V. REGISTRABILITY OF TRADEMARKS – LEGISLATIVE APPROACHshodhganga.inflibnet.ac.in/bitstream/10603/42957/12/12_chapter_5.pdf · 149 V. REGISTRABILITY OF TRADEMARKS – LEGISLATIVE

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V. REGISTRABILITY OF TRADEMARKS – LEGISLATIVE APPROACH

The legislative intent regarding registrability of trademarks can be

gathered from combined reading of the preamble, definitions of “trademark”,

“mark” and Sections 9, 11, 12, 13 and 14 of the Trademarks Act 1999. The

definition of “mark”179 and “trademark”180 are quite comprehensive. They are

intended to be interpreted broadly. Any mark (including smell marks and sound

marks) can be registered as long as it satisfies the dual conditions of graphical

representability and capacity to distinguish the goods of one person from that of

others.

The TRIPS Agreement mandates that ‘ any sign or any combination of

signs, capable of distinguishing the goods or services if one undertaking from

those of other undertakings, shall be capable of constituting a trademark.”

It will be relevant to note Britian’s Approach in this matter as spelt out in

the White Paper on the Reform Of Trademark Law(1990)

“the test for registrability under the new law will in general, be similar to that

which applies at present to registration in Part B Register. A mark will have to be

capable of distinguishing the goods or services of its proprietor. In some cases

however the test will be eased. At present it is possible for it to be established

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

may include shape of goods, their packaging and combination of colours.

180Section 2(1)(m) "mark" includes a device, brand, heading, label, ticket, name, signature, word,

letter, numeral, shape of goods, packaging or combination of colors or any combination thereof”

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beyond doubt that a particular trademark is distinctive infact and yet for it to be

held in law to be not capable of distinguishing. Examples are geographical names

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

be distinctive in fact will in future, be regarded as distinctive in law and therefore,

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

of his goods or services in the minds of purchasing public, but if he succeeds, he

will be entitled to protect his mark by registration.”

The Trademarks Act 1999 also proceeds on the same lines to keep the substantive

law in harmony with the international trend.

V.1. ESSENTIAL REQUIREMENTS FOR REGISTRATION OF TRADEMARKS

In the trademarks act 1999 the requirement of registration is enumerated in

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

of registration respectively. Absolute grounds are those which are based on

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

181Kerly’s, Law Of Trademarks AndTradenames, 14thedn.Sweet & Maxwell Ltd, 2005, para 8.75

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earlier trademarks. Further it includes a ground where the mark is similar or

identical to an earlier trademark , which is what is called a well-known

trademark182. Briefly stated a trademark is registrable if it follows the following

conditions.

The mark should be capable of being represented graphically which all the

categories of mark included in the definition of mark under S.2(1)(m) of

the act obviously satisfy.

It should be capable of distinguishing the good of one person from that of

another183.

The mark is used in relation to goods or services for the purpose of

indicating or so as to indicate a convection in the course of trade between

the goods or services, as the case may be, and some person having the

right as a proprietor or by way of permitted user to the mark.

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

for refusal of registration of the trademark, i.e.; section 9 and 11.

V.1.a. It should be capable of being Graphically Represented

A mark should be capable of being graphically represented184. Graphical

representation means

182P.Narayanan, Law of Trademarks and Passing Off, 6th Edition, Eastern law House, p.142.

183Bud and Budweiser Budrau Trademarks (2002) RPC 38, 747, p. 755.

184 Section 2(1)(zb) of the Trademarks Act 1999.

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a) the representation of a trade mark is in paper form.

b) it is possible to determine from the graphical representation precisely

what the mark is that the applicant uses or proposes to use without the

need for supporting samples etc;

c) the graphical representation can stand in place of the mark used or

proposed to be used by the applicant because it represents the mark and no

other;

d) it is reasonably practicable for persons inspecting the register, or

reading the Trademarks Journal, to understand from the graphical

representation what the trade mark is185.

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

to probe into whether representation through musical notes is intelligible to

everyone, and whether it is all-encompassing. Nonetheless, with regard to

distinctiveness, the Manual specifically lists sounds which are not distinctive and

thus will not be Registered.187

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

graphical representation criteria becomes difficult post the Sieckmann holding188.

185 Draft Manual on Trademark Law and Practice.[hereinafter ‘draft manual’].

186Section. 5.2.2.1, Draft Manual.

187These include, inter alia, nursery rhymes and simple pieces of music of only 1 or 2 notes. See

Section 5.2.2.2, Draft Manual.

188See Section 5.2.3, Draft Manual.

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It is disappointing to note that the Registry has not suggested any alternative

method of graphical representation in spite of stating that smells are registrable.

V.1.b. Capable of distinguishing or Distinctive Character

What is capable of distinguishing is a matter of interpretation. In section

9(1)(a) the expression “devoid of distinctive character, that is to say not capable of

distinguishing” appears which shows that the expression “distinctive character”

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

regarding distinctive character:

Possession of distinctive character, inherent or acquired, by a sign is a

question of fact189.

Whatever the sign or type of sign, the same amount of distinctive character

should be required before the sign is properly registered as a trademark,

whether the distinctive character is inherent or whether it has been

acquired through use.

The assessment of inherent distinctive character depends upon the mark

itself. This does not mean that the sign or mark is assessed in a vacuum:

the trade of goods or services in question provides the context.

