Trademark and Passing Off
Trademark and Passing Off
Trademark and Passing Off
“mark” and Sections 9, 11, 12, 13 and 14 of the Trademarks Act 1999. The
intended to be interpreted broadly. Any mark (including smell marks and sound
representability and capacity to distinguish the goods of one person from that of
others.
“the test for registrability under the new law will in general, be similar to that
179
Section 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
letter, numeral, shape of goods, packaging or combination of colors or any combination thereof”
149
beyond doubt that a particular trademark is distinctive infact and yet for it to be
and laudatory epithets, this provision has been described as unattractive181, but
the registry and the courts have considered themselves bound by a long history of
case law, much of it dating from a period in which trading conditions were very
different from today. The government intends to take the opportunity offered by
the new law to clarify the position so that any trademark which is demonstrated to
registrable. In some cases of course, the applicant may have an uphill task in
demonstrating, for example, that a common word or name has become distinctive
The Trademarks Act 1999 also proceeds on the same lines to keep the substantive
the definition of the trademark itself and then the marks which are not registrable
prima facie are enumerated in Section 9 and 11 of the trademarks act under the
heads absolute grounds for refusal of registration and relative grounds for refusal
objections inherent in the mark itself or marks otherwise prohibited under any
other law or in public interest. These grounds are independent of the nature of
goods or services. Relative grounds for refusal include identity or similarity with
181
Kerly’s, Law Of Trademarks AndTradenames, 14thedn.Sweet & Maxwell Ltd, 2005, para 8.75
150
earlier trademarks. Further it includes a ground where the mark is similar or
conditions.
The mark should be capable of being represented graphically which all the
another183.
the goods or services, as the case may be, and some person having the
The use of the mark need not indicate any identity of the person using the
mark.
Besides this it should not be hit by the provisions which are the grounds
representation means
182
P.Narayanan, Law of Trademarks and Passing Off, 6th Edition, Eastern law House, p.142.
183
Bud and Budweiser Budrau Trademarks (2002) RPC 38, 747, p. 755.
184
Section 2(1)(zb) of the Trademarks Act 1999.
151
a) the representation of a trade mark is in paper form.
what the mark is that the applicant uses or proposes to use without the
other;
With respect to the graphical representation of sound marks, India has simply
imported The Shield Mark doctrine.186 The Trade Mark Registry has not sought
distinctiveness, the Manual specifically lists sounds which are not distinctive and
In the context of scent marks, the Registry has again directly applied the
Sieckmann test, stating that though smells are registrable, the fulfillment of the
185
Draft Manual on Trademark Law and Practice.[hereinafter ‘draft manual’].
186
Section. 5.2.2.1, Draft Manual.
187
These include, inter alia, nursery rhymes and simple pieces of music of only 1 or 2 notes. See
152
It is disappointing to note that the Registry has not suggested any alternative
9(1)(a) the expression “devoid of distinctive character, that is to say not capable of
and “ capable of distinguishing” are used synonymously. The Act also recognizes
that a mark can acquire distinctive character by use of the mark. Therefore it
appears that there is hardly any difference between the terms distinctive character
and distinctiveness. Below stated are some obvious and general propositions
question of fact189.
Whatever the sign or type of sign, the same amount of distinctive character
itself. This does not mean that the sign or mark is assessed in a vacuum:
189
Seligmann’s Application (1954) 71 RPC 52 at P.55
153
The assessment of acquired distinctive character requires an overall
assessment of the way in which the mark has been used to ascertain
Government
Certain names and pictures of God and Goddess and also religious heads are
the Central Government under section 23(1) of the Trade & Merchandise Marks
Act, 1958. List of marks not registrable as per directions of the Central
Government issued under section 16(1) of the Trade Marks Act, 1940* and
Words “UNITED NATIONS”, letters “UNO” and the official Seal and
Emblem of UNO.
Government of India.
Letters “N.C.L.”.
Letters “I.S.I.” if applied by any person or body other than the Indian
Standards Institution.
Letters “I.C.S.”,
Letters “N.P.L.” \
190
Kerly’s, Law Of Trademarks AndTradenames, 14thedn.Sweet & Maxwell Ltd, 2005, p. 159.
154
The British Royal Arms, The British Crown or the Union jack or any
Letters “I.S.O.” if applied by any person or body other than the Indian
Standards Institution.
Words “Shree Sai Baba” or the device of Shree Sai Baba or any colourable
imitation thereof.
Words “Sri Ramkrishna, Swami Vivekananda, the Holy Mother alias Sri
Holy Mother alias Sri Sarada Devi and the Emblems of the Ramkrishna
Names and pictures of Sikh Gurus, viz. Guru Nanak, guru Angad, Guru
Amar das, Guru Ram Das, Guru Arjun dev, Guru Hargobind, guru Har
Raj, Guru Har Krishnan, Guru Teg Bahadur and Guru Govind Singh
Letters “STC”.
