DR.

RAM MANOHAR LOHIYA NATIONAL

LAW UNIVERSITY

2018-2019
Final draft of:
Copyright and Trademark Law:
Topic: Registration process of trade marks in
India

Submitted to:- Submitted by:-

Dr. Vikas Bhati Ayushi Verma
Asst.professor Section -A
Rmlnlu Enrollment no.-35

1
 Semester
VII
ACKNOWLEDGMENT:

I would like to express my heartfelt gratitude to my teacher and

mentor Dr. Vikas Bhati (assistant professor), a special thanks to the
Vice Chancellor of Dr. Ram Manohar Lohiya National Law
University, Mr. Gurdeep Singh for providing me with this
opportunity. I also greatly acknowledge the help and guidance
provided to me by Prof. C.M. Jariwala (Dean Academics).
Thanks and appreciation to my family members for their
constant support, to the library staff and other members of this
institution and lastly to my friends for their help.

2
TABLE OF CONTENTS:

1- Fundamentals of trademarks
2- Registration of trademark
3- Registrability of mark as trademark
4- Deceptively similar
5- Passing off
6- Infringement under the act
7- Well known trademark
8- Conclusion
9- Bibliography

3
Fundamentals of Trademarks:

Trademark is a symbol that allows a purchaser to identify goods or services that have
been proved satisfactory and not to buy goods or services that have not been satisfactory.
Trademarks serve mainly three purposes viz. (i) encourage the production of quality
products; (ii) reduce the customer’s costs of shopping and (iii) help the customer to make
decisions on purchasing products.

Trademarks help promote economic efficiency. If trademarks are not allowed to be

registered with the manufacturers it may eventually take away the incentive of trademark
owning manufacturers to make investments in quality control. There would thus be no
healthy competition among the manufacturers leading to the loss of vitality of the
economy. If we do not have a system of having trademark a manufacturer would get
nothing by improving his product’s quality. And consumers would not be in a position to
identify high or low-quality products. In such a situation a manufacturer who reduce the
price by reducing quality may pocket the benefit of the market. The consequence would
be attempts to produce inferior quality products rather than competition to produce better
quality products.

Today the uniformity of quality of products in the marketplace is the result of the use of
trademarks rather than the inherent nature of production or the reflection of altruistic
motives of manufacturers or distributors. In a system wherein trademarks are allowed to
be infringed, all may take a free ride on the successful sellers trademark and reputation,
there would be no incentive to distinguish one’s own goods and services.

Trademark Infringement as Unjust Enrichment

4
A trademark that has attained consumer recognition has an inherent value and should be
protected from invasion by those how would like to profit from advertising expenditure
that they did not make. In this sense trademark infringement is an undue enrichment.
Trademark law insures that the brand information received by consumers is accurate.
They in fact reduce losses caused by deceit and thus help the consumers. In this sense it
can be said that protection of trademarks is only a facet of consumer protection.

Historically, trademark law grew up as a branch of the tort of fraud and deceit, unfair
competition of which trademark infringement is a part, is, founded on the right of both
dealer and the purchasers to be protected from fraud of which both are victims.
Sometimes, the private rights of trademark owners conflict with the right of the public to
know the truth about the significance of a trademark.

A trademark not only symbolizes the goodwill behind the physical products but also the
penumbra of psychological factors that surround the product. These factors of
merchandising the legal issues of “likelihood of confusion” and “dilution” of the effect of
a given trademark. Sometimes people confuse trademarks law because of ‘irrational’
purchasing decisions of consumers, but this confusion is not justified inasmuch as
trademarks are neutral symbols insofar as advertising and a product’s usefulness is
concerned.

REGISTRATION OF TRADEMARK

PROCEDURE FOR REGISTRATION:

1. Application for Registration

Section 18 of the Trade Marks Act 1999 says that any person, claiming to be the
proprietor of a trademark used or proposed to be used by him, who is desirous of

5
registering it shall apply in writing to the registrar in the prescribed manner for the
registration of the mark.

Essential Ingredients for registration:

(i) Any person:

Any person includes individual, partnership firm, association of persons, a company

whether incorporated or not, a trust, Central or State Government. It does not allow the
representative of the proprietor to apply in his own name.

(ii) Claiming to be proprietor:

A person may obtain proprietorship in a trademark either by use or by registration under

this Act. He may also acquire proprietorship by assignment or by inheritance. In case of
unregistered mark but in use, proprietorship will be the person who first used it in case of
two rival claims whereas in case of proposed use of mark, which comes up for
registration, the designer or the originator will be the proprietor in case of any
controversy. Between two rival claims of user of the mark and designer of the mark the
former will be preferred. At this stage of making application, the proprietor has to show
his bona-fide claim. If the mark is not mistaken on the face of application and also there
is not objection to the claim, the registrar is entitled to accept the application.