189Seligmann’s Application (1954) 71 RPC 52 at P.55

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The assessment of acquired distinctive character requires an overall

assessment of the way in which the mark has been used to ascertain

whether the mark has become distinctive190.

List of marks prohibited from registration by virtue of directions of Central

Government

Certain names and pictures of God and Goddess and also religious heads are

prohibited from being registered as trade marks in terms of directions issued by

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

section 23(1) of the Trade Marks Act, 1999

Words “UNITED NATIONS”, letters “UNO” and the official Seal and

Emblem of UNO.

The device of an arrow on the ground that is the property of the

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.” \

Words “ASHOK CHAKRA” or DHARMA CHAKRA” or the device of

Asoka Chakra or any other colourable limitation thereof.

190Kerly’s, Law Of Trademarks AndTradenames, 14thedn.Sweet & Maxwell Ltd, 2005, p. 159.

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The British Royal Arms, The British Crown or the Union jack or any

colourable limitation thereof.

Letters “I.S.O.” if applied by any person or body other than the Indian

Standards Institution.

Words “Lord Buddha” or the device of Lord Buddha or any colourable

imitation thereof. .3..

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

Sarada Devi or the devices of Sri Ramkrishna, Swami Vivekananda, the

Holy Mother alias Sri Sarada Devi and the Emblems of the Ramkrishna

Math and Mission or colourable imitation thereof.

Words “National”, and “Panchsheel”

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

Name and picture of Chhatrapati Shivaji Maharaj

Letters “STC”.

Name and/or picture of the deity of Lord Venkateswara and/or Balaji

Representation of the Election Symbol of any political party in India.

V.2. ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION

Section 9 of the Trademarks Act 1999 enumerates absolute grounds for

refusal of registration. This section replaces section 9 of the Trade and

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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

section is formulated in a negative language stipulating absolute grounds for

refusal of registration, it is to be seen that any mark, which is not hit by this

provision, would qualify for registration.

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.

It therefore mandates that a mark shall not be registered if it is of such nature as to

deceive the public or cause confusion or if it contains matter likely to hurt the

religious susceptibilities of any class or section of the citizens of India, or if mark

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

prohibit registration of shapes which are in fact, descriptive of the goods

themselves or those which are dictated by their functional requirements or shapes

which give substantial value to the goods.

V.2.a. Refusal of registration under Section 9(1)

Refusal of registration under Section 9(1)(a)

The basis of section 9 (1) is that a trader should not obtain statutory

monopoly through registration in a word which another trader might legitimately

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

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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

clear definition as to the nature of objection. Its purpose is to prohibit generally

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

registration of mark which has acquired a distinctive character as a result of the

use made of it or is a well known trade mark.

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

registration of mark consisting of ‘bottle coloured blue’ in respect of bottled water

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

capable of distinguishing applicant’s goods which has direct reference to their

business .

1911982 PTC 38

192(1999)RPC 392,p.395

193TM Application 2000 FSR(ch.D)

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In Pam Pharmaceuticals vs. Richardson Vicks Inc&Ors194, the

respondent’s trade mark DROXYL has been registered by the Registrar of the

trade mark under the Registration No -508348 in respect of pharmaceuticals and

medicinal preparations. The court held that the respondent’s trademark DROXYL

is derived from pharmaceutical preparation CEFADROXIL and thus designates

kind of goods and devoid of distinctive character.In America online, Inc’s

Application195 the applicant sought to register the words “YOU’VE GOT MAIL”

as a trademark in various classes. The examiner refuses the application finding

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

from individual monopoly.In “Cycling IS ...Trade mark Application”196 the

applicants sought registration as the trademarks consisting of the words “Cycling

IS....”and “Cycling IS...”registration was refused by the registrar on the grounds

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.

InOHIM vs. Wm Wrigley Jr. Company (Doublemint)197 an application for

registration of trademark DOUBLEMINT for goods in classes 3,5and 30

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

1942001(1)42GLR125

1952002 E.T.M.R. 6, 59

1962002 RPC,37,729,P-735

1972004 RPC 18,327

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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

designated characteristics of the goods and services concerned and DOBLEMINT

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

CHABI in respect of washing soap was refused for registration.In J B Hosiery

industries vs. Roop Hosiery factory200 COMEX in respect of Nylon socks was

allowed for registration as non descriptive word with regard to business.

Refusal of registration under Section 9(1)(b)

Purpose of the goods

An application for registration of the word P.R.E.P.A.R.E. in respect of printed

matter, instructional and teaching material was refused by register on the grounds

that, the word PREPARE designated the intended purpose of goods , it naturally

1982006 32 PTC 39

1992006 32 PTC 847

2002006 32 PTC 555

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describe one of the purposes for which the material was supplied and also devoid

of distinctive character.

Time of Production

In Besnier S A’s Trademark Application201applicants wanted to register DAY BY

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

distinctiveness character and it is descriptive, further observed that regard should

be had not only of natural use on packing but also to natural use in the context of

advertising the product in question. The expression DAY BY DAY could

naturally be used by other traders to designate the time of delivery of goods or

their qualities.

Geographical Origin

In Liverpool Electric cable Co Ltd’s case202 registration was sought for trade mark

LIVERPOOL in respect of electric cables .Rejecting the registration of

LIVERPOOL as trademark it was held that the name of an important commercial

centre such as LIVERPOOL even though it might in fact be distinctive of the

goods in respect of which it was sought to be registered, was not registrable as

LIVERPOOL being a well know city was geographical name.

