Trademarks (The

Trademarks Act, 1999)

(Lectures-10)
UNIT 2 TRADEMARK ACT
a. Introduction to Trademark Law
b. Brief Introduction to related International Treaties and Conventions
c. Definitions (s2), Registration of Trademarks, Procedure, Grounds of Refusal and
Well Known Trademarks (ss9-12, ss18-23 and s33)
d. Passing Off, Infringement and Exceptions to Infringement Actions, Remedies
(ss27-30, s34, ss134-135)
e. Assignment and Licensing (ss48-53)
f. Intellectual Property Appellate Board (ss83-100)
g. Conflicts of Trademarks with Domain Name
h. Unconventional Trademarks

A. INTRODUCTION TO TRADEMARK
In the intricate web of commerce and competition, trademarks stand as the indelible symbols
of a brand’s identity and reputation. These marks, whether in the form of a unique logo, a
catchy slogan, or a distinct word or phrase, serve as the cornerstone of intellectual property
rights[1]. In India, a country known for its rich tapestry of cultures and businesses, the realm
of trademark law plays a pivotal role in safeguarding the interests of creators, entrepreneurs,
and consumers alike.

Trademark law, as it exists in India today, is a testament to the country’s commitment to

fostering innovation and protecting businesses from unfair competition. Over the years, it has
evolved, adapting to the changing dynamics of the global market while staying rooted in its
foundational principles[2]. Trademark registration, a critical aspect of this legal landscape, is
examined in detail, outlining the process, benefits, and challenges involved in securing
trademark protection. The article also elucidates the significance of conducting trademark
searches, a crucial step to avoid potential conflicts and infringement issues.

OBJECTIVES:

1. To define and explain what trademarks are and their significance in the world of
business and commerce.
2. To offer a brief historical context of trademark law in India, highlighting its evolution
over time.
3. To explain the legal framework governing trademarks in India, including key
legislation and regulations.
4. To outline the process of trademark registration in India, from application to approval.
 5. To provide real-world examples or case studies illustrating trademark issues and their
resolution in India.

HISTORICAL OVERVIEW:

The evolution of trademark law in India is a fascinating journey that reflects the changing
dynamics of the country’s legal system and its response to globalization. Trademarks have
played a pivotal role in protecting intellectual property and fostering economic growth. This
evolution can be traced through several significant milestones:

1. Pre-Independence Era: Trademarks in India have a history dating back to ancient

times when artisans and traders used unique marks to distinguish their goods.
However, formal trademark registration began during British colonial rule with the
enactment of the Trade Marks Act, 1940.
2. Post-Independence Reforms: After gaining independence in 1947, India continued
to rely on the Trade Marks Act of 1940. However, realizing the need for
comprehensive reforms, the Indian government introduced the Trade and
Merchandise Marks Act, 1958. This act brought trademark law in line with
international standards.
3. Globalization and the TRIPS Agreement: The 1990s marked a turning point with
economic liberalization and India’s commitment to international treaties, including
the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
This led to the amendment of the trademark law in 1999 to comply with TRIPS,
offering stronger protection to trademarks.
4. Digital Age and E-commerce: With the rise of e-commerce and online businesses in
the 21st century, trademark law faced new challenges related to domain names,
cybersquatting, and counterfeiting. India adapted by amending its law in 2010 to
address these issues and align with international practices.
5. Recent Developments: Up until my last knowledge update in September 2021, India
continued to refine its trademark law to keep pace with global developments. It was
also making efforts to reduce trademark registration times and streamline procedures.

The evolution of trademark law in India reflects its commitment to protecting intellectual
property rights while adapting to the changing economic and technological landscape. The
country’s legal framework has evolved to meet international standards and the needs of its
growing economy, making it a more attractive destination for businesses seeking trademark
protection[3].

IMPORTANCE OF TRADEMARK:

Trademarks are not just symbols; they are the lifeblood of modern business[4]. They
encapsulate the essence of a brand, providing legal protection, building trust, and serving as
valuable assets.