155
Merchandise Marks Act 1958.The law is intended to serve the growing needs of
trade and commerce and to adapt itself to changes in trading practices. Though the
refusal of registration, it is to be seen that any mark, which is not hit by this
Section 9 contains three sub sections. Sub section (1) consisting of three
sub clauses involves the main question of distinctiveness of trade mark applied
for. Sub section (2) contains provisions touching on the matters of public policy.
deceive the public or cause confusion or if it contains matter likely to hurt the
contains scandals or obscene matters or the use of the mark which is prohibited
under Emblems and Names Act 1950.Though the general definition of trade mark
includes the shape of goods or packing. Sub section (3) of section 9 seeks to
The basis of section 9 (1) is that a trader should not obtain statutory
wish to use. Section 9(1) is thus to read along with section 30(Limits of effect of
registered trade mark) section 34 (saving for a vested right) section 35 (saving for
156
a use of name, address or description of an article or substance or service) of the
Act of 1999.Asection 9(1) (a) prohibits the registration of trademarks which are
devoid of any distinctive character. Unlike section 9(b) and(c) it does not give any
registration of mark which does not fulfil the function of trade mark. Proviso to
section 9(1) extends its helping hand to the applicant in order to get done
In Hindustan lever vs. Kilts191 the word SAFEO was held descriptive not
registrable for cleaning powder and liquid for being too close to the word SAFE
meaning ,clean, white. In TY Nant Sparing Water Ltd192 application was made for
was refused registration on the ground that it was not possible to determine
precisely what the mark was and therefore devoid of distinctive character. In 800
FLOWERS TM Application193 in this case the applicants had sought to register the
said trademark i.e. FLOWERS as a service mark for receiving and transferring
orders for flowers and floral products, it was held that mark is not inherently
business .
191
1982 PTC 38
192
(1999)RPC 392,p.395
193
TM Application 2000 FSR(ch.D)
157
In Pam Pharmaceuticals vs. Richardson Vicks Inc&Ors194, the
respondent’s trade mark DROXYL has been registered by the Registrar of the
medicinal preparations. The court held that the respondent’s trademark DROXYL
Application195 the applicant sought to register the words “YOU’VE GOT MAIL”
that the mark was not distinctive. In appeal, the Board of appeal held that the
impugned trade mark composed of common terms to inform email users of the
ordinary fact that they have received new email and that phrase must remain free
that sign were devoid of distinctive character .The Registrar reasons were : self
evidently the mark applied for does not convey complete idea . It invites the
viewer or readers to look for missing words or seek for further explanation.
particularly for chewing gum was refused by OHIM .An appeal to the first Board
was dismissed on the ground that the word DOUBLEMINT was combination of
194
2001(1)42GLR125
195
2002 E.T.M.R. 6, 59
196
2002 RPC,37,729,P-735
197
2004 RPC 18,327
158
two English words and descriptive of characteristics of the goods in question,
namely mint based composition and mint flavoured .On further appeal the court of
First Instance held that DOUBLEMINT was not exclusively descriptive in nature.
OHIM further appealed to the court of European Communities .The court held
that a sign had to be refused to registration if at least one of its possible meanings
cannot registered as trade mark ,the decision of court of First instance was
reversed.
In Enfield India vs. Deepak engine syndicate198 in this case the trade mark
BULLETE in respect of motor cycle was found descriptive and refused for
registration. In Ram Gopal soap factory vs. Godrej soaps Ltd199 the trademark
industries vs. Roop Hosiery factory200 COMEX in respect of Nylon socks was
matter, instructional and teaching material was refused by register on the grounds
that, the word PREPARE designated the intended purpose of goods , it naturally
198
2006 32 PTC 39
199
2006 32 PTC 847
200
2006 32 PTC 555
159
describe one of the purposes for which the material was supplied and also devoid
of distinctive character.
Time of Production
DAY as their trade mark in respect of milk and other milk products, edible oil and
fats but registration was refused on the ground that the mark consists exclusively
of a sign which may serve in trade to designate the time of delivery of the goods
included within the specification, or their quality. The mark is also devoid of
be had not only of natural use on packing but also to natural use in the context of
their qualities.
Geographical Origin
In Liverpool Electric cable Co Ltd’s case202 registration was sought for trade mark
201
2002 RPC 6,257
202
1929 46 RPC 99
160
Refusal of registration under Section 9 (1)I
Customary in language
German vastu expert wrote book titled VASTU for which he was served a legal
notice by SAMHITA, which led Schimieke to withdraw every copy of his book
from market. The court held that ‘vastu’ is a word that belongs to a language
called Sanskrit and hence does not belong to any particular culture/custom. The
court further held that a science subject cannot be claimed as a trademark, the
‘Vastu’ is registered ,then tomorrow it might happen that words like physics,
chemistry etc will also get a similar kind of encouragement for registration in the
countries where they are not popular know. The provision 9(1)I prohibits marks,
of the use of it or it is well known trade mark before the date of an application for
Safi as a trade mark for medical preparation is granted as trade mark although the
word Safi means clear and pure and the medicine is used for blood purification
and clear skin. The registration was granted on the ground of long use.