2012002 RPC 6,257

2021929 46 RPC 99

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Refusal of registration under Section 9 (1)I

Customary in language

A German Organisation called SAMHITA run by followers of Maharishi, Mahesh

Yogi, got word “VASTU” registered as its trademark. Marcus schimieke, a

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

learned registrar erred in registering ‘VASTU’ as trade mark because if today

‘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,

indications very common words common to trade or customary in current

language or in established practice of trade from being registered as trade mark,

the same goes with the mark of VASTU.

However if the trade mark has acquired a distinctive character as a result

of the use of it or it is well known trade mark before the date of an application for

registration, the registration cannot be refused. In case of Registrar vs.Hamdard,

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.

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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

registration of trademark. The deception or confusion might arise by reason of

similarity between the proposed mark and another existing mark. Thus a trade

mark is not registrable if it is of such a nature as to deceive the public or cause

confusion. The trademark should be non-deceptive and non-confusing; non

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

of production, place of origin of goods, or it may be on any account. A mark may

likely to deceive or cause confusion when it makes false representation as to

nature, or quality or place of manufacture of the goods. Deceptive representation

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 .

In Laxmikant V. Patel vs. Chetanbhai Shah203, the plaintiff was conducting

the business of a colour lab and studio in Ahmadabad since 1982 in the name and

203AIR 2001 SCC 4989

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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

name and style of “QSS muktajeevan colour lab” subsequently from1995.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

as to persuade the customers or clients in believing that the goods or services

belonging to someone else are his or are associated therewith.

Refusal of registration under Section 9 (2)(b)

Section 9(2) (b) forbids registration of a mark, if it contains or comprises

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

of Gods and Goddesses or religious heads as trademarks. Though per se is not

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,

the use of names /device of deities or religious heads on footwear may be

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

within the prohibitory scope of section 9(2) (a).

In Amritpal Singh vs. LalBabuPriyadarshi and Assistant Register204

respondent field an application in 1994 for the registration of the word

2042005 (30) PTC94 (IPAB)

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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

Assistant Register. Appellant field notice of opposition in 2001 and objections

under section 9,11(a),11(b),11(e),12(1),12(3)and18(1)of the trade and

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

is devoid of distinctive character and it resembles to the mark of First respondent

“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

Register found reliance that word RAMAYAN is capable of distinguishing the

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

of such mark registration was cancelled.

Refusal of registration under Section 9(2)I

Section 9(2) I of the 1999 Act prohibits registration of a trademark which

comprises or contains scandalous or obscene matters. It is obvious that

registration should be denied for marks, which are contrary to morality or

considered obscene.

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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

relate to United Nations organisation, Indian National Flag, Government of India,

state Government, President, Governor, Rashtrapathi, Ashoka Chakra, Mahatma

Gandhi, etc.

V.2.c. Refusal of registration under Section 9(3)

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

registration. Section 9(3) however prohibits registration as a trade mark if it

consists exclusively of a shape which results from the nature of the goods

themselves or such shape of goods is necessary to obtain a technical result or that

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

applicant from those of others. Shape is so distinctive that is primarily serves to

identify the product and to distinguish it from competing products, without being

hit by the provisions of section 9(3), it will qualify registration.

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Under section 9(3)(a) the Act prohibits registration as a trade mark if it

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

would not be considered as capable of distinguishing.

Refusal of registration under Section 9(3)(b)

In the context of section 9(3) (b), a mark shall not be registered if it

consists exclusively of the shape of goods which is necessary to obtain a technical

result. The meaning of “necessary to obtain a technical result” as used in section

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

necessary to achieve a technical result. Hence, will not be registrable under

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

motivated by and the result of technical consideration”.

2051999 RPC 809(CA)

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Refusal of registration under Section 9(3)I

Section 9 (3) I prohibits the registration of trade mark if it consists

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.

V.3. RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION

Section 11 has been inserted in under the Act of 1999, to lay down the

relative grounds for refusal of registration.

Refusal of registration under Section 11(1)

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

includes the likelihood of association with the earlier mark because of

1. Its identity with an earlier trademark and similarity of goods or services

covered by the trademark or

2. Its similarity to an earlier trademark and the identity or similarity of the

goods or services covered by the trademark.

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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

commodities are respectively bought and sold.


It provides that where the goods or services are not similar and the use of

trademark identical with or similar to an earlier trademark without due cause

would take unfair advantage of or be detrimental to the distinctive character or

repute of the earlier trademark, shall not be registered.

In Sunder Parmanand vs. Caltex207,an application for registration of

trademark ‘caltex” in respect of horological and chronometric instruments in class

14 was refused registration, allowing an appeal against the decision of the

Registrar, even though the opponents mark “Caltex” was well known only in

respect of petroleum products.InDilip Chand Aggarwal vs. Escorts Ltd208, a trade

mark ESCORTS which was sought to be registered in respect of electric iron,

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.

206Coined by Romer J in Re Jellenik’s Application (1946) 63 RPC 59 at 70. The test was approved

in Daiquiri Rum Trademark [1969] RPC 600 at 620.

207 AIR 1969 Bom, 24

2081981 AIR Del 150

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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”.

Unfair advantage or to be detrimental to distinctive character

Section 11 (2) enacts that the Use of the later mark without due cause

would take Unfair advantage or to be detrimental to distinctive character or repute

the earlier trademark. In cases where the public are confused into thinking that

there is a commercial connection between the suppliers of the goods or services

supplied under the earlier trademark and the mark the subject of the application,

then it is to be anticipated that the prohibition will apply. Such confusion as to

origin is likely to take unfair advantage of and be damaging to the distinctive

nature or reputation of the earlier trademark.