Importance of trademark in the business world:

1. Brand Recognition: Trademarks are the cornerstone of brand recognition. They help
consumers easily identify and differentiate between products and services in a
crowded marketplace. A well-established trademark can evoke emotions and trust,
influencing consumer choices.
 2. Legal Protection: Trademarks provide legal protection against infringement. They
grant the trademark owner exclusive rights to use the mark in connection with their
products or services. This legal protection acts as a deterrent to competitors
attempting to imitate or copy the brand.
3. Asset Value: Over time, successful trademarks can become valuable assets for a
business. The brand equity associated with a well-known trademark can contribute
significantly to a company’s overall worth.
4. Consumer Trust: When consumers see a familiar trademark, they often associate it
with quality and reliability. This trust can lead to brand loyalty, repeat business, and
positive word-of-mouth marketing.
5. Global Expansion: Trademarks are essential for businesses looking to expand
internationally. A strong trademark can transcend language barriers, making it easier
for a brand to enter new markets.
6. Licensing and Merchandising: Trademark owners can license their marks to other
businesses for use in various products or services. This generates additional revenue
streams and can boost brand visibility.

B. BRIEF INTRODUCTION RELATED TO INTERNATIONAL TREATIES AND

CONVENTIONS
Introduction
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an
international agreement administered by the World Trade Organization (WTO) that sets
down minimum standards for many forms of intellectual property (IP) regulation as applied
to nationals of other WTO Members.
It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and
Trade (GATT) in 1994. The TRIPS agreement introduced intellectual property law into the
international trading system for the first time and remains the most comprehensive
international agreement on intellectual property to date
.
Important Checkpoints
Came into force:- 1st Jan 1995
Include most of Berne convention Rules
- Obligation under TRIPS apply to all member equally but developing countries were given
more time to make changes in their national laws. I.e. Implemented within 6 years i.e. 31st
December 200 for developed countries
- TRIPS included provisions regarding :
• National Treatment (Article 3)
• Most Favoured Nation (Article 4): With regard to the protection of intellectual property, any
advantage, favour, privilege or immunity granted by a Member to the nationals of any other
country shall be accorded immediately and unconditionally to the nationals of all other
Members.
- The TRIPS agreement sets out standards of protection to its members
- Enforcement of IPR's, provides procedures, remedies, provisional measures in detail.
- WTO's dispute settlement procedures apply.
- TRIPS plus: In recent years, many developing countries have been coming under pressure
to enact or implement even tougher or more restrictive conditions in their patent laws than are
required by the TRIPS Agreement - these are known as 'TRIPS plus' provisions.

2. World Trade Organization (WTO), 1995

- It is an intergovernmental organization that is concerned with the regulation of international

trade between nations.
- The WTO officially commenced on 1 January 1995 under the Marrakesh Agreement, signed
by 123 nations on 15 April 1994, replacing the General Agreement on Tariffs and Trade
(GATT), which commenced in 1948.
- It is the largest international economic organization in the world.

WTO-TRIPS

The establishment of WTO as a result of institutionalization of international framework of

trade calls for harmonization of several aspects of Indian Law relating to Intellectual Property
Rights. The TRIPS agreement set minimum standards for protection for IPR rights and also
set a time frame within which countries were required to make changes in their laws to
comply with the required degree of protection. In view of this, India has taken action to
modify and amend the various IP Acts in the last few years.

3. Paris Convention for the Protection of Industrial Property, 1883

Check Point
- The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on
Paris March 20, 1883, was one of the first intellectual property treaties.
- It established a Union for the protection of industrial property. The Convention is still in
force.
- The Paris Convention is administered by the World Intellectual Property Organization
(WIPO), based in Geneva, Switzerland.
- India’s membership into the convention came into force on December 7, 1998.
- The Convention applies to industrial property in the widest sense, including patents, marks,
industrial designs, utility models, trade names, geographical indications and the repression of
unfair competition. The substantive provisions of the Convention may be divided into three
main categories namely national treatment, right of priority, common rules

4. Madrid Agreement, 1891

Introduction
- The agreement was established in 1891 for the purpose of providing a mechanism that
would allow for a single and inexpensive international trademark registration and to eliminate
the need for filing, prosecuting or maintaining separate registrations in multiple countries.
- Protocol Relating to the Madrid Agreement Concerning the International Registration of
Marks:
- Adopted on June 27, 1989 at Madrid and entered into force on December 1, 1995. The
Madrid Agreement facilitates the registration of trademarks outside India; it came into force
in India from July 8, 2013.
 Check Point
- The Madrid Agreement and Protocol are open to any State which is party to the Paris
Convention for the Protection of Industrial Property.
- States and organizations party to the Madrid system are collectively referred to as
Contracting Parties.
- The system makes it possible to protect a mark in a large number of countries by obtaining
an international registration that has effect in each of the designated Contracting Parties.
- The system of international registration of marks is governed by two treaties: the Madrid
Agreement, and the Protocol relating to that Agreement.