161
V.2.b. Refusal of registration under Section 9(2)
Section 9(2) (a) seeks to prevent registration of marks which are likely to
deceive the public or cause confusion, which is one of the absolute grounds for
similarity between the proposed mark and another existing mark. Thus a trade
deceptive in the sense that it should not persuade the people that the goods are
services are what they are in fact are not; and non-confusing, if it could be
confused with the trade or service mark of a similar product or services that has
already been registered .Deception or confusion may relate to the proprietor, place
or causing nature of mark is essential requirement for refusal of the mark under
section 9(2) of the Act 1999. If the nature of the mark is of such nature that so as
to deceive the public or cause confusion in the minds of the people is absolute in
its terms which does not require comparison with any other trade mark to arrive at
a result .
the business of a colour lab and studio in Ahmadabad since 1982 in the name and
203
AIR 2001 SCC 4989
162
style of “Muktajeevan colour lab and studio”. The business has acquired
reputation. The suit was filed when the defendant who was earlier carrying an
similar business in the name of Gokul studio started running his business in the
Supreme court granted injunction from further using the same trade name and
observed that law does not permit any one to carry on his business in such a way
of any matter likely to hurt the religious susceptibilities of any class or section of
the citizen of India. It is common trade practice in India to use names and pictures
regarded by the public as offending their religious sentiments, their use in relation
to certain goods may offend the religious sentiments of the people.For example,
considered distasteful .Similarly the use of Hindu Gods of beef or meat products
or such use of Muslim saints for pork products would offend the religious feelings
of the respective sections of the public. Registration of such mark would fall
204
2005 (30) PTC94 (IPAB)
163
RAMAYAN with the device of crown in respect of agarbatties, dhoops, incense
sticks and perfumes etc. He claimed user since 1987 registration was allowed by
merchandise Act 1958.Appellant argued that the impugned mark being name of a
religious book cannot become the subject matter of the individual monopoly and it
“BadshahRamayan” which he claimed, he is the user of mark since 1986 and field
an application in 1996 for registration which was still pending. The Assistant
goods of first respondent and the word RAMAYAN is not included in the list of
marks not registrable as per the directions issued by the central Government.
Appellant field an appeal to intellectual Property Appellant Board in2004 for the
cancelation of the registration of the trade mark which was allowed by Assistant
Register. The board held that Assistant Register has erred in allowing registration
considered obscene.
164
Refusal of registration under Section 9(2) (d)
Section 9(2) (d) prohibits registration of mark if its use is prohibited under
the Emblems and Names (Prevention of improper use) Act 1950. Emblems and
names Act prohibits the improper use of certain emblems and names for
professional and commercial purpose. That Act prohibits person from using any
name or emblem specified in the schedules, the schedule contains a list of twenty
one items of names, emblems or official seal which are prohibited. They inter alia
Gandhi, etc.
Sub section (3) of section 9 is a new provision. The shape of goods and
their packaging is already included in the definition of ‘Mark’ for the purpose of
consists exclusively of a shape which results from the nature of the goods
the shape of those goods gives substantial value to the goods.For registrability, the
shape of goods should be such as being capable of distinguishing the goods of the
identify the product and to distinguish it from competing products, without being
165
Refusal of registration under Section 9(3)(a)
consists exclusively of the shape of goods which results from the nature of goods
itself, the sub section is intended to exclude from registration primaryshapes that
will be available for use by the public at large. The shape of an egg tray, whose
purpose is to hold the eggs, would come within the purview of section 9(3)(a), and
9(3) (b) of the Act should be determined by inquiring whether in substance the
shape solely achieves a technical result. The shape of a squared pinned plug-
unless the pins are square, they will not fit into the standard socket. So its shape is
section 9(3)(b).
In Phillips Vs.Remington205 the court said that, the sub section must be construed
so that its ambit coincides with its purpose “the purpose is to exclude from
registration shapes which are merely functional in the sense that they are
205
1999 RPC 809(CA)
166
Refusal of registration under Section 9(3)I
exclusively of “the shape which gives substantial value to the goods”. There may
be overlap between this sub section and sub section which excludes shapes
necessary to obtain technical result, but the purpose is different. The latter is
intended to exclude functional shapes and former aesthetic type of shapes. Under
section 9(3)I,shapes which are more effective than other alternatives for
performing a particular task add substantial value to the goods would not be
registrable.
Section 11 has been inserted in under the Act of 1999, to lay down the
A trademark shall be registered only if it does not cause confusion in the minds of
the public. The word likelihood to cause confusion used under this subsection
167
In relation to the expression ‘goods and services’ the courts found a useful test206
namely, that regard must be had to the nature and composition of the goods, the
respective uses of the articles, and the trade channels through which the
It provides that where the goods or services are not similar and the use of
Registrar, even though the opponents mark “Caltex” was well known only in
electric kettles etc. on the opposition by the owner of the well-known mark
ESCORTS in respect of a variety of goods in the Indian market, was refused for
registration.
206
Coined by Romer J in Re Jellenik’s Application (1946) 63 RPC 59 at 70. The test was approved
168
Use of the later mark without due cause
The words ‘being without due cause” are somewhat opaque in their effect
and that ‘they have to be read as not merely governing the words “the use of
Sign”, but also as governing the words “Unfair advantage or to be detrimental to”.
