of the trade is not applicable to certification marks.

• Application for registration, advertisement of application and opposition to it.

• The procedure as applied to other trademarks is different in the case of

certification marks.

• Rights conferred by registration, infringement, limits on the effect of registered

trademark, assignment or transmission, removal from register and limitation on
ground of non-use, registered users, power of registrar for variation or
cancellation of registration as registered user, right of registered user to take
proceedings against infringement, registered user not to have right of assignment
or transmission.
Registration of Certification Trademarks
A certification mark can not be registered in the name of a person who carries on a
trade in goods of the kind certified. For registration, the proprietor makes an
application in a prescribed manner to the Registrar, accompanied by the regulations
governing the use of the certification trademark, which are to be deposited with
Trademarks Registry. Acceptance of the application, withdrawal of acceptance and
incorporation of any correction or amendment is to be done as provided for other
trademarks subject to the restriction on the persons who could be the proprietor of a
certification mark as stated earlier.
While accepting the application the Registrar takes into account the following matters:

• Whether the applicant is competent to certify the concerned goods;

• Whether the draft of regulations governing the use of the mark is satisfactory;
• Whether the registration would be to the public advantage in all the
circumstances.
If the acceptance and approval would require modification or imposition of
conditions/limitation the Registrar shall not decide the matter without giving the
applicant an opportunity to be heard. On acceptance, the application shall be
advertised, as in the case of other trademarks, and opposition, if any, for the
registration of the certification mark shall have to be considered and decided before
proceeding to registration.

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Protection of Designs and SAQ 1
Trademarks in India
How is a well-known trademark different from a trademark?

" Spend SAQ 2

5 min. State whether the following statements are true or false.
a) A trademark distinguishes the goods of the owner of the trademark from similar
goods of competitors in the trade.
b) Trademarks are the same as brand names.
c) A certification trademark distinguishes the goods of the owner of such trademark
from similar goods of other suppliers in the trade.
d) A certification trademark guarantees that the goods conform to certain
characteristics like quality, ingredients etc.

5.3 CHARACTERISTICS OF A GOOD TRADEMARK

A trademark should be distinctive. Distinctiveness may be inherent or acquired. An
invented word may be inherently distinctive as a trademark e.g. RIN. Other
trademarks may have acquired distinctiveness through usage e.g. TATA, Reliance,
Revlon. Most brands acquire distinctiveness through use. A brand may depend on the
class of goods e.g. Hawkins and Prestige are two distinctive brands in pressure
cookers. If the trademark is a word, it should be short and easy to spell, pronounce and
remember; if it is a device it should be expressible in a word. The word should be
preferably an invented word. Zen, Avon, RIN, Flex are all fine examples. The mark
can be denied if it is not considered distinctive. A trademark consisting of parts of a
chain wheel and chain to cover a business in chains and chain wheels is not
considered distinctive. However, distinctiveness alone is not sufficient for registration
of a trademark. It may also depend on whether other traders, without any improper
motives, want to use the same mark.

