TRADEMARK

- Meaning
- Purpose
- Criteria for registration/refusal
- Registration
What is a trademark?
• Comprise two words “trade” and “mark”

• “Mark” can be any word, device, letter or symbol or any combination of

these items.

• It also includes sounds, 3D shapes, smells/fragrance, etc. (unconventional)

1 st Sou
nd
• Trademark: mark used in trade In India mark regd.
:Y
trade m ahoo Inc’s
ark “yo
del”
Purpose/ function of TM
• Identifies & differentiate

• Signifies source
•
• Provides assurance

• advertises
Need for TM protection

• Fair play, honesty

• Prevent injury
 Trade Marks Act, 1999

• Sec.2(1)(m) “mark” includes a device, brand, heading, label, ticket,

name, signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof;

• Sec.2 (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;

• Sec.2 (1)(q) “package” includes any case, box, container, covering,

folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket,
reel, frame, capsule, cap, lid, stopper and cork;
Other important definitions
• “deceptively similar” – s.2(1)(h)

• “goods” – s.2(1)(j)

• “service’ – s.2(1)(z)
Types of ‘Marks’
The Act of 1999 recognises three kinds of marks:

- Trade Mark – s.2(1)(zb)

- Certification mark – s.2(1)(e): “certification trade mark”

- Collective mark – s.2(1)(g)

Note: ‘Service mark’ is sometimes considered the fourth type of mark, but in practice
it/s subsumed/overlapped by TM.
• Certification mark

It’s a species/kind of TM. But unlike a regular TM, it does not signify trade origin.

It indicate that goods have been certified by proprietor (of certification Mark) to
be of certain characteristics – in respect of origin, material, mode of
manufacture of goods or performance of services, quality,accuracy or other
characteristics
Eg. Proprietor of ISI mark is BIS (Bureau of Indian Standards),
Other eg. : Agmark (agricultural products), Woolmark

Agmark Woolmark
Collective mark
- Another type of TM
- Association of persons is the proprietor of TM.

“(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”

Eg. ISKON (The International Society for Krishna Consciousness), ICAI

(Institute of Chartered Accountants of India)
Collective marks

ICAI
• The definition of TM is for both registered and unregistered marks.

• Regn. under the Act gives exclusive right to TM owner to use the mark and
prohibit others from using it.

• In case of infringement of TM, the owner must prove “use” of TM (by the
accused party) as per the law/Act.

Unregistered TM
• Protected outside the statutory framework (‘Passing off’ action)
• Need abundant evidence to show product (g/s) is quite distinct from product of
the accused
• Prove that accused passed of his product as product of the aggrieved (TM
 Meaning of “use” of TM
As per sec.29(6) person uses a registered mark, if, in particular, he—

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks
them for those purposes under the registered trade mark, or offers or
supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.

 Other forms of TM usage: Judicially
Recognised

• TM in form of domain names. Eg., Yahoo.com, Google.com. The

converse also true i.e., domain names give protection akin to TMs

• Use of TM in metatags as keywords for facilitating internet search and

Ad campaigns. Eg. MakeMyTrip v. Booking.com, 2022 (Del.)
Requisites for Registration (Grounds of
Refusal)
• Absolute grounds s.9
- Outright refusal to register.
- Conversely, they are essentials/pre-requisites for granting
registration

• Relative grounds s.11

Outline of Sec.9: Absolute Grounds for
refusal
• Sec.9(1) – 3 grounds under cl. (a) to (c)

• Sec. 9(2) – 4 grounds under cl.(a) to (d)

• Sec.9(3) – 1 ground (shape) covered under cl.(a) to (c)

 Absolute Grounds for refusal : s.9(1)
• (a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another
person;

• (b) which consist 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;

• (c) which consist exclusively of 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:
 a) Devoid of distinctive character

• TM  must be ‘capable of distinguishing the goods/services of the proprietor

from that of others.