5. European Union Trademark (EU Trademark)

- The new EU Trademark formerly know as the Community Trademark (CTM), the new
European Union Intellectual Property Office EUIPO, formerly known as the Office for the
Harmonization in the Internal Market.
- The new EU trade mark Regulation enters into force on March 23rd. As a result, the Office
for Harmonization in the Internal Market (OHIM) will change its name to the European
Intellectual Property Office (EUIPO).
- Claiming all Nice class headings in a given class no longer automatically claims ALL goods
and services in the class, even if they do not fall under the class headings (e.g. translation
services). There is a grace period of 6 months to claim all goods in a given class.
- Trademarks that are registered with the EUIPO have the privilege of protection throughout
all 27 European Union member states.

6. The World Intellectual Property Organization (WIPO),1970

The World Intellectual Property Organization (WIPO) was established by a convention of 14

July 1967, which entered into force in 1970. The origin of WIPO goes back to 1883 and 1886
when the Paris Convention for the Protection of Industrial Property and the Berne
Convention for the Protection of Literary and Artistic Works, respectively, were concluded.
Both Conventions provided for theestablishment of an international bureau. The two bureaus
were united in 1893 and, in 1970, were replaced by the World Intellectual Property
Organization, by virtue of the WIPO Convention. WIPO’s objectives are to promote
intellectual property protection throughout the world through co-operation among states and,
where appropriate, in collaboration with any other international organization. WIPO also
aims to ensure administrative cooperation among the intellectual property unions created by
the Paris and Berne Conventions and sub-treaties concluded by the members of the Paris
Union.
Treaties are:-
The Nice Agreement on the International classification of goods and services for the purposes
of registration of trademarks.
The Vienna Agreement for setting up an International classification of the figurative elements
of trademarks.
The Locarno Agreement for establishing an International classification for industrial designs.
All three agreements are administered by the World Intellectual Property Organization.
- Nice Agreement
The Nice Agreement establishes a classification of goods and services for the purposes of
registering trademarks and service marks (the Nice Classification). India follows the NICE
Classification of Goods and Services for the purpose of registration of trademarks. The NICE
Classification groups goods and services into 45 classes (classes 1-34 include goods and
classes 35-45 include services). The NICE Classification is recognized in majority of the
countries and makes applying for trademarks internationally a streamlined process. Every
business entity, seeking to register trademark for a good or service, has to choose from the
appropriate class, out of the 45 classes.
- Vienna Agreement
The purpose of the Vienna classification is to facilitate trademark anticipation searches at the
international level (as a first step to protecting trademarks, it is advised to conduct a
trademark search to make sure that the mark in question is not already in use by another).
- Locarno Agreement
The Locarno Classification is solely of an “administrative character”. It does not bind the
contracting countries with regard to the nature and scope of the protection afforded to the
design in those countries.

C. DEFINITIONS UNDER TRADEMARK ACT, 1999

S2 (1) (e) “certification trade mark” means a mark capable of distinguishing the goods or
services in connection with which it is used in the course of trade which are certified by the
proprietor of the mark in respect of origin, material, mode of manufacture of goods or
performance of services, quality, accuracy or other characteristics from goods or services not
so certified and registrable as such under Chapter IX in respect of those goods or services in
the name, as proprietor of the certification trade mark, of that person.
S 2(1) (g) “collective mark” means a trade mark distinguishing the goods or services of
members of an association of persons not being a partnership within the meaning of the
Indian Partnership Act, 1932 (9 of 1932) which is the proprietor of the mark from those of
others.
S 2 (1) (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;
S 2 (1) (r) “permitted use”, in relation to a registered trade mark, means the use of trade
mark—(i)by a registered user of the trade mark in relation to goods or services—
(a)with which he is connected in the course of trade; and
(b)in respect of which the trade mark remains registered for the time being; and
(c)for which he is registered as registered user; and
(d)which complies with any conditions or limitations to which the registration of registered
user is subject; or
(ii)by a person other than the registered proprietor and registered user in relation to goods or
services—
(a)with which he is connected in the course of trade; and
(b)in respect of which the trade mark remains registered for the time being; and
(c)by consent of such registered proprietor in a written agreement; and
(d)which complies with any conditions or limitations to which such user is subject and to
which the registration of the trade mark is subject;

S2 (1) (zb) “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 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;

S 2(1) (zg) “well-known trade mark”, in relation to any goods or services, means a mark
which has become so to the substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation to other goods or services would
be likely to be taken as indicating a connection in the course of trade or rendering of services
between those goods or services and a person using the mark in relation to the first-
mentioned goods or services.