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

opponents to establish that they have goodwill in an indicium, there will be an

operative misrepresentation and there will be a consequential damage.


It permits registration where the owner of the existing trademark gives

consent. This is the new provision. This overrides all the prohibitory provisions of

section 11 and empowers the registrar to allow registration of a trademark in spite

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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

practical aspects and business realities.


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

owner of the earlier trademark in an opposition proceeding.


It lays down the factors which the registrar will take into account in

determining whether a trademark is a well known trademark or not. It mandates

that the registrar shall take into account any fact which he considers relevant

including:-

knowledge or recognition of that mark in the relevant section of public,

including knowledge in India obtained as a result of promotion of the

trademark;

duration, extent and geographical area of the use of the mark

duration, extent and geographical area of any promotion of the mark,

including advertising or publicity and presentation, at fairs or exhibitions.

duration, extent and geographical area of any registration or any

publication for registration of that mark, to the extent they reflect the use

or recognition of the mark,

record of successful enforcement and the extent to which the mark has

been recognized as a well known mark by any court or Registrar.

171


This sub section briefly indicates the factors to be taken into account by

the registrar while determining whether a trademark is a well- known or

recognized in the relevant section of the public for the purpose of sub-section

(6).The registrar is required to take into account the following things:-

The number of actual or potential consumers of the goods or services.

The number of persons involved with the channel of distribution of goods

or services.

The business circles dealing with the goods or services to which that

trademark applies.


It provides that a trademark needs to be well known in at least one relevant

section of the public.


This sub section provides that the registrar shall not require as a condition,

for determining whether a trademark is a well-known trademark, any of the

following namely –

That the trademark has been used in India;

That the trademark has been registered;

That the application for registration of the trademark has been filed in

India;

172

That the trademark is a well known in, or has been registered in, or in

respect of which an application for registration has been filed in any

jurisdiction other than India; or

That the trademark is well- known to the public at large in India.


This subsection provides that while considering an application for

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

trademark. This subsection emphasizes the fundamental principle of according

protection to well known trademarks. It recognizes the possibility of bad faith

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

registration on good faith” before the commencement of the Act, of an identical or

similar trademark against a well known trademark. In SurajmalDyduramiji Soap

vs. ShrikisanRamkisan209, it was held that a thing shall be deemed to be done in

good faith where it is in fact done honestly, whether it is done negligently or not.

209 AIR 1973 Bom, 313, 321

173

V.4. PROCEDURE FOR REGISTRATION OF TRADEMARKS

V.4.a. Application for registration

Any person claiming to be the proprietor of a trade mark used or proposed

to be used by him, may apply in writing to the Registrar in the prescribed manner

for the registration of his trade mark.

V.4.a.(i). Single Application for Different Classes of Goods and Services

A single application may be made for registration of a trademark for

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

to register a trade mark in more than one class.

According to r 2(1)I of the Trademarks Rules 2002. An ‘application for

registration of a trade mark’ includes the trade mark for goods or services

contained in it. According to r 25(12), an application for the registration of a trade

mark for goods or services shall:

(a) explain with sufficient precision, a description bv words, of the trade mark

if necessary; to determine the right of the applicant;

(b) be able to depict the graphical representation of the made mall,

(c) be considered as a three dimensional trade mark only it the application

contains a statement to that effect:

(d) be considered as a trade mark consisting of a combination of colours, only

if the application contains a statement to that effect.

174

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 must be a person claiming to be the proprietor of a trade

mark used or proposed to be used by him. Therefore, unless it is the case of an

applicant for registration that he is the proprietor of a trade mark which has been

used by him or which it proposed to be used by him he is not entitled to

registration.

According to r 25(9) of Trademarks Rules 2002, a single application for

the registration of a trade mark for different classes of goods shall be made in

Form TM-5I.Where an applicant files a single application in more than one

classes the Registrar determines that the goods or services applied for fall in class

or classes in addition to those applied for, the applicant my restrict the

specification of goods or services to the class applied for, or amend that

application to add additional class or classes on payment of the appropriate class

fee and the divisional fee. The new class created through a division retains the

benefit of the original filing date or in the case of an application, from a

convention country the convention application date under S.154(12) provided the

claim was otherwise properly asserted in the initial application.211

Where a single application under s.18(2) is filed from a convention

country for one or more classes of goods or services, the applicants shall establish

210(1986) 1 SCC 465, p.481.

211Trademarks Rules 2002, r 25(19)1.

175

a sufficient ground to the satisfaction of the Registrar for the date of filing of

application in all such classes.

V.4.a.(ii). Application to be Filed in the Office of Trademarks Registry

The application for registration of a trade mark is to be filed in the office

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

place of business of the first applicant is situated.