Section 11 (2) enacts that the Use of the later mark without due cause
the earlier trademark. In cases where the public are confused into thinking that
supplied under the earlier trademark and the mark the subject of the application,
It lays down that a trademark shall not be registered, if its use is prevented
by the law of passing off or under the law of copyright. The onus is on the
consent. This is the new provision. This overrides all the prohibitory provisions of
169
of all plausible objections, where the owner of the earlier trademark or other
earlier right consents to the registration. This subsection takes into account the
In this sub section a trademark shall not be refused to register under the
grounds mentioned in sub section (2) & (3) unless an objection is made by the
It lays down the factors which the registrar will take into account in
that the registrar shall take into account any fact which he considers relevant
including:-
trademark;
publication for registration of that mark, to the extent they reflect the use
record of successful enforcement and the extent to which the mark has
170
Refusal of registration under Section 11(7)
This sub section briefly indicates the factors to be taken into account by
recognized in the relevant section of the public for the purpose of sub-section
or services.
The business circles dealing with the goods or services to which that
trademark applies.
This sub section provides that the registrar shall not require as a condition,
following namely –
That the application for registration of the trademark has been filed in
India;
171
That the trademark is a well known in, or has been registered in, or in
registration and opposition thereto, the registrar shall protect a well known
trademark against identical or similar trademarks and take into consideration the
bad faith of either the applicant or the opponent affecting the rights relating to the
involved either of the applicant or the opponent affecting the right relating to the
trademark.
This sub section seeks to protect “prior use in good faith” or “prior
good faith where it is in fact done honestly, whether it is done negligently or not.
209
AIR 1973 Bom, 313, 321
172
V.4. P ROCEDURE FOR REGISTRATION OF TRADEMARKS
to be used by him, may apply in writing to the Registrar in the prescribed manner
different classes of goods and services and fee payable thereof shall be in respect
of each such class of goods or services. Under the ‘Trade and Merchandise Marks
Act 1958, separate applications were requited to he made it the applicant desired
registration of a trade mark’ includes the trade mark for goods or services
(a) explain with sufficient precision, a description bv words, of the trade mark
173
The Supreme Court in American Home Products v. Mac Laboratories Pvt
Ltd210.held that it is pertinent to note that both under Section 14(1) of the 1940 Act
and S.18(1) of the 1958 Act (section 18(1)of the Trademarks Act 1999). An
applicant for registration that he is the proprietor of a trade mark which has been
registration.
the registration of a trade mark for different classes of goods shall be made in
classes the Registrar determines that the goods or services applied for fall in class
fee and the divisional fee. The new class created through a division retains the
convention country the convention application date under S.154(12) provided the
country for one or more classes of goods or services, the applicants shall establish
210
(1986) 1 SCC 465, p.481.
211
Trademarks Rules 2002, r 25(19)1.
174
a sufficient ground to the satisfaction of the Registrar for the date of filing of
of the Trademarks Registry within whose territorial limits the principal place of
business in India of the applicant or in the case of joint applicants, the principal
However, where the applicant or any of the joint applicants does not curry
Registry within whose territorial limits the place mentioned in the address for
Trademarks Rules 2002, the appropriate office of the Trademarks Registry for the
or for giving notice of opposition under S.21 or for making an application for
trademark under S.57 or for any other proceedings under the Act and the rules
shall be
date, the office of the Trademarks Registry within whose territorial limits:
date is situate:
175
mentioned in the address for service in India as entered in the
and the register does not contain any address for service in
situate, and
pending at the notified date or is made on or after the notified date, the
of business is situate
176
where neither the applicant nor any of the joint applicants, as the case may be, has
a principal place of business in India, the place mentioned in the address for
India to mean
trade mark:
b) If the business is carried on in India at more places than one, the place
place;
b) if he is carrying any other business in India at more than one place, the
3) where a person does not carry on any business in India but has a place of
177
(a) by every applicant for registration of a trade mark who has no
(b) in the case of joint applicants for registration of a trade mark, if none
I by the proprietor of a trade mark who had his principal place of business
in India at the date of making the application for registration but has
(d) by every applicant in any proceeding under the Act or the rules and
every person filing a notice of opposition, who does not have a principal
address for service in India as required in sub-rule (1) is given, the Registrar shall
be under no obligation to send any notice that may be required by the Act or the
proceedings only may be sent. Such address of the applicant or the opponent shall
178
or the opponent, as the case may be, and all communications and documents in
at, or sending them by post to such address of the applicant or the opponent, as the
The Registrar may, subject to the provisions of this Act, refuse the
writing the grounds for such refusal or conditional acceptance and the materials
after acceptance of his application but before the registration of the mark, apply in
form TM-16 accompanied by the prescribed fee for the correction of any error in
However, no such amendment shall be permitted which shall have the effect of
substantially altering the trade mark applied for or substitute a new specification
212
Trademarks Rules 2002, r 19
213
Section 18 (4) and 18(5).
214
Trademarks Rules 2002, r 41
179
V.4.c. Correction and Amendment
According to s 22, the Registrar may at any time, whether before or after
involving division of such application into two or more applications, die date of
V.4.d.Withdrawal of Acceptance
(b) that in the circumstances of the case the trade mark should not be
the Registrar may, after hearing the applicant if he so desires, withdraw the
If after the acceptance of an application hut before the registration the trade mark,
the Registrar has any objection to the acceptance of the application on the ground
that it was accepted in error, or that the mark ought not to have been accepted in
m the circumstances of the case. Or proposes that the mark should be registered
215
Section 19 of the Trademarks Act 1999.