REGISTRATION OF TRADEMARK
Trademarks are registrable in India under the Trademark Act, 1999. The formal application
process is lengthy and expensive. In order to register a trademark in India, an applicant must
satisfy certain conditions set forth in the act. In order to obtain registration of a brand’s
trademark, the applicant has to meet specific criteria as defined by the act.
The Trade Marks Act of 1999, Section 18(1), specifies who is eligible to file a trademark
application. To begin, anyone who claims to be the owner of a trade mark in relation to goods
or services may apply for Trade Mark registration. A person who claims to be a proprietor
must be able to prove it. When we talk about a ‘person,’ we mean the following:
 A Natural Person,
 A Body Incorporate,
 A Partnership Firm,
 HUF,
 Association of Persons (in case of collective Trademarks),
 Joint Proprietor
 A Trust,
 A Society.
 A Government Authority/Undertaking

Requirements for registration of trademark

The registration of a trademark is one of the most important steps that a business must take in
order to obtain protection in India. The right to use the distinctive symbol that distinguishes
one’s products or services from those of a competitor is granted by trademark registration.
Apart from the specific rules for trademark registration, there are some basic and fundamental
stepping stones that must be followed in order to register a trademark. The following is a list
of those requirements :
 To begin, an application for trademark registration must be submitted to the appropriate
national authority, both national and regional.
 The application must include a clear reproduction of the registration sign, including
colour, design, and any other three-dimensional features.
 This application must also include a list of goods or services to which this sign will apply.
 The application must include the date of first use of the trademark in India, if at all used
 If the mark contains or consists of non-English words, a translation of those words into
English is required.
 To be protected under trademark law, the sign must meet the requirements. It should stand
out from other signs so that customers can recognise the products.
 It must be ensured that the signs do not mislead or deceive the customers in any way.
 Finally, the rights sought cannot be the same as those granted to another trademark owner.
Officials at the national level will ensure this.

Conditions for Registration of Trademark

 Trademarks must not lack any distinctive characteristics.
 Trademarks must not only contain indications that are used in commerce to identify the
quality, type, quantity, purpose, and values, or the geographical source of the products or
services offered.
 Also, Trademarks must not exclusively include marks or indications that are accepted as a
standard in the current language or accepted practices of the trade.
 Trademarks must not have an appearance that deceives or confuses the general public.
 The Trademark must not include or contain things that are likely to harm the religious
sentiments of any section or class of the population of India.
 Trademarks must not include or contain the most scandalous or sexually explicit material.
 The trademark must not be prohibited by the Emblems and Names (Prevention of
Improper Use) Act, 1950.
 Trademarks must not be made up of marks of the shape of the goods that originate from
the characteristics of the products themselves.
 Trademarks must not consist of goods that are necessary for obtaining the desired
technical outcome.
 Trademarks must not provide an unfair competitive advantage over another popular brand
in India that is identical or very similar.

PROCEDURE FOR REGISTRATION OF TRADEMARK

nder Section 6[4] of the Trade Marks Act, 1999, a register, either in papers or digital form
shall keep the records, wholly or partly, of all trade marks with the names, address,
description of the proprietor’s notifications and assignments, except any trust and be kept at
every office premises of the Trade Marks Registry.
The Registrar shall be liable, under Section 7[5], to classify the concerned goods and services
in accordance with the international classification of goods and services for the Trade marks
registration. Also, the it would be upon the discretion of the registrar to decide any question
which may arise in deciding the class in which the goods and services are to fall.

Eligibility
Before applying for trademark registration, you must ensure that your trademark complies
with the conditions outlined in the Trademark Act, 1999. The trademark must be
distinctive, non-descriptive, and non-conflicting with existing trademarks. It should be
capable of distinguishing your goods or services from others, without being identical or
confusingly similar to already registered marks.
 Trademark Search
Once the eligibility of the trademark is determined, a trademark search must be conducted
to ensure that no identical or similar marks are already registered. This can be done through
the Intellectual Property India’s official website or through the Trademarks Registry
database. A thorough search helps prevent conflicts and potential objections during the
registration process, ensuring smoother processing of your application.