However, where the applicant or any of the joint applicants does not curry

on business in India, the application is to be filed in the office of the Trademarks

Registry within whose territorial limits the place mentioned in the address for

service in India as disclosed in the application is situated. According to r 4 of the

Trademarks Rules 2002, the appropriate office of the Trademarks Registry for the

purposes of making an application for the registration of a trade mark under s 18

or for giving notice of opposition under S.21 or for making an application for

removal of a trademark under S.47 or cancelling or varying the registration of a

trademark under S.57 or for any other proceedings under the Act and the rules

shall be

a) in relation to a trade mark tin the Register of Trademarks at the notified

date, the office of the Trademarks Registry within whose territorial limits:

1) the principal place of business in India of the registered

proprietor of the trade mark as entered in the register as such

date is situate:

2) where there is no entry in the register as to the principal place

of business in India of the registered proprietor, the place

176

mentioned in the address for service in India as entered in the

register at such date is situate;

3) in the ease of jointly registered proprietors, the principal place

of business in India of the proprietor whose name is entered

first in the register as having such place of business in India at

such date is situate

4) where none of the jointly registered proprietors is shown in the

register as having a principal place of business in India, the

place mentioned in the address for service in India of the joint

proprietors as entered in the register at such date, is situate;

5) if no principal place of business in India of the registered

proprietor of the mark or in the case of joint registration, of any

of the joint proprietors of the mark, is entered in the register,

and the register does not contain any address for service in

India, the place of the office of the Trademarks Registry where

the application for registration of the trade mark was made, is

situate, and

b) in relation to a trade mark for which an application for registration is

pending at the notified date or is made on or after the notified date, the

office of the Trademarks Registry within whose territorial limits

1) the principal place of business in India of the applicant as

disclosed in the application or, in the case of joint applicants,

the principal place of business in India of the applicant whose

name is first mentioned in the application, as having such place

of business is situate

177

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

service in India as specified in the application is situated.

V.4.a.(iii). Principal Place of Business of the Applicant

Rule 3 of the Trademarks Rules 2002.defines. ‘principal place of business in

India to mean

1) where a person carries on business in the goods or services concerned in a

trade mark:

a) if the business is carried in only one place. That place

b) If the business is carried on in India at more places than one, the place

mentioned by him as the principal place of business in India:

2) where a person it not carrying on business in the goods or services

concerned in a trade mark

a) if he is carrying on any other business in India at only one place, that

place;

b) if he is carrying any other business in India at more than one place, the

place mentioned by him as the principal place of business

3) where a person does not carry on any business in India but has a place of

residence in India, then such place of residence in India.

V.4.a.(iv). Address for Service

According to Rule 18 of the Trademark Rules 2002, an address for service in

India shall be given

178

(a) by every applicant for registration of a trade mark who has no

principal place of business in India;

(b) in the case of joint applicants for registration of a trade mark, if none

of them has a principal place of business in India;

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

subsequently ceased to have such place;

(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

place of business in India.

(e) by every person granted leave to intervene under rule 94.

Any written communication addressed to a person as aforesaid at an address for

service in India given by him shall be deemed to be properly addressed. Unless an

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

rules and no subsequent order or decision in the proceedings shall be called in

question on the ground of any lack or non-service of notice.

An applicant for registration of a trade mark or an opponent filing notice

of opposition may notwithstanding that he has a principal place of business in

India, if he so desires, may specifically request in writing, the Registrar with an

address in India to which communications in relation to application or opposition

proceedings only may be sent. Such address of the applicant or the opponent shall

be deemed unless subsequently cancelled, to be the actual address of the applicant

179

or the opponent, as the case may be, and all communications and documents in

relation to the application or notice of opposition may be served by leaving them

at, or sending them by post to such address of the applicant or the opponent, as the

case may be212.

V.4.b. Acceptance or Refusal of Application

The Registrar may, subject to the provisions of this Act, refuse the

application or may accept it absolutely or subject to such amendments,

modifications, conditions or limitations, if any, as he may think fit. In the case of

a refusal or conditional acceptance of an application, the Registrar shall record in

writing the grounds for such refusal or conditional acceptance and the materials

used by him in arriving at his decision213

V.4.b.(i). Amendment of Application—Section 18(4)

An application for registration of a trade mark may, whether before or

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

or in connection with his application or any amendment of his application.

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

of goods or services not included in the application as filed214.

212 Trademarks Rules 2002, r 19

213Section 18 (4) and 18(5).


180

V.4.c. Correction and Amendment

According to s 22, the Registrar may at any time, whether before or after

acceptance of an application for registration, permit the correction of any error in

or in connection with the application or permit an amendment of the application.

However, if an amendment is made to a single application referred to in s 18(2)

involving division of such application into two or more applications, die date of

making of the initial application is to be deemed to be the date of making of the

divided applications so divided.

V.4.d.Withdrawal of Acceptance

After the acceptance of an application for registration of a trade mark but

before its registration, the Registrar is satisfied –

(a) that the application has been accepted in error; or

(b) that in the circumstances of the case the trade mark should not be

registered or should be registered subject to conditions or limitations or to

conditions additional to or different from the conditions or limitations

subject to which the application has been accepted,

the Registrar may, after hearing the applicant if he so desires, withdraw the

acceptance and proceed as if the application had not been accepted215.

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

215Section 19 of the Trademarks Act 1999.

181

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

dare of receipt of the communication to comply with the requirements of the

Registrar or applies for a hearing the acceptance of the application shall be

deemed to be withdrawn by the Registrar, and the application shall proceed as if it

had not been accepted.

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

submissions, as he may consider desirable.The Registrar may, after hearing the

applicant, on considering the submissions, if any, of the applicant, pass such

orders as he may deem fit216.

V.4.e. Advertisement of Application

According to Section 20, when an application for registration of a trade

mark has been accepted, whether absolutely or subject to conditions or limitations,

the Registrar shall, as soon as may be after acceptance, cause the application as

216Trademarks Rules 2002, r 42

182

accepted together with the conditions or limitations, if any, subject to which it has

been accepted.