(iii) Used or proposed to be used

The law permits registration of a mark, which has been or is being used or is proposed to
be used. In case of proposer of the mark, he must have definite and present intention to
use the mark as on the date of the application. Definite and present intention is different
from the general intention to use the mark sometime in future to something, which he
may think desirable later on. Definite and present intention means a real intention to use
the mark for resolved and settled purpose. In case of used mark, the use in itself is not
sufficient but is to be accompanied with real intention continue with the use.

6
2. Withdrawal of Acceptance

In case the Registrar decides to accept the mark for registration, but before actual
registration, the Registrar may withdraw his acceptance under certain circumstances
under section 19 of the Trade Marks Act 1999. For example, if the Registrar is satisfied
that the application is being accepted in error or that circumstances are such
that such registration should not be granted, he has been empowered to withdraw the
acceptance of application.

3. Advertisement of Application

Once the Registrar for registration has accepted the application, he shall get the
application advertised in the prescribed manner after acceptance. However, the
application shall be advertised before acceptance if the application is related to a
trademark to which section 9(1) and 11(1)(2) apply or in any other case as it seems
expedient to the Registrar.5 The purpose of advertisement is give information to the
public at large in respect of the trademark advertised and afford an opportunity to oppose
the registration of the mark on given grounds. So the advertisement must be complete in
all respects and otherwise the very purpose of advertisement will be frustrated.

4. Opposition to Registration

Section 21 of The Trade Marks Act 1999 allows any person to oppose an application for
registration. “Any person” need not be only a prior registered trademark owner.8 Even a
customer, purchaser or a member of the public likely to use the goods may object to the
registration of a trademark in respect of such goods on the ground of possible deception
or confusion. The period within which opposition to the application for registration can
be filed is three month from the date of advertisement, which can be extended by
Registrar not exceeding one month on application made to him and on payment of the
prescribed fee. So the period cannot exceed four months in Toto.

7
5. Registration

Subject to Section 19 the Registrar is under obligation to register the Trade Mark under
section 23 if he decides in favour of applicant after listening to the opposition. However,
Central Government may direct otherwise on certain grounds. The mark can also be
registered jointly for two or more persons under section 24 if two or more persons agree
to work jointly. In such cases, the registrar shall require a copy of joint venture agreement
to satisfy himself because none of them is entitled to use the mark independently.

REGISTRABILITY OF THE MARK AS TRADEMARK:

Any mark, which is not hit by the definition and section 9, qualifies for registration.
However, a mark qualified under section 9 has to meet the positive objections under
section 11 to be finally registered. Section 11 is the qualification of section 9. Mark
having crossed the threshold under section 9 is capable of getting the protection of the
Trademark Act subject to section 11. It deals with prohibition on registration but does not
hit the inherent capability of mark as to its registrability. The marks prohibited under
section 11 may not be desirable based upon public policy considerations.

Under The Trademark Act, 1999, trademark is defined as to mean, inter alia, a mark,
which can be represented graphically and is capable of distinguishing the goods or
services of one person from those of others.

Absolute Grounds for Refusal of Registration under Section 9:

Whereas Section 9 of The Act lays down the ground for on the basis of which, the
registration of the mark can be denied absolutely. One of the grounds is ‘if the mark is

8
devoid of distinctive character’.10 The phrase ‘distinctive character’ implies the
‘incapability of the mark to distinguish’ the goods or services of one person from that of
the others. It also implies that the mark in itself should be distinctive in certain cases. For
example, common word of dictionary or the name of the place can not be registered
unless it is shown that the common word or the name has become distinctive of his goods
or services in the mind of the purchasing public, but if he succeeds, then he will be
entitled to protect his mark by registration.

Another ground for refusal to register the mark is that the mark should not indicate the
kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of services or other characteristics of the goods or
services. In addition to these, a mark stands disqualified from registration if represents
the shape of goods results from the nature of the goods themselves or shape of the goods
necessary to obtain a technical result or shape which gives substantial value to the goods.

Yet another ground is that the mark must not be consisted of the marks or indications,
which have become customary in current language or in the bona fide and established
practices of the trade it is not desirable to monopolize such marks.

Relative Grounds for Refusal of Registration under Section 11:

While Section 9 provides for absolute grounds for refusal of an application for
registration of trademark, section 11 provides for relative grounds for refusal to register
any trademark. Subsection (1) of section 11 provides that a mark shall be refused
registration if it is identical with an earlier trademark covering similar goods or services
as are covered by earlier trademark. Also refusal can come if the mark is similar to the
earlier trademark covering identical goods or services as are covered by the earlier mark.
The register is under obligation to refuse the registration on the ground of ‘likelihood of
confusion’ on the part of the public. Earlier trademark need not necessarily be registered.
If the trademark is having earlier priority date or is entitled to protection by virtue of

9
being well-known trademark, it would sufficiently be an earlier mark for the purposes of
this section.