180
only subject to conditions, limitations, divisions or to conditions additional to or
different from the conditions or limitations, subject to which the application has
been accepted, the Registrar, shall communicate such objection in writing to the
applicant.
Unless the applicant amends his application within thirty days from the
Where the applicant intimates the Registrar within the aforesaid period
that he desires to be heard, the Registrar shall give notice to the applicant of a date
when he will hear him. Such appointment shall be for a date at least fifteen days
after the date of the notice, unless the applicant consents to a shorter notice. The
applicant may state that he does not desire to be heard and submit such
the Registrar shall, as soon as may be after acceptance, cause the application as
216
Trademarks Rules 2002, r 42
181
accepted together with the conditions or limitations, if any, subject to which it has
been accepted.
subsections (1) and (2) of section 11 apply, or in any other case where it appears
or(ii) the application has been permitted to be amended under section 22, the
notify the correction or amendment made in the application, where the error was
it has to be advertised, thought the Registrar may advertise it even before its
217
American Home Products Corporation v. Mac Laboratories Private Limited (1986) 1 SCC 465,
p.481.
218
Whirlpool Corporation v. Registrar of Trademarks (1998) 8 SCC 1 p.15.
182
registration or after the expiry of the period referred to in S.154(2) whichever is
later.
Where a trade mark applied is other than a word, the Registrar may call the
The Registrar may after informing the public in the Journal, put the
applications published in the journal on the Internet, web site or any other
electronic media. The Registrar may after informing the public in the Journal
thinks fit, insert with the advertisement of the application a statement of the
Amendment
insert in the Journal a notification setting out number of the application, the class
or classes in which it was made, the name and address of the principal place of
business In India, if any, of the applicant or where the applicant has no principal
219
Trademarks Rules 2002, r 43
183
place of business in India his address for service in India, the Journal number in
writing to the Registrar within three months from the date of advertisement or re-
Supreme Court held that once an application for registration is made and accepted
by the Registrar , the Registrar has to cause the application to be advertised and
within three months from the date of advertisement , any person may lodge with
provisions made in ss 20 and 21 of the 1958 Act (also 1999 Act) correspond to s
person opposing registration and the applicant may, in reply threto, file a counter-
220
Trade Mark Rules 2002, r 45
221
(1986) 1 SSC 465, p 481
184
permitted absolutely or subject to such conditions or limitations as he may deem
fit to specify.222
The words ‘from the date of achievement’ should mean the date when the
journal is issued and not the date borne on the journal.223 In PavanyOuseph v
under the Trademarks Ac t 1940 on the ground that the Journal was published
belatedly and that, therefore, the notice of opposition filed within four months
from the date of publication of the Trademarks Journal, was within time. But the
applicant who sought registration of the mark took the matter on appeal to the
mark has been received by the Registrar is obviously to let public know
about it and to invite opposition to it, if any. That subject will be served
made available to the public and not when it is got printed or few copies
Agreeing with the aforesaid judgment, the Division Bench of Madras High
222
Whirlpool Corporation v Registrar of Trademarks (1998) 8 SSC 1, p 15
223
Siyaram Kumar Engineering Works Private Limited v The Assistant Registrar of Trademarks
185
held that ‘if the words “date of the advertisement” are given any other meaning, it
would virtually amount to curtailing the period of limitation. Even for determining
the period of limitation either under the Limitations Act, 1963 or under the Code
of Civil Procedure, 1908, it is always the date on which the certified copies of the
judgments and decrees are made available, that is taken into account for the
the registration of a trade mark under s 21 (1) shall be given in triplicate in Form
TM-5 within three months or within such further period not exceeding one month
in the aggregate from the date the Journal is made available to the public (which
date shall be certified by the Registrar as such). The notice include a statements of
the grounds upon which the opponent objects to the registration. If the registration
is opposed on the ground that the marks in question resembles marks already on
the registrar, the registration numbers of such trademarks and the dates of the
application for the registration of a trade mark, it shall bear the fee in respect of
of a single application made under s 18(2), the application for remaining class or
classes shall not proceed to registration until a respect in Form TM-53 for division
of the application together with the divisional fee is made by the applicant.
186
Where in respect of a single application for the registration of a trade
registration after the division of the application in the class or classes in respect of
registration.
opposition to the registration of a trade mark may be given under s 21(1), shall be
made in Form TM-44 accompanied by the fee prescribed in First Schedule before
the expiry of the period of three months under s 21(1). A copy of notice of
21(1)
In BDA Private Limited v Paul P John226 the Delhi High Court observed
that an examination of s 21(1) of the Act reveals that any person may give a notice
in writing ‘in the prescribed manner’ to the Registrar of his opposition in respect
226
(2008) 37 PTC 41 (Del), p 53.
187
months from the date of advertisement for re-advertisement of the application for
registration. It may, however, be given during a further period, not exceeding one
month in the aggregate, as the Registrar allows. However, the extension has to be
applied for ‘in the prescribed manner and on payment of the prescribed fee’. What
is interesting is that s 21(1) refers to the application for extension of time as also
concerned, the said provision uses the expression ‘in the prescribed manner and
expansion used is- ‘in the prescribed manner’. It is important to note that the
a trademark under s 21(1) shall be given in triplicate in Form TM-5 within the
stipulated period.