5.4 REGISTRATION OF TRADEMARK

In India an office of the Registrar of Trademarks has been established for the
maintenance of the Trademark Registry. Controller General of Patents and Designs is
also the Registrar of Trademarks. The Register of Trademarks contains the record of
all registered trademarks, with names, addresses and description of proprietors and
users, assignments and transmissions, and conditions and limitations and the name of
registered users.
Any person who claims to be a proprietor of a trademark can apply to the Registrar of
Trademarks for its registration. The application may be made in the name of an
individual, partners of a firm, a Corporation, any Government Department, a trust or
joint applicants claiming to be the proprietor of the trademark. For registration of a
trademark the nature of goods or services in relation to which the trademark is to be
used has to be specified.
Application
1. Application in the prescribed form has to be filed in the office of the Trademark
Registry within whose territorial limits the principal place of business in India of
the applicant, or the first applicant in the case of joint applicants, is situated. The
Registrar is required to classify goods and services in accordance with the
international classification for registration of trademarks. A single application is
sufficient for registration of a trademark for different classes of goods and
services; however, the fee is payable for each class separately. If the applicant or
any of the joint applicants does not carry on business in India, the application
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 shall be filed in the office of the trademark registry within whose territorial limits Trademark Law in
India-I: Registration
the place mentioned in the address for service in India lies. and Rights
2. Every application for registration of a trademark shall contain a representation of
the mark in the place provided in the form for the purpose. Five additional
representations of the mark have to be supplied with the application.
The application can either be accepted completely or accepted subject to amendments
or rejected. It is possible that an application is accepted and later, before registration,
the acceptance is found to be in error. In such a case the Registrar, after hearing the
applicant, may withdraw the acceptance.
Advertisement
Soon after acceptance, the application as accepted, together with the conditions or
limitations, if any, is advertised in the Trademarks Journal to provide the public an
opportunity to oppose the registration. Any person may, within three months from the
date of the advertisement or within such further period not exceeding one month, as
the registrar may allow, give notice in writing to the Registrar of opposition to the
registration. A copy of the notice of opposition is given by the registrar to the
applicant to file a counter-statement, etc. The Registrar decides the issue giving both
parties due hearing, if required, or after considering their respective views.
If the person giving notice of opposition of the applicant neither resides nor carries on
business in India, the Registrar may require him to give security for the cost of
proceedings and if such security is not given the Registrar may treat the opposition (or
the application) as abandoned. When the procedure for registration, including the
opposition, if any, is satisfactorily complete, the Registrar is mandated to register the
mark with effect from the date of application.
Time Period
The registration of a trademark is for a period of ten years, but it may be renewed
indefinitely on the payment of the prescribed renewal fees.
Registration is prima facie evidence of validity of the trademark. A registered
trademark shall not be held to be invalid on the ground that it was not registrable
under the Act except upon evidence of distinctiveness. However, if it is claimed and
proved that the trademark had become distinctive due to use by the proprietor at the
date of registration, it can be contended that such evidence was not submitted to the
Registrar at the time of registration. If a trademark has been registered, even if it
lacked distinctiveness, it shall not be declared invalid if, in consequence of the use
made of it, it has acquired a distinctive character in relation to the goods or services
for which it is registered, between its registration and commencement of the legal
proceedings challenging its validity.

SAQ 3 Spend "

5 min.
An applicant wants to apply the same trademark on three different classes of goods.
How many applications does he have to file and where for getting the trademark
registered?
SAQ 4
What is the term for which the registration of trademark remains valid? How is a
trademark different from a patent in respect of the time period which the registration
confers in the two cases?

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Protection of Designs and
Trademarks in India 5.5 REGISTRABILITY OF TRADEMARK
A trademark which consists of at least one of the following essential characteristics
can be registered.
a) The name of a company, individual or firm represented in a particular or special
manner;
b) The signature of the applicant for registration;
c) One or more invented words;
d) One or more words having no direct reference to the character or quality of the
goods except the exceptions listed in the next section;
e) Any other distinctive trademark; and
f) A trademark which has acquired distinctiveness by use over a prolonged period of
time.
A part of trademark can be registered separately in addition to a whole trademark if it
satisfies the requirements of registration of a trademark. The Act also provides for
registration of the same or similar trademark by more than one proprietors in the case
of honest concurrent use or other special circumstances.
The Act lays down absolute grounds for refusal of registration, as also the relative
grounds for such refusal.
Absolute Grounds for Refusal
The Act debars a trademark from registration if it is not distinctive, or consists
exclusively of marks or indications which have become customary in the current
language and practice. It can not be registered if it consists exclusively of marks or
indications which may serve in trade to designate the kind, quality, quantity, intended
purpose, values, geographical origin, or the time of production of the goods or
rendering of the service or other characteristics of the goods or service. Also, a mark
falling in any of the following categories is not registerable:

• a mark which is identical with or deceptively similar to a trademark already

registered in respect of the same goods or goods of the same description as to
deceive the public or cause confusion;
• a mark the use of which would be contrary to any law or which would be
disentitled for protection in a court of law;
• a mark comprising or containing scandalous or obscene matter;
• a mark comprising or containing any matter likely to hurt the religious
susceptibilities of any class or section; and
• a word which is declared by the World Health Organisation (WHO), and notified
by the Registrar as an international non-proprietary name, or a word which is
deceptively similar to such name.
Shape trademarks attract prohibition from registration in certain conditions which may
arise in a very limited number of cases, and it would be difficult in those cases to
satisfy the distinctiveness criterion. A mark cannot be registered as a trademark, if it
consists exclusively of the shape of goods

• which results from the nature of goods themselves. For example, shape of an
apple used for apples or their packaging;
• which is necessary to obtain a technical result. An exclusively technical shape will
be the one if no other shape will perform its function;
• which gives substantial value to the goods. There may be difficulty in interpreting
this provision.
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The word exclusively is to be noted here. If a mark has a shape of any of the Trademark Law in
India-I: Registration
descriptions given above but has other additional features, it could be considered for and Rights
registration subject to other essential qualifications for a trademark. Also, an
unregistered trademark can continue to have a shape of a description that makes it
ineligible for registration.
Relative Grounds for Refusal
A trademark, save in rare circumstances as of honest concurrent use, to be decided by
the Registrar shall not be registered, if it is identical with an earlier trademark, or if it
is similar to an earlier trademark and covers identical goods and services so as to
cause confusion in the mind of the public.
If a trademark has similarity or identity with an earlier well-known trademark but is
sought to be applied to a different category of goods, it will still not be registered, as it
seeks to exploit a well-known brand for an unfair advantage or may harm the
reputation of the earlier, well-known trademark.
If a trademark violates any law, in particular the law of passing off protecting an
unregistered trademark, or the law of copyright, it is not registered.
Additionally, the following category of marks are also not registrable:

• a word which is the commonly used and accepted name of any single chemical
element or single chemical compound; and

• a geographical name or a surname or a personal name or any common

abbreviation thereof or the name of a sect, caste or tribe in India.
The Act provides for registration of same or similar trademark by more than one
proprietor in case of honest, concurrent use, if in the opinion of the Registrar it is
proper to do so in the special circumstances.
Where the properiter of the trademark claims to be entitled to the exclusive use of any
part of the trademark, he may apply to register the whole and the part as separate
trademarks.
Registration of trademarks as a series:
If a person is the proprietor of several trademarks in respect of the same goods which
may differ in respect of:

• statement of the goods they cover; or

• statement of number, price, quality, or names of places; or
• other matter of a non-distinctive character, or
• colour.
Associated Trademarks
If a trademark which is registered, or for which the registration application has been
filed, is identical with another trademark, either registered or for which application
has been filed, in the name of the same person, or the two trademarks so namely
resemble each other as to be likely to decisive or confuse persons other than the
proprietor the Registrar may require, these trademarks to be registered as associated
trademarks.
A registered trademark has to be used on the goods it was applied for. If it is not used
for long, it can be taken off the register on application made by any aggrieved person
to the Registrar or to the Appellate Board on the ground that the owner of the
trademark had no intention to use it while registering it.

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Protection of Designs and
Trademarks in India 5.6 SIMILAR AND DECEPTIVELY SIMILAR
TRADEMARKS
The word similar is not defined in the Act. However, a trademark is said to be
deceptively similar to another mark if it so nearly resembles that other mark as to be
likely to deceive or cause confusion. The deceptively similar mark includes not only
confusion but deception also. Near resemblance is mentioned in the Act in connection
with registered trademarks in the name of the same proprietor which may closely
resemble each other, so as to deceive or cause confusion in the mind of a user. The
Registrar may require them to be registered as associated trademarks.
The following factors are to be taken into consideration when deciding the question of
similarity:

• The nature of the marks;

• The degree of resemblance;
• The nature of goods in which they are likely to be used as trademarks;
• The similarity in nature, character and nature of goods in which it is used;
• The nature of the potential class of consumers; and
• The visual and phonetic similarity.

" Spend SAQ 5

3 min.
A person applies for the registration of following trademarks:
a) the word Rampur to be applied on knives;
b) the word Collegiate for a tooth paste.
Are the applications likely to succeed in each case? Discuss.

5.7 RIGHTS CONFERRED BY REGISTRATION OF

TRADEMARKS
Registration serves as evidence of adoption and selection of the trademark for
specified goods & services. The proprietor of a registered trademark enjoys the
following rights by virtue of the registration:
i) An exclusive right to the use of the trademark in relation to the goods or services
in respect of which it has been registered; if the trademark consists of several
parts, the exclusive right pertains to the use of the trademark taken as a whole; if
the trademark contains matter common to trade and is not of a distinctive
character, there is no exclusive right in such parts.
ii) Registration entitles the proprietor to obtain relief in case of infringement when a
similar mark is used on (a) same, or similar, goods or services, (b) dissimilar
goods or services.
iii) Registration forbids other persons, except the registered, or unregistered permitted
user to use the registered trademark or a confusingly similar mark in relation to
the same goods or services, (or the some description of goods and services) in
relation to which the mark is registered.
iv) Once a trademark is registered, the same or confusingly similar mark can not be
registered for the same or similar goods or services. In case of well-known
trademarks, it can not be registered even for dissimilar goods and services.
v) A registered trademark shall not be used by any one unauthorized in business
papers and in advertising. Use in comparative advertising should not be contrary