The Registrar may, however, cause the application to be advertised before

acceptance if it relates to a trade mark to which sub-section (1) of section 9 and

subsections (1) and (2) of section 11 apply, or in any other case where it appears

to him that it is expedient by reason of any exceptional circumstances so to do.

Where an application has been advertised before acceptance or after

advertisement of an application: (i) an error in the application has been corrected;

or(ii) the application has been permitted to be amended under section 22, the

Registrar may in his discretion cause the application to be advertised again or

notify the correction or amendment made in the application, where the error was

corrected or application was amended.

Once an application for registration is made and accepted by the Registrar,

the Registrar has to cause the application to be advertised217. Where an application

has been accepted either absolutely or subject to certain conditions or limitations,

it has to be advertised, thought the Registrar may advertise it even before its

acceptance in certain situations contemplated by that section.218

V.4.e.(i). Advertisement in the prescribed Manner

An application for the registration of a trade mark required or permitted to

be advertised by S.20(1) or to be re-advertised by s 20(2) shall be advertised in the

Journal ordinarily within six months of the acceptance of an application for

217American Home Products Corporation v. Mac Laboratories Private Limited (1986) 1 SCC 465,

p.481.

218Whirlpool Corporation v. Registrar of Trademarks (1998) 8 SCC 1 p.15.

183

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

applicant to furnish a camera-ready copy of the trade mark ordered to be

advertised to scan electronically into a Desktop publishing package.

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

make available the Journal in CD-ROM on payment of the cost thereof219.

Where an application relates to a series of trademarks differing from one

another in respect of the particulars mentioned in s 15(3), the Registrar may, if he

thinks fit, insert with the advertisement of the application a statement of the

manner in which the several trademarks differ from one another.

V.4.e.(ii). Notification in the Prescribed Manner of the Correction or

Amendment

In the case of an application to which s 20(2)(b) applies, the Registrar

may, if he so decides, instead of causing the application to be advertised again,

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


184

place of business in India his address for service in India, the Journal number in

which it was advertised for correction or amendment made in the application220.

V.4.f. Opposition to Registration

Section 21 enables a person to give notice of opposition to registration in

writing to the Registrar within three months from the date of advertisement or re-

advertisement of an application for registration or within such further period, not

exceeding one month in the aggregate as the Registrar allows.

In American Home Products Corpn v Mac Laboratories (P) Ltd,221 the

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

the Registrar a notice of opposition in writing to the registration of such mark. A

copy of such notice of opposition is to be served upon the applicant. These

provisions made in ss 20 and 21 of the 1958 Act (also 1999 Act) correspond to s

15 of the 1940 Act.

Under s 21, notice of opposition may be given to the Registrar by any

person opposing registration and the applicant may, in reply threto, file a counter-

statement. Thereafter the Registrar is required, after giving an opportunity of

hearing to the applicant and his opponent, to decide whether registration is to be

220 Trade Mark Rules 2002, r 45

221 (1986) 1 SSC 465, p 481

185

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

Registrar of Trademarks224, the notice of opposition was accepted by the Registrar

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

High Court, who held:

The object of advertising that an application for the registration of a trade

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

only when the journal is disturbing among the subscribers or otherwise

made available to the public and not when it is got printed or few copies

or cuttings disturbed among the subordinate offices of the Trademarks

Registry or among the applicants for registration.

Agreeing with the aforesaid judgment, the Division Bench of Madras High

Court in Nalli Sambasivam and Another v Deputy Registrar of Trademarks,225

222Whirlpool Corporation v Registrar of Trademarks (1998) 8 SSC 1, p 15

223Siyaram Kumar Engineering Works Private Limited v The Assistant Registrar of Trademarks

and Another (1996) 2 DLT 179.

224 AIR 1952 Tra&Coch 77

225 (2007) 34 PTC 553 (Mad) (DB)

186

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

purpose of calculating limitation.’

V.4.f.(i). Notice of Opposition

According to r 47 of the Trademarks Rules 2002, a notice of opposition to

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

Journals in which they have been advertised shall be set out.

Where a notice of opposition has been filed in respect of a single

application for the registration of a trade mark, it shall bear the fee in respect of

each class in relation to which the opposition is filed in Form TM-5.

Where an opposition is filed only for a particular class or classes in respect

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.

187

Where in respect of a single application for the registration of a trade

mark, no notice of opposition is filed in a class or classes, the application in

respect of such class or classes shall subject to s 19 and s 23(1), proceed to

registration after the division of the application in the class or classes in respect of

which an opposition is pending.

All notice of opposition to registration of a trade mark for goods for

services received in respect of a particular Journal shall be published in the

Journal. However, it shall not be constructed to presume that all remaining

trademarks from a particular journal so published shall automatically proceed to

registration.

An application for an extension of the period within which a notice of

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

opposition shall be ordinarily served by the Registrar to the applicants within

three months of the receipt of the same by the appropriate office.

V.4.f.(ii). Prescribed Manner and on Payment of the Prescribed Fee Section

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

of an application for registration. Such notice is required to be given within three

226(2008) 37 PTC 41 (Del), p 53.