So the Registrar before refusing the register a mark that has come up for registration has
to function at three levels. One, he must find out the identity or similarity of mark. Two
he must look for identity or similarity of goods or services to which the mark is going to
be applied. And three, he must check out whether there is any likelihood of confusion on
the part of the public.

DECEPTIVELY SIMILAR

Section 2(h) of the Act defines mark, which can be called deceptively similar. According
to the definition, a mark shall be deemed to be deceptively similar to another mark if it so
nearly resembles that other mark as to be likely to deceive or cause confusion.

The act does not lay down any criteria for determining what is likely to deceive or cause
confusion. So every case of deceptive similarity depends upon the facts and
circumstances of each case after applying the test, which has been laid down by judiciary
through cases. In H. C. Dixon28, the Court held that likely to deceive is a question
largely one of first impression and not necessary to prove the intention to deceive. It is
sufficient if the ordinary user entertains a reasonable doubt29 as to the source of the
product. It is the likely hood of deception and not the actual deception, which is the
deciding factor.

PASSING OFF

With the tremendous growth in trade and commerce, the competitors or other traders tend
to imitate the well known or reputed trademarks by imitating colour scheme or get up or
packaging with a view to pass off such goods as goods of the genuine owner. In cases of
registered trademarks, the owner can move the court under this Act for the infringement
whereas in cases of the unregistered trademarks, the Act recognizes the Common Law

10
remedy of passing off. The tort of passing off is based upon the principle that “no man is
entitled to represent his goods as being the goods of another man; and no man is required
to use any mark, sign or symbol, device or means, whereby without making a direct
representation himself to a purchaser who purchases from him, he enables such purchaser
to tell a lie or to make a false representation to somebody else who is the ultimate
purchaser.”
The purpose of this remedy is three fold:
(i) Protect the interest of the trademark owner in his advantageous relations he has
created in the market place
(ii) Protect the interest of the consumer or purchaser of goods against acts tending to
create false impressions and to deceive or confuse him by inducing the belief that the
business or products of one manufacturer or trader are those of another
(iii) Protect the social interest by promoting fair dealing in the market place and prevent
unethical and unfair practices in trade.

INFRINGEMENT UNDER THE ACT

The registration gives the proprietor exclusive right to use the trademark in relation to
goods or services in respect of which the registration is being made under section 28 of
the Act.33 This right of exclusive use shall be subject to conditions and limitations with
which the registration is made. A registered trademark is infringed when a person, not
being a registered proprietor or permitted user, uses in the course of trade, a mark, which
is identical with or deceptively similar to the registered trademark, in relation to goods or
services in respect of which the trademark is registered.34 Section 29 gives instances of
what shall constitute infringement. The gist of the offence of infringement is that the
mark is deceptively similar and is likely to cause confusion on the part of the public.

In cases of infringement, the plaintiff does not have to prove that he is the user. Mere
registration on his part is enough to give him the right to sue unlike in cases of passing
off wherein the plaintiff has to prove that he is user of the mark, which has become
distinctive of his product.

11
In cases of infringement, there may be instances whereby the defendant does not use the
exact mark but the get up is similar that he is likely to be deceived, such circumstances
would warrant for an injunction is a recognized way back in 1970 by the Supreme Court
in Ruston case. In Torrent Pharmaceuticals the Court held that the test to determine the
two mark identical or resemble each other or is likely to deceive or cause confusion is the
test of an average person with imperfect recollection.

WELL-KNOWN TRADEMARK

Article 6 of The Paris Convention provides for protection of well-known mark by

mandating the member countries to prohibit the use of a trademark, which constitutes a
reproduction, an imitation, or a translation liable to create confusion of a mark considered
by the competent authority of the country of registration or use to be wellknown mark in
that country as being already the mark of a person entitled to the benefits of the
convention. Neither the Paris Convention nor TRIPS agreement contains any definition
of well-known mark, which is defined, for the first time, under Section 2 (1) (zg) of
Indian Trade Marks Act 1999. Section 2 (1) (zg) defines:

Well-known trademark 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.

12
CONCLUSION

Trademarks help promote economic efficiency. If trademarks are not allowed to be

registered with the manufacturers it may eventually take away the incentive of trademark
owning manufacturers to make investments in quality control. There would thus be no
healthy competition among the manufacturers leading to the loss of vitality of the
economy. If we do not have a system of having trademark a manufacturer would get
nothing by improving his products quality. And consumers would not be in a position to
identify high or low quality products. In such a situation, a manufacturer who reduces the
price by reducing quality may pocket the benefit of the market. The consequences would
be attempts to produce inferior quality products rather than competition to produce better
quality products.

13
BIBLIOGRAPHY:

http://patentinindia.com/trademark-registration-india/

https://www.intepat.com/blog/trademark/procedure-trademark-
registration-india/

http://patentinindia.com/procedure-patent-registration-india/

14