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 to honest practices and should not harm the distinctive character or reputation of Trademark Law in
India-I: Registration
the trademark. and Rights
vi) Import of goods and services bearing a mark similar to a registered trademark can
be restricted by the registered proprietor.
vii) A right holder has a right to restrain the use of his registered trademark as trade
name or part of a trade name or name of business concern dealing in the same
goods or services.
viii) A registered trademark continues to enjoy all the rights available to an
unregistered mark, emerging from common law like passing off action.
ix) Registration confers the right to assign or transmit the trademark to another person
by the registered proprietor.
Exception to Rights
There are exceptions to these rights in certain situations where considerations like
vested rights and concurrent use come into play.
Rights of the prior user
If a person A gets registration for a trademark and uses it and another person B has
been using the trademark from an earlier time, the right of B to use it is not affected
after A’s registration, even if B had not opposed it. However, B’s growth of business
may be affected. But if B’s business has got great reputation, A can even be
restrained from using the trademark despite registration.
Rights to use one’s own name
Registration does not confer a right on the proprietor to interfere with the business of
another person who is using, in a bona fide manner, his own name, or that of his place
of business or any description of the character, quality of goods or services.
Concurrent use
A mark which has been in concurrent use in the same jurisdiction on the same,
similar, dissimilar or different goods is not affected by the registration of the same
mark by another person.
It may be reiterated that there is no exclusive right (i) in parts of a trademark and
(ii) in non-distinctive or other matter common to trade. A matter is said to be common
to the trade when it is in common use in the trade, or when it is open to the trade to
use. It could be a word or a symbol or a get-up which any trader in the trade can use
and no body can claim as his own.

5.8 RECTIFICATION OF REGISTER

Rectification means correcting an error or defect. In the context of trademark it means
any change to be made in an entry (including its cancellation or removal from the
register) which has been made in the register of trademarks, following an order to
effect such change.
Cancelling or Varying Registration of a trademark
For getting rectification done an aggrieved person has to make an application in a
prescribed manner to the Appellate Board (AB) or the Registrar. The tribunal (AB or
the Registrar, as the case may be) may then make an order for cancelling or varying
the registration of a trademark on the ground of any contravention, or failure to
observe a condition entered on the register.

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Protection of Designs and Making, Expunging, Varying the Entry
Trademarks in India
The following general grounds are given for approaching the tribunal which may
make an order as it may think fit for making, expunging or varying the entry:

• the absence or omission from the register of any entry, or

• any entry made without sufficient cause, or
• any entry wrongly remaining on the register, or
• any error or defect in any entry in the register.
The tribunal can also, of its own, rectify the register after giving notice to and hearing
the concerned parties.
Correction of Register
The registered proprietor may apply to the Registrar in the prescribed manner for
making following corrections in the register:

• Correction of any error or, entering any change, in the name, address or
description of the registered proprietor, or any other entry relating to the
trademark;
• cancelling the entry of a trademark on the register;
• striking out any goods or classes of goods or services from those in respect of
which a trademark is registered.
Similarly, the Registrar, on an application by a registered user of a trademark, and
after giving notice to the registered proprietor, correct any error or enter any change in
the name, address or description of the registered user.
Alternation of Registered Trademark
The registered proprietor of a trademark may apply to the Registrar for leave to add to
or alter the registered trademark in any manner which does not substantially affect the
identity of the mark. The Registrar may refuse the leave or grant it with conditions
and limitations. If the leave is granted, the application will be advertised in the
prescribed manner, if the Registrar thinks it expedient to do so and if there is any
opposition to it, the Registrar will hear the parties, if so required, the then decide the
matter. If the application is not advertised, the trademark as altered shall be advertised
in the prescribed manner.
Adaptation of Entries in Register to Amended or Substituted Classification
No amendment shall be made to the register which would have the effect of adding
any goods or classes of goods or services to those in respect of which the a trademark
is registered immediately before the amendment is to be made or of antedating the
registration of a trademark in respect of any goods or services. However, it will not
apply if the Registrar is satisfied that the compliance with it would involve undue
complexity, and that the addition or antedating would not affect any substantial
quantity of goods or services and would not substantially prejudice the right of any
person.
Non-Use as a Ground for Removal of a Trademark from Register
A trademark may be taken off the register if an aggrieved person files an application
with the Registrar or the AB, on the ground:

• that the trademark was registered without any bona fide intention of the applicant
for registration to use it in relation to the goods or services as contained in the
application, and that, in fact, there has been no bona fide use of the trademark up
to a data three months before the date of the application; or

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• that up to a date of three months before the date of application and a continuous Trademark Law in
India-I: Registration
period of five years, or longer, from the date on which the trademark is actually and Rights
entered in the register, had elapsed, during which there has been no bona fide use
of the trademark.
Cancellation of a Registered User
Registration of a registered user may be varied or cancelled inter-alia on the ground
that the registered user has used the trademark not in accordance with the agreement,
or the proprietor/use has failed to disclose any material facts for such registration, or
that the stipulation regarding the quality of goods is not enforced, or that the
circumstances have changed since the date of registration, etc.