Filing the Application (S 18)

Once you confirm that the trademark is unique and available, the next step is to file the
trademark application. This process is handled online through the e-filing system of the
Controller General of Patents, Designs, and Trademarks (CGPDTM). The application
requires specific details, including the applicant’s information, a clear representation of the
trademark, and the goods or services it covers. If applicable, a priority claim can be made if
the trademark is already registered in another country.

Examination of Application
After submission, the trademark application is examined by the Trademark Registrar for
compliance with the relevant laws. The Registrar assesses the application for procedural
deficiencies and checks if the trademark conflicts with existing marks. If objections are
raised, the applicant must respond within a specified time frame, either by submitting
arguments, evidence, or amendments to address the concerns. If the trademark is accepted, it
is then advertised in the Trademark Journal for public notice and opposition.

Publication of Trademark in the Trademark Journal (S 20)

Once your trademark application is accepted by the Trademark Registrar, the next step is
the publication of the trademark in the Trademark Journal. This publication is made
publicly available to allow anyone to raise objections if they believe the trademark conflicts
with an existing registered mark. The public has an opportunity to object within a specified
period if they think the trademark infringes upon their rights. This step ensures transparency
and protects the interests of existing trademark holders.

Replying to Opposition
If an opposition is raised during the publication stage, the applicant must respond within two
months. The response should include a counter statement to defend the validity of the
trademark, arguing that it does not infringe upon any existing trademarks. After the reply is
submitted, the Trademark Registrar reviews the case again, and the application may either
be accepted or rejected, depending on the outcome of the opposition proceedings.

Paying Fees
The application process also requires the payment of fees, which vary depending on the type
of applicant and the number of goods or services covered under the trademark. The fee must
be paid at the time of filing the application, and payment can be made through various online
methods, including net banking, credit/debit cards, or demand drafts. This step is necessary
for the processing of the application and the initiation of further steps in the registration
process.

Amendment and Correction

The Registrar, if feels fit, at anything, before or after the acceptance of the said application
for registration under section 18[11], may permit the correction of any error that may follow
under the Section 22.

Registration and Certificate

If no opposition is filed or if the opposition is successfully defended, the trademark proceeds
to the registration stage. Once registered, the trademark owner is issued a certificate of
registration, which grants exclusive rights to use the trademark. The entire trademark
registration process typically takes 1 to 2 years, depending on the complexity and potential
objections. The digitization of services has made the process more accessible, allowing
applicants to track and manage their applications online through the e-filing system.

These steps outline the process for trademark registration under the Trademark Act, 1999,
providing legal protection for intellectual property and ensuring that trademarks are distinct
and non-infringing.

Duration, renewal,removal and restoration of trademark: Under Section 25 of the

Trademark Act, 1999, a trademark is registered for ten years, with the option to renew it for
successive ten-year periods. The Registrar notifies the trademark owner of the upcoming
expiration, and the owner must apply for renewal and pay the prescribed fees within the
specified time. If renewal conditions are not met, the trademark may be removed from the
register, but it can still be renewed within six months with the payment of a surcharge. If
removed for non-payment, the trademark can be restored within one year by submitting an
application and paying the required fee, ensuring it remains registered for another ten years
.In case of Havells India Ltd. & Anr. v. Amritanshu Khaitan & Ors, the defendant, Everyday
India Ltd. compared their LED with the defendant’s LED with a statement “check lumens
and price before you buy”. The Plaintiff claimed that it was intended to disparaging their
business by this misleading advertisement. The Court dismissed the case on the ground that
mere trade puffery, even though enraging the other rivals does not make it infringement of
trade mark.
It is interesting to note that this Act also provides Rights for the successor of the similar trade
mark which is used in relation to the same goods, if (a) the former proprietor used it prior to
the concerned proprietor in trading the similar goods and services. (b) earlier used prior to the
registration of the trade mark by the concerned proprietor.
GROUNDS OF REFUSAL OF TRADEMARK
A name, word, or symbol that distinguishes goods or services from those of other businesses
can be a subject matter for Trademark registration in India under the Trademark Act, 1999.
The Trade Marks Act, 1999 defines a “trademark” under Section 2(1)(zb) as – “a mark
capable of being represented graphically and which is capable of distinguishing the goods
and services of one person from those of others and may include the shape of goods, their
packaging and combination of colours.”
Thus, it is a type of intellectual property which is denoted by visual representation in the form
of signs, symbols, words, mark or a logo to distinguish one product/service from other.
Though a Trademark registration isn’t mandatory in India, it is preferred to have the mark
registered – that helps strengthen the case – if so required when any objection is faced in the
future. Thus, an applicant, who claims to be the owner of a mark can apply for the
registration of a Trademark by application in writing to the competent registrar in an
authorised manner.