188

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

to the notice of opposition. Insofar as the application for extension of tome is

concerned, the said provision uses the expression ‘in the prescribed manner and

on payment of the fee’. However, in respect of the notice of opposition the

expansion used is- ‘in the prescribed manner’. It is important to note that the

expression ‘and on payment of the prescribed fee’ is absent on respect of the

notice of opposition. Rule 47 deals with notice of opposition to the registration of

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

which a notice of opposition may be given. It stipulates that such an application

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). 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

being filed in triplicate in Form TM-5 without any reference to it being

accompanied by the prescribed fee. However, r 47(2) indicates that where a notice

of opposition has been filed in respect of a single application for registration of a

189

trade mark, it shall bear the fee in respect of each class in relation to which the

opposition is filed in Form TM-5.

V.4.f.(iii). Counter –Statement

The counter-statement required by s 21(2) shall be sent in triplicate in

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

counterstatement shall be ordinarily served by the Registrar to the opponent

within two months from the date of receipt of the same. The counterstatement

shall be verified in the same manner as the opposition as started in r 48(1)(e)227.

V.4.f.(iv). Evidence in Support of Opposition

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

Registrar and intimate the Registrar in writing of such delivery.

If any opponent takes no action within the aforesaid time, he shall be

deemed to have abandoned his opposition. An application for the extension of

227R.49 of Trademark Rules 2002.

190

period of one month shall be made in Form TM-56 accompanied by the prescribed

fee before the expiry of period of two months as mentioned above.

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

stage in the opposition proceedings228.

V.4.g. Counter-statement from the Applicant

The Registrar is duty bound to serve a copy of the notice on the applicant

for registration. The applicant shall send a counter-statement of the grounds on

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

to have abandoned his application. If the applicant sends such counter-statement,

the Registrar shall serve a copy thereof on the opponent.

V.4.h. Submission of Evidences and the Decision of

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

them an opportunity of being heard, if they so desire.

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.

191

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

application, as the case may be, as abandoned.The Registrar may, on request,

permit correction of any error in, or any amendment of, a notice of opposition or a

counter-statement on such terms as he thinks just.

V.4.i. Registration

A trade mark is registered under s 23. When an application for 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

application. The date of application is to be deemed to be the date of registration.

V.4.i.(i). Particulars of Entry in the Register

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

required by s 6(1)229 including:

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,

conditions, limitations and other prescribed matter relating to registered trademarks.

192

(i) the address of the principal place of business in India of the proprietor

of the trade mark, if any;

(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

registration together with his address in his home country

(iii) Particulars of trade, business, profession, occupation or other

description of the proprietor

(iv) Particulars effecting the scope of the registration or the rights

conferred by the registration

(v) The convention application date, to be accorded pursuant to an

application from applicants of a convention country made under

section 154

(vi) Where the mark is a collective or certification mark, that fact

(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

V.4.i.(ii). Issuance of Certificate of Registration

On the registration of a trade mark, the registrar is obliged to issue a

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.

193

modification as the circumstances of any case may require, and the Registrar shall

annex a copy of the trade mark to the certificate.

V.4.i.(iii). Abandonment of Application

Where registration of a trade mark is not completed within twelve months

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

correcting a clerical error or an obvious mistake.

In Ciba Ltd vsM.Ramalimgam231 the court stated that it is incumbent upon

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

registration of the trade mark under certain circumstances.

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

when registered is to be registered as of the date of the making of the application

for registration and such date is to be deemed to be the date of registration. A

similar provision existed in section 16 of the 1940 Act232

231 AIR 1958 Bom 56

232 American Home Products Corpn v Mac Laboratories (P) Ltd (1998) 8 SCC 1, p.15

194

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

Part A or Part B of the register and issue a certificate of registration

V.4.j. Jointly Owned Trademarks

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.

However, where the relations between two or more persons interested in a

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

persons as if those rights had been vested in a single person.

V.4.k. Preliminary advice by The Registrar as to

Distinctiveness

According to s.133, on an application made by any person who proposes to apply

for the registration of a trade mark, the Registrar may give advice as to whether

233(1998) 8 SCC 1, p.15.

195

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.

V.4.l. Duration of Registration

The duration of registration of a trade mark under s 25 is 10 years. But it

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

amendment was to adopt the generally accepted international practice and to

reduce the workload of the Trade Mark Office.

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

SCC 465, p 481

196

generally accepted international practice and to reduce the workload of the Trade

Mark Office.

In Whirlpool Corporation v Registrar of Trademarks235 the Supreme

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

can be obtained by making an application to the Registrar in the prescribed

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

197

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

evidence of authority to act on behalf of the present proprietor.

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

supporting chain of documents.

The renewal of registration of a collective mark or a certification trade

mark shall be made in Form TM-12 along with the prescribed fee specified in the

First schedule [Trademarks Rules 2002. In Tetragon Chemie (P) Ltd v

Government of India 236 the court stated that as per s 25 read with r 69 of 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

petitioner to assail the said order now.

236 (2007) 35 PTC 875 (Kant), pp 875-76

198

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

the petitioner to make renewal application, one more opportunity could be

afforded by quashing the impugned order.

V.4.l.(ii). Restoration and Renewal-Section 25(4)

An application for the restoration of a trade mark to the register and

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

affected persons (See Trademarks Rules 2002, r 66).

Upon the renewal or restoration and renewal of registration, a notice to

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

Trademarks Rules 2002, r 67).

V.4.m. Renewal of Registration

On an application made by the registered proprietor of a trade mark in the

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

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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.

V.4.n. Restoration of Registration

Where a trade mark has been removed from the register for non-payment

of the prescribed fee., the Registrar shall on receipt of an application and on

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

period of ten years either generally or subject to such conditions or limitations as

he thinks fit to impose.