5.9 SALIENT FEATURES OF 1999 TRADEMARKS ACT

Some significant features of the Act of 1999 are:

• It does not permit registration of trademarks which are imitation of well-known

trademarks;

• It amplifies factors to be considered while defining a well-known trademark;

• It enlarges the ground for refusal of registration;

• It provides for only a single register in place of the two in the earlier Act and
simplifies the procedure of registration;

• It provides for registration of collective marks owned by associations, etc;

• It makes Registrar the final authority in matters relating to registration of

certification trademarks, in place of the central Government, as was the case
earlier;

• It enhances punishment of offences, to bring it at par with that in the Copyright

Act;

• It prohibits use of some one else’s trademark as part of corporate names or names
of business concern;

• It extends application of convention country to include countries which are

members of Group or Union or countries and Inter-Governmental Organisations;
and

• It incorporates other provisions, like amending the definition of “trademarks”,

provisions for filing a single application for registration in more than one class,
increasing the period of registration and renewal from 7 to 10 years; making
trademark offences cognisable, enlarging the jurisdiction of courts to bring the
law in this respect at par with the copyright law, amplifying the powers of the
court to grant ex parte injunction in certain cases and other related amendments to
simplify and streamline the trademark law and procedure.
Let us now summarize the points covered in this unit.

5.10 SUMMARY
• The Trade Marks Act, 1940, was the first Act passed by the Government of India
for uniform and systematic registration of trademarks in India. It was replaced by
the Trade and Merchandise Marks Act, 1958, which in turn was replaced by the
trademarks Act, 1999, the present law. The present Act is in consonance with the
requirements of the TRIPS Agreement. Two new features of the present Act are:
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Protection of Designs and (a) it recognizes shape of goods as a trademark, and (b) trademarks are granted for
Trademarks in India services also, besides goods. The Act recognizes collective trademarks and
certification trademarks; it also recognizes ‘well-known’ trademarks which enjoy
different rights.

• The Register of Trademark contains the record of all registered trademarks with
names, addresses and description of proprietors and users, assignments,
transmissions and conditions and limitations binding the users.

• The Act lays down details regarding what kinds of mark can be registered and
what can not be.

• For registration of a trademark, an application in the prescribed form is filed in the

appropriate office of trademark, indicating the class of goods to which the
trademark is to be applied; the class has to be in accordance with the international
classification for trademarks.

• A single application is to be filed even if the trademark is to be applied to goods

of different classes; however, the fee is payable for each class separately.

• The Registrar after the acceptance of the application advertises it in the Trade
Marks Journal giving opportunity to public to file opposition to the application if
any.

• When the procedure including opposition is satisfactorily complete, the Registrar

is mandated to register the trademark with effect from the date of application, with
a term of protection for 10 years, renewable indefinitely from time to time.

• The rights conferred on the proprietor by virtue of the registration of the

trademark are assignable and transmissible.

• The Act provides for rectification of the Register for cancelling or varying
registration of a trademark or a registered user of the trademark; and for making,
expunging, or varying an entry.

5.11 TERMINAL QUESTIONS Spend 10 min.

1. What kind of trademarks can be registered under the (Indian) Trade Marks Act,
1999? Discuss the grounds for refusal of registration of a trademark in India.
2. What are the rights conferred on the proprietor of a trademark by its registration?
Discuss the exceptions to these rights.

5.12 ANSWERS AND HINTS

Self Assessment Questions

1. As the name implies a well-known trademark is a trademark so well known that if

it is applied to other goods or services, the public would associate the new goods
or services with the earlier category of goods/services

2. a) T b) T c) F d) T

3. Only one; however, the fee for each class of goods is payable separately. The
application in the prescribed form is to be filed in the office of the trademark
registry within whose territorial limits the principal place of business in India of
the applicant, or of the first applicant in the case of a joint application, is situated.

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4. The registration of trademark is valid for a period of ten years, but it may be Trademark Law in
India-I: Registration
renewed on payment of prescribed fee from time to time indefinitely. In the case and Rights
of patent, the term is 20 years.
5. a) Rampur, being the name of a place, is likely to be refused registration.
b) Because it is phonetically capable of causing confusion in the minds of the
public with the well-known Colgate brand, it can not be registered as a
trademark to be applied on tooth paste.
Terminal Questions
1. Refer 5.5
2. Refer 5.7

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