Registration of a mark ensures that those are legally protected and cannot or should not be
used to misrepresent products or confuse consumers. In other words, trademark registration
grants complete ownership to the registered owner of the mark.

Though the act doesn’t explicitly mention the grounds of satisfaction of which a trademark
will be granted registration, it spells out the grounds for refusal of registration of a trademark.
The Trademark Act, 1999 mentions two grounds for refusal of a trademark registration in
India, and those are:

 Absolute grounds for refusal of registration (Section 9)

 Relative Grounds for refusal of registration (Section 11)
Absolute grounds for refusal of registration (Section 9)
Section 9 of the Trademark Act, 1999 lays down various conditions, which makes it a hard
stop for getting a Trademark grant if the proposed mark is found to fulfil those conditions.
The grounds are:

 Marks which are devoid of any distinctive character,

 Marks that are indications or marks that are used in commerce to define the quantity,
quality, type, values, intended purpose, or geographical origin of goods or services
rendered,
 Marks or indications which have become customary in the current language or in the bona
fide and established practices of the trade, shall not be registered,
 Nature of the mark is such that it can deceive the public or cause confusion,
 The mark it contains or comprises of any matter likely to hurt the religious susceptibilities
of any class or section of the citizens of India,
 If the mark comprises or contains scandalous or obscene matter,
 If the use of the mark is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950 (12 of 1950),
 Marks resulting from the nature of the goods themselves,
 Marks that add significant value to the goods,
 Marks whose shape adds significant value to the goods.
These absolute grounds of refusal are related to the benefit of public policy – with the
legislative intent to protect the legitimate interest of the traders as well as the public who are
genuine and bona fide users of various marks in relation to their goods/services.

However, if a mark has acquired “distinctive character” over a period of time and has thus
become a “well known trademark”, the same wont be refused for registration – given the fact
that the applicant is able to prove the same.

In Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks (1977) case, the
Imperial Tobacco Company manufactured and distributed cigarettes with a label “SIMLA”
all over the country. ITC ltd. made an application to the Registrar for the registration in the
year 1960 and 1966. But both the times the registration application was refused by the
registrar. The Calcutta High Court rejected the appeal on the ground that the term “SIMLA”
is a famous geographical place. This term cannot be registered as a trademark.

In the case Aggarwal Sweet Palace v Asst. Registrar (2005), an application for registration of
the trade mark “Aggarwal Sweet Corner” was permitted on the basis of the user and in
respect of sweets and namkeen. Opposite party appeal was dismissed.
M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks- case
Marks with the word like “RASOI” for edible oils cannot be registered as a trademark.
Reason for that is such mark indicates the nature of the product

Relative Grounds for refusal of registration (Section 11)

Section 11 of the Trademark Act, 1999 mentions the relative grounds for refusal for
registration of a mark. If a mark is found to confuse public on account of a mark being
identical or similar to an earlier trademark, the same won’t be allowed for registration under
this section. Various other grounds which are listed under relative grounds of refusal are:
 Section 11(1) states the following grounds for refusal:
 Trademarks which confuse the public as it is identical with an earlier similar trademark of
goods or services.
 Trademarks which confuse the public as it is similar with an earlier identical trademark of
goods or services.
Section 11(2) states the following grounds for refusal:
 Trademarks which would take unfair advantage of a similar or identical earlier well-
known trademark in India.
 Trademarks which would be detrimental to the distinctive character or repute of a similar
or identical earlier well-known trademark in India.
Section 11(3) states the following grounds for refusal:
 The usage of the trademark is bound to be prevented by the law of passing off protecting
an unregistered trademark used in the course of trade.
 The usage of the trademark is bound to be prevented by the law of copyright.
However, if the applicant is able to prove ‘honest concurrent use’ of the proposed mark and
an already registered mark, then the same may not be refused taking the umbrella of Section
12 of the Trademark Act.