An application for the restoration of a trade mark to the register and

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

affected persons237.Upon the renewal or restoration and renewal of registration, a

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


200

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

shall advertise the fact forthwith in the Journal.

At a date not less than three months before the expiration of the last

registration of a trade mark, if no application in Form TM-12 for renewal of the

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

O-3 of the approaching expiration at the address of their respective principal

places of business in India as entered in the register or where such registered

proprietor or registered user has no principal place of business in India at his

address for service in India entered in the Register.

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.

201

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

66, remove the mark from the register239

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

expiration of the last registration of the trade mark.

V.4.p. Effect of Removal from Register

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

202

which is the subject of the application for registration by reason of any previous

use of the trade mark which has been removed.

In Whirlpool Corporation v Registrar of Trademarks240the Supreme Court

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,

nevertheless, be deemed to be a trade mark already on the register fir a period of

one year for purposes of any application for registration of another trade mark,

unless the ‘Tribunal’ is satisfied either:

(a) That there has been no bona fide trade use of the trade mark which has been

removed during the years immediately preceding its removal; or

(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.

V.5. REGISTRATION OF TEXTILE GOODS

Chapter X of the TrademarksAct 1999 i.e Sections 79 to 82 and

corresponding rules 141 to 147 of the Trademark Rules 2000 deal with the

concept of textile goods and.

Registration of Textile goods

Section 79 gives power to the Central Government to prescribe classes of goods

as textile goods, which are to be known as textile goods and to which the special

provisions would apply.

240 (1998) 8 SCC 1, p 15

203

Restriction on Registration of Textile Goods:

Section 80 lays down restrictions on registration of marks in respect of textile

goods.It provides that in respect of textile goods being piece goods-

a) No mark consisting of a line heading alone shall be registrable as

trademark;

b) Line heading shall not be deemed to be capable of distinguishing;

c) The registration of trademark shall not give any exclusive right to the

use of a line heading.

Sec. 80(2) enacts that in respect of any textile goods, the registration of letters or

numerals, or any combination thereof, shall be subject to such conditions and

restrictions as may be prescribed.

Procedure for registration of Numbers or letters or any combination for

textile goods:

Rule 145 says that where a mark consists exclusively of letters or numerals

or any combination thereof, shall be made on Form TM-22 or TM-45.Items of 5th

Schedule are grouped together in to 1 to 15 groups and goods falling in each

group is deemed to be similar goods. Goods falling in different groups are not

deemed to be similar for the purpose of application for registration of TMs

consisting exclusively of letters or numerals or any combination thereof,Rule 146

declares that in respect of textile goods certain types of marks are not capable of

registration. They are:

204

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

being a balanced numeral;

Any combination of numerals and letters of more than eight digits;

Fraction or letter fraction or any combination of fraction and numerals;

Numerals or letters representing cloth dimensions, etc

Rule 147 stipulates as to what marks are likely to deceive or cause confusion,

where it consists of Numerals, letters, fractions, letter fractions, or any

combination thereof and thus not capable of being registered.

V.6. ROLE OF IPAB AND ITS FUNCTIONS

Constitution

Intellectual Property Appellate Board (IPAB) has been constituted by a

Gazette notification of the Central Government in the Ministry of Commerce and

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:-

205

1. Appeal from an order or decision of the Registrar of Trademarks can be

filed before the IPAB.

2. Appeals from an order or decision of the Registrar of Trademarks issued

under Rule 162 of the Trademarks Rules, 2002 can be filed before the

IPAB.

3. Original application for rectification of the Register of Trademarks under

Section 47 or 57 of the Trademarks Act, 1999 can be filed before IPAB.

4. Also original application for rectification of the register under Section 125

of the Trademarks Act, 1999 can be filed before the IPAB.

Time Limit

An appeal to the IPAB should be filed within 3 months from the date on

which the order or decision to be appealed against is communicated to such

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

preferring the appeal within 3 months.

Functions of the Deputy Registrar:-

(1) The Deputy Registrar shall discharge the functions under the general

superintendence of the Chairman. He shall discharge such other functions

as are assigned to him under the Intellectual Property Appellate Board

(Procedure) Rules, 2003 or by the Chairman by a separate order in writing.

(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.

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(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

writing of the Deputy Registrar.

Additional functions and duties of the Deputy Registrar:-

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

special orders of the Chairman, namely:–

IX. to receive all applications, appeals, counter statements, replies

and other documents;

(ii) to decide all questions arising out of the scrutiny of the appeals and

applications before they are registered;

(iii) to require any application, appeal, counter statement, replies

presented to the Appellate Board to be amended in accordance with the

rules;

(iv) subject to the directions of the Chairman, to fix date of hearing of the

applications or appeals or other proceedings and issue notices therefore;

(v) direct any formal amendment of records;

(vi) to order supply of copies of documents to parties to proceedings;

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(vii) to grant leave to inspect the record of the Appellate Board;

X. to requisition records from the custody of any court, Registrar

of Trademarks or other authority;

XI. to decide questions relating to extension of time in respect of

filing of counter statement, reply, rejoinder, etc.

Documents

V. REGISTRABILITY OF TRADEMARKS – LEGISLATIVE APPROACHshodhganga.inflibnet.ac.in/bitstream/10603/42957/12/12_chapter_5.pdf · 149 V. REGISTRABILITY OF TRADEMARKS – LEGISLATIVE