Rule 47(6) pertains to the application for extension of the period within
Schedule’ before the expiry of the period of three months under s 21(1). Here ,
again, one notices the distinction between the requirement of the prescribed fee
accompanying the application for extension of the period within which a notice of
opposition may be given and the provision pertaining to the notice of opposition
accompanied by the prescribed fee. However, r 47(2) indicates that where a notice
188
trade mark, it shall bear the fee in respect of each class in relation to which the
Form TM-6 within two months from the receipt by the applicant of the copy of
the notice of opposition from the Registrar and shall set out what facts, if any,
alleged in the notice of opposition, are admitted by the applicant. A copy of the
within two months from the date of receipt of the same. The counterstatement
According to r 50, within two months from service on him of a copy of the
counter-statement or within such further period not exceeding one month in the
aggregate thereafter as the Registrar may on request allow, the opponent shall
either leave with the Registrar, such evidence by way of affidavit as he may desire
to adduce in support of his opposition or shall intimate to the Registrar and to the
applicant in writing that he does not desire to adduce evidence in support of his
opposition but intends to rely on the faces started in the notice of opposition. He
shall deliver to the applicant copies of any evidence that he leaves with the
227
R.49 of Trademark Rules 2002.
189
period of one month shall be made in Form TM-56 accompanied by the prescribed
The Registrar shall hear the parties and decide the opposition as per the
provisions laid down in r 56 of the Trademarks Rules 2002. The security for costs
which the Registrar may require under s 21(6) may be fixed at any amount which
he may consider proper, and such amount may be further enhanced by him at any
The Registrar is duty bound to serve a copy of the notice on the applicant
which he relies for his application within two months from the receipt of such
copy of the notice of opposition. If the applicant fails to do so, he shall be deemed
Registrar
Any evidence upon which the opponent and the applicant may rely is to be
submitted to the Registrar within the prescribed time. The Registrar shall give
The Registrar may require the opponent or applicant to give security for
the costs of proceedings before him, where such opponent or applicant, as the case
228
R. 47 of Trademark Rules 2002.
190
may be, neither resides nor carries on business in India subsequently. In default of
such security being duly given, the registrar may treat the opposition or
permit correction of any error in, or any amendment of, a notice of opposition or a
V.4.i. Registration
of a trade has been accepted and either- (i) the application has not been opposed
and the time for notice of opposition has expired; or (ii) the application has been
opposed and the opposition has been decided in favour of the applicant, the
Registrar shall register the said trade mark unless the Central Government directs
otherwise. A trade mark shall be registered as of the date of making of the said
On registration, the entry of a trade mark in the register shall specify the date
of filling of application, the actual date of the registration, the goods or services
and the class or classes in respect of which it is registered, and all particulars
229
According to s 6(1), following entries are to be made in the register of Trademarks- all
registered trademarks with the names, addresses and description of the proprietors, notifications of
assignment and transmissions, the names, addresses and descriptions of registered users,
191
(i) the address of the principal place of business in India of the proprietor
(ii) Where the proprietor of the trade mark has no place of business in
India, his address for service in India as entered in the application for
section 154
(vii) Where the mark is registered pursuant to section 11(4) with the consent
of the proprietor of an earlier trade mark or other earlier right, that fact
and
(viii) The appropriate office of the trade mark registry in relation to the trade
mark230
certificate of registration to the applicant which is to be sealed with the seal of the
trade mark registry. The certificate is to be issued in Form O-2, with such
230
R 59(2), Trade Mark rules 2002.
192
modification as the circumstances of any case may require, and the Registrar shall
from the date of the application by reason of default on part of the applicant, the
Registrar may, after giving notice to the applicant, treat the application as
abandoned unless it is completed within the time specified in the notice. The
Registrar may amend the register or a certificate of registration for the purpose of
the registrar to register a trade mark if there is no opposition. The provision must
be read subject to the substantive provision of the Act which prohibits the
Under section 23(1) if the application has not been opposed and the time
for giving the notice of opposition has expired or if the application has been
opposed and the opposition has been decided in favour of the applicant, the
Registrar is ‘unless the Central Government otherwise directs’ to register the set
trade mark in Part A or Part B of the Register, as the case may be. The trade mark
231
AIR 1958 Bom 56
232
American Home Products Corpn v Mac Laboratories (P) Ltd (1998) 8 SCC 1, p.15
193
In Whirlpool Corporation vs Registrar of Trademarks233 the Supreme
Court stated that after disposal of advertisement and opposition proceedings, there
comes the stage of registration of trade mark under section 23 of the trade and
merchandise marks Act of 1958 which provides that if the application is not
opposed, and the period of filing opposition has expired or opposition has been
decided in favour of the applicant, the registrar shall register a trade mark either in
The Act does not 194lobaliza the registration of two or more persons as
joint proprietors who use a trade mark independently or propose so to use it.
trade mark are such that no one of them is entitled as between himself and other(s)
to use it except: (i) on behalf of both or all of them or (ii) in relation to an article
or service with which both or all of them are connected in course of the trade, then
those persons may be registered as joint proprietors of the trade mark. The Act
shall have affect in relation to any rights to use of the trade mark vested in those
Distinctiveness
for the registration of a trade mark, the Registrar may give advice as to whether
233
(1998) 8 SCC 1, p.15.