In very famous case of Amritdhara Pharmacy v Satyadeo (1906) court established degrees of
comparison between sets of similar word marks. ‘Amritdhara’ and ‘Lakshmandhara’ were
held similar words. Wherein instead of the words being subjected to a side-by-side
comparison or to a punctilious individual analysis, some structural examination of the words
is permitted, particularly with the object of establishing if either possesses any outstanding
characteristic that will unavoidably cause a more or less lasting imprint on the hearers’ mind.

WELL KNOWN TRADEMARK

A well-known trademark, also known as a “famous trademark,” is a mark that has garnered
substantial public recognition and favour. These trademarks are readily distinguishable and
are strongly associated with a particular brand or product. They have expanded their
influence outside of their respective industries, garnering recognition in a variety of fields.
Companies place a high value on their well-known trademarks and afford them extensive
legal protection.

Section 2(1)(zg) of the Trademarks Act, 1999 defines “well-known trade mark”, “in relation
to any goods or services, means a mark which has become so to the substantial segment of
the public which uses such goods or receives such services that the use of such mark in
relation to other goods or services would be likely to be taken as indicating a connection in
the course of trade or rendering of services between those goods or services and a person
using the mark in relation to the first-mentioned goods or services.”
Examples of Famous Trademarks
 Google: As the world’s leading search engine, Google has become synonymous with
internet searching. It’s simple and colourful logo is instantly recognizable.
 Nike: The Nike swoosh is an iconic symbol in the sports and apparel industry. Nike’s
“Just Do It” slogan is also widely recognized and associated with athleticism.
 Amazon: The smiling arrow from Amazon’s logo represents customer satisfaction.
Amazon’s e-commerce platform is used by millions worldwide, and its services extend
beyond online shopping.
Deciding Factors for well-known trademarks
To determine the eligibility of a trademark for well-known status in India under Section 11(6)
of the Trademarks Act, 1999, specific criteria must be met:

 The trademark must have achieved a high level of recognition and goodwill among the
relevant section of the public, including knowledge in India obtained through promotional
efforts.
 The trademark’s use should be substantial and consistent over time, with a wide
geographical presence.
 The trademark’s promotional efforts, such as advertising, publicity, and presentations at
fairs or exhibitions, should be extensive in scope.
 The duration and geographical area of trademark registration or application for registration
under the Act reflect the use and recognition of the trademark.
 A successful record of enforcing the rights associated with the trademark, including
recognition as a well-known mark by courts or Registrars, is a crucial factor.
Filing Procedure for Well-Known Trademarks
Rule 124 of the Trademark Rules, 2017, provides the process for filing a well-known
trademark in India. This process involves the following steps:

1. Filing an application
Any interested party can submit an application online by filling out Form TM-M and
attaching the required documents. These documents include a statement supporting the
application, detailing the reasons for recognizing the trademark as well-known. The
government fees for filing of such application is 1,00,000 Rupees per application.

2. Evidence Submission
The applicant has to gather and submit substantial evidence of the trademark’s recognition
and reputation, including market surveys, sales figures, advertisements, and media coverage.

3. Examination Stage
The Registrar examines the application and evidence to determine if the mark qualifies as
well-known, ensuring only marks with genuine recognition are granted this status.

4. Publication
Upon recognition, the mark is published in the Trademarks Journal for third-party opposition.
If no opposition is filed within the stipulated time, typically four months, the mark is granted
the status of a well-known trademark. However, it is important to note that even after the
introduction of Rule 124, the courts continue to have the power to decide whether a
trademark qualifies as “well-known.”

Case Study: Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan

Background:
Hybo Hindustan, an undergarment retailer, used the term "Benz" and a logo resembling the
famous Mercedes-Benz three-pointed star emblem. Mercedes-Benz sued for trademark
infringement.

Verdict:
The court ruled in favor of Mercedes-Benz, stopping Hybo from using the term "Benz" and
the logo. It was determined that the use of the well-known mark in a different industry caused
confusion and attempted to exploit the brand’s global reputation.

Significance:
This case underscores the protection of well-known trademarks, showing their global value
and the importance of legal safeguards to prevent brand dilution and consumer confusion.