• Definition of “Trade mark” demands distinctiveness [ ref.s.2(1)(zb)]

• “Distinctiveness” means some quality in the TM which earmarks the

goods so marked as distinct from those of other producers of such goods
• TM can be distinctive in any of the two ways:-

• Inherent distinctiveness

- readily registered because of ipso facto unique feature(s) 

- high degree of protection

Eg. In case of invented word (Google, Kodak, Savalon, Dettol, Swiggy, Zepto, BlinkIt), non-
descriptive words

• Acquired distinctiveness

-Acquire distinctiveness only as a result of use or other circumstances (Eg. Himalaya

- in case of descriptive marks or marks using names of places, surnames, etc.

- Distinctiveness measured – based on extent of user, nature of goods

 Acquired distinctiveness…

• The distinctiveness “acquired by use of the trademark is said to be

attained when the trademark loses its primary meaning and acquires
a secondary meaning in the sense that the trademark after such use
reflects the goods and services of the trademark owner as against the
ordinary meaning which might be placed on the trademark.”
(b) Exclusively relate to kind, quality,..
• S.9(1)(b) which consist 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;
 c) Exclusively customary
S.9(1)(c): which consist exclusively of marks or indications which have become
customary in the current language or in the bona fide and established practices of the
trade,

 Common words of language are public property and no monopoly can be allowed over
such words

Eg. “Rasoi” for hydrogenated groundnut oil [Hindustan Development Corp.(1955) Cal]
Court rejected the mark on following grounds:
- it is a common word of language – s.9(1)(c)
 - To the general public the word "Rasol" means cooking and the normal
use of hydrogenated groundnut oil is for cooking purpose. Thus, word "Rasoi"
would imply a direct reference to the character of the goods, thus, violates
s.9(1)(b).

When TM registered despite falling under s.9(1):

Provided that a trade mark shall not be refused registration if before the date
of application for registration it has acquired a distinctive character as a result
of the use made of it or is a well-known trade [Explanation to s.9(1)]
Absolute Grounds for refusal : s.9(2)
A mark shall not be registered as a trade mark if—
• (a) it is of such nature as to deceive the public or cause confusion;

• (b) it contains or comprises of any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India;

• (c) it comprises or contains scandalous or obscene matter;

• (d) its use is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950
Absolute Grounds for refusal : s.9(3) shape
• A mark shall not be registered as a trade mark if it consists exclusively
of—
• (a) the shape of goods which results from the nature of the goods
themselves; or
• (b) the shape of goods which is necessary to obtain a technical result;
or
• (c) the shape which gives substantial value to the goods
Relative Grounds (s.11)
• Main thrust of the provision is to avoid any conflict with any pre-
existing mark

• concerned with examination for conflicting marks where the marks

are identical or similar and the goods or services covered by the trade
mark are either identical or similar.
• The cases in which objection may arise are, where-

rival marks are identical and the goods/services covered by them are
also identical;

rival marks are identical, but goods/services covered by them are not
identical but similar,

rival marks are not identical but similar and the goods/services covered
by them are either identical or similar.
Similar goods
Examples:

 “agarbathies” (incense sticks) and “perfumery”

 “Butter” and “condensed milk”
 Cheese and condensed milk
 Disinfectant and antiseptics
 Disinfecting liquid, Medicated soap and ointment
• Similarity and sameness include visual, phonetic and other
surrounding circumstances (like kind of customers, etc)

• Above scenario cause “likelihood of confusion” in the public/customer

• Confusion includes likelihood of association with earlier TM. (includes

earlier regd.mark & prior pending application)
 How to compare marks?
Marks should be compared as a whole i.e., marks will not be compared side by side,
letter by letter or syllable by syllable. The marks should not be split up or dissected.

Rationale:-

• A customer is not a person with photographic memory of visual details of the

mark. 

• Law considers each customer as one with average intelligence and

imperfect recollection
• Eg. Applicant’s mark “Ma Durga brand” for agricultural implements
and ‘Lion mark’ of objecting party (early user)
 Well Known Trademark
• Unlike other trademarks whose goodwill and reputation is limited to a
certain specified geographical area and to a certain range of products,
well-known trademarks have its goodwill and reputation protected
across the nation and across categories of goods and services.

• Eg.: Google, Benz, etc.

• Defined under s.2(1)(zg)
in relation to any goods or services, means a mark which has become
well known:
 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 (totally different)
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. [refer sec.11(2)]