194
the trade mark appears as to him prima facie to be distinctive. Where the Registrar
has given such advice in affirmative and an application for registration is made
within three months, the applicant shall be entitled to get back any fee paid, after
giving notice of withdrawal of the application within the prescribed period, if the
Registrar after further investigation or consideration decides that the trade mark is
not distinctive.
may be renewed from time to time234. The initial duration of registration of a trade
mark under the Trade and Merchandise Marks Act 1958 was seven years.
Thereafter, the registration was renewable from time to time. The reason for this
The initial duration of registration of a trade mark under the Trade and
Merchandise Marks Act 1958 was seven years. Thereafter, the registration was
renewable from time to time. The reason for this amendment was to adopt the
234
Under s 25 of the 1958 Act, which corresponds to s 18 of the 1940 Act, the registration of a
trade mark is to be for a period of seven years (ten years under the 1999 Act), but can be renewed
from time to time on application made by the registered proprietor of the trade mark in the
prescribed manner and within the prescribed period and subject to the payment of the prescribed
fee. The renewal of the registration of a trade mark is to be for a period of seven years ( ten years
under the 1999 Act) from the date of expiration of the original registration or the last renewal of
registration, as the case may be: American Home Products Corpn v Mac Laboratories (P) Ltd 1
195
generally accepted international practice and to reduce the workload of the Trade
Mark Office.
Court stated that registration of a trade mark is done initially for a period of seven
years (ten years under the Trade and Merchandise Marks Act 1958) which can be
renewed from time to time in accordance with the provisions of s 25. The renewal
manner within the prescribed period and on payment of the prescribed fee. The
renewal will be for another period of seven years (ten years under the Trade and
Merchandise Marks Act 1958). Sub-sections (3) and (4) of s 25 provide that the
Registrar, at the prescribed time before the expiration of the last registration of the
trade mark, shall send a notice to the registered proprietor of the date of expiration
and the conditions as to payment of the fees upon which a renewal of registration
may be obtained. If, at the expiration of the time prescribed in that behalf, those
conditions have not been duly compiled with, the Registrar may remove the trade
mark from the Register. But the trade mark can be restored and it can be renewed
provided an application is made within one year from the expiration of the last
registration and provided the Registrar is satisfied that it would be just so to do.
V.4.l.(i). Renewal
Rule 63 of the Trade Mark Rules 2002 provides that an application for the
renewal of the registration of a trade mark shall be made in Form TM-12 and may
be made at any time not more than six months before the expiration of the last
registration of the trade mark. Such application for renewal may be filed by the
235
(1998) 8 SCC 1, p 15
196
person who is the proprietor of the registered trade mark or his agent. The
Registrar may accept an application for renewal from the managing trustee,
executors, administrators and the like, when supported by court order or other
If the proprietor in the application for renewal is not the same person or
the same legal entity as the registered proprietor, continuity of the title from the
registered proprietor in whose name the last renewal was effected to the present
owner shall be shown in the first instance by war of affidavit along with the
mark shall be made in Form TM-12 along with the prescribed fee specified in the
Trade and Merchandise Marks Act 1958, before cancellation/ removal of the trade
mark from the register, prior notice should be issued. There is no material
available to show that such a notice has been issued to the petitioner before such
removal. Be that as it may, it was for the petitioner as well to make an application
for renewal along with payment of the prescribed fee every seven years so as to
retain the patent. Further through the order of rejection has been communicated; to
seek review of the order as contemplated would be rather difficult for the
236
(2007) 35 PTC 875 (Kant), pp 875-76
197
In the absence of any such notice being issued to the petitioner, the order
of the respondent authority removing the name of the petitioner from the stating
that there is non-payment of the renewal fee within the prescribed time would be
prejudicial to the petitioner. In the facts and circumstances of the case, to enable
renewal of its registration under s 25(4) shall be made in Form TM-13 after six
months and within one year from the expiration of the last registration of the trade
mark accompanied by the prescribed fee. The Registrar shall, while considering
the request for such restoration and renewal have regard to the interest of other
that effect shall be sent to the registered proprietor and every registered user and
the renewal or restoration and renewal shall be advertised in the Journal (See
prescribed manner and within the prescribed period and subject to the payment of
the prescribed fee, the Registrar shall renew the registration of the trade mark for a
period of ten years from the date of expiration of the original or of the last renewal
of the registration, as the case may be. The Registrar shall, however, not
198
remove trade mark from the register and renew it for a period of ten years if an
application is made in the prescribed form and the prescribed fee and the
surcharge is paid within six months form the expiration of the 1stregistration of the
trade mark.
Where a trade mark has been removed from the register for non-payment
payment of the prescribed fee between six months to one year from the expiration
of the last registration of the trade mark, if satisfied that it is just so to do, restore
the trade mark to the register and renew the registration of the trade mark for a
renewal of its registration under s 25(4) shall be made in Form TM-13 after six
months and within one year from the expiration of the last registration of the trade
mark accompanied by the prescribed fee. The Registrar shall, while considering
the request for such restoration and renewal have regard to the interest of other
notice to that effect shall be sent to the registered proprietor and every registered
user and the renewal of restoration and renewal shall be advertised in the
Journal238.
237
Trademarks Rules 2002, r66
238
Trademarks Rules 2002, r 67
199
V.4.o. Removal of Trade Mark
Before the expiration of the last registration of a trade mark, the Registrar
is duty bound to send notice at the prescribed time and in the prescribed manner to
the registered proprietor of the date of expiration and the conditions as to payment
of fees and otherwise upon which a renewal of registration may be obtained. The
Registrar may remove the trade mark from the register if at the expiration of the
prescribed time, those conditions have not been duly compiled with. The Registrar
At a date not less than three months before the expiration of the last
registration together with the prescribed fee has been received the Registrar shall
notify the registered proprietor or in case of a jointly registered trade mark each of
the joint registered proprietors and each registered user, if any, in writing in Form
Where, in the case of a mark the registration of which (by reference to the
date of application for registration) becomes due for renewal, the mark is
registered at any time six months before the date on which renewal is due, the
registration may be renewed by the payment of the renewal fee within six months
after the actual date of registration and where the renewal fee is not paid within
that period the Registrar shall subject to r 66, remove the mark from the register.
200
Where, in the case of a mark the registration of which (by reference to the
date of application for registration) becomes due for renewal, the mark is
registered after the date of renewal, the registration may be renewed by the
payment of the renewal fee within the six months of actual date of registration and
where the renewal fee is not paid within that period the Registrar shall, subject to r
If, at the expiration of the last registration of a trade mark, the renewal fees
have not been paid, the Registrar may remove the trade mark from the register and
advertise the fact forthwith in the Journal. Provided that the Registrar shall not
remove the trade mark from the register if an application for payment of surcharge
is made under proviso to s 25(3) in Form TM-10 within six months from the
Section 26 provides that where a trade mark has been removed from the
register for failure to pay the renewal fee, it shall nevertheless, for the purpose of
any application for the registration of another trade mark during one year next
after the date of the removal, be deemed to be a trade mark already on the register
unless the tribunal ( Registrar or appellate Board, as the case may be) is satisfied
either: (i) that there has been no bona fide trade use of the trade mark which has
been removed during the two years immediately preceding its removal; or (ii) that
no deception or confusion would be likely to raise from the use of the trade mark
239
Trade Mark Rules 2002, r 64
201
which is the subject of the application for registration by reason of any previous
stated that once a trade mark has been removed from the trade mark has been
removed from the register for failure to pay the fee for renewal, it would,
one year for purposes of any application for registration of another trade mark,
(a) That there has been no bona fide trade use of the trade mark which has been
(b) That no deception or confusion would be likely to arise from the use of the
trade mark which is the subject of the application for registration by reason
of any previous use of the trade mark which has been removed.
corresponding rules 141 to 147 of the Trademark Rules 2000 deal with the
as textile goods, which are to be known as textile goods and to which the special
240
(1998) 8 SCC 1, p 15
202
Restriction on Registration of Textile Goods:
trademark;
c) The registration of trademark shall not give any exclusive right to the
Sec. 80(2) enacts that in respect of any textile goods, the registration of letters or
textile goods:
Rule 145 says that where a mark consists exclusively of letters or numerals
group is deemed to be similar goods. Goods falling in different groups are not
declares that in respect of textile goods certain types of marks are not capable of
203
Any numerals of one digit or of more than six digits not being a balanced
number.
Single letter or any combination of letters of more than six letters, not
Rule 147 stipulates as to what marks are likely to deceive or cause confusion,
Constitution
Industry on 15th September 2003 to hear appeals against the decisions of the
Registrar under the Trademarks Act, 1999 and the Geographical Indications of
Goods (Registration and Protection) Act, 1999. IPAB has its Headquarters at
Chennai and shall have sittings at Chennai, Mumbai, Delhi, Kolkata and
Ahmadabad.
Role of IPAB
The Intellectual Property Appellate Board plays a very important role. In respect
of trademarks an:-
204
1. Appeal from an order or decision of the Registrar of Trademarks can be
under Rule 162 of the Trademarks Rules, 2002 can be filed before the
IPAB.
4. Also original application for rectification of the register under Section 125
Time Limit
An appeal to the IPAB should be filed within 3 months from the date on
person preferring the appeal.An appeal may be admitted after 3 months if the
appellant satisfies the appellate board that he had sufficient cause for not
(1) The Deputy Registrar shall discharge the functions under the general
(2) He shall have the custody of the records of the Appellate Board.
(3) The official seal of the Appellate Board shall be kept in the custody of the
Deputy Registrar.
205
(4) Subject to any general or special directions of the Chairman, the official
seal of the Appellate Board shall not be affixed to any order, summons or
other process save under the authority in writing from the Deputy
Registrar.
(5) The official seal of the Appellate Board shall not be affixed to any
certified copy issued by the Appellate Board save under the authority in
In addition to the functions and duties assigned under rule 26, the Deputy
Registrar shall have the following functions and duties subject to any general or
(ii) to decide all questions arising out of the scrutiny of the appeals and
rules;
(iv) subject to the directions of the Chairman, to fix date of hearing of the
206
(vii) to grant leave to inspect the record of the Appellate Board;
207