Every other right in the intellectual property cluster begins with a grant. A patent exists because the State examined an application and issued one. A design exists because a controller registered it. A geographical indication exists because a registrar entered it on a register. A trade mark is different, and the Trade Marks Act, 1999 (Act 47 of 1999) is written around that difference. The Act builds a register, a procedure and a set of exclusive rights, and then, in a single saving provision, preserves the older common law action that protects a mark the register has never recorded. Registration under the Act is an advantage, sometimes a decisive one. It is not a precondition of protection. That single feature explains the shape of the entire statute: the care it takes over what may enter the register, the two distinct actions it leaves open to a proprietor, and the volume of litigation it generates compared with every neighbouring right.

The Act received the assent of the President on 30 December 1999. It did not commence on that date. It was brought into force on 15 September 2003, and it repealed and replaced the Trade and Merchandise Marks Act, 1958 (Act 43 of 1958), which had governed the subject for four and a half decades. A reader who wants the whole field mapped, and the forum in which these disputes are heard placed beside the other intellectual property forums, will find it in the series guide to intellectual property law in India, to which this article is the trade mark companion. What follows here is the statute itself: what it defines, what it refuses, how an application travels, what registration confers, what can be done with a registered mark, and what happens when a mark is misused.

Two cautions belong at the start. The first is that the Act protects signs, not products. A registration does not certify that goods are good, lawful or original in conception; it records that a sign distinguishes one trader’s goods or services from another’s. The second is that the Act works through probability rather than proof of actual deception in most of its provisions. Again and again the operative words are “likely to deceive or cause confusion”. A system built on likelihood needs a register that the public can trust, which is why so much of the Act is devoted to keeping unregistrable signs off it.

A statute that arrived in stages

Indian trade mark legislation did not begin in 1958. Before any statute, the courts applied English common law principles to disputes about marks, and the first Indian enactment on the subject was the Trade Marks Act, 1940, modelled on the English legislation of 1938. The Trade and Merchandise Marks Act, 1958 consolidated the law after independence, and it was under the 1958 Act that the modern registration system, with its division of the register and its opposition procedure, took shape. By the last decade of the twentieth century that statute was under strain from several directions at once. India’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights, concluded with the World Trade Organization agreements in 1994, required protection for service marks, a ten year registration term structure compatible with the treaty, and recognition of well known marks. The economy had also changed around the statute. Services, which the 1958 Act did not cover at all, had become a large share of organised commerce, and a hotel chain, a hospital or a software firm could not register the sign under which its customers knew it.

The 1999 Act answered those pressures in a particular order. Its largest single change was the extension of registration to services: for the first time, a mark used in relation to services stood on the same statutory footing as a mark used in relation to goods. It also introduced collective marks, widened the treatment of certification marks, recast the grounds of refusal in the form the treaty framework contemplated, raised the registration term to ten years from the seven years the 1958 Act had provided, recorded the protection of well known marks in the refusal provisions themselves, and strengthened the criminal provisions against counterfeiting. The chapter giving effect to the Madrid Protocol for international registration was not in the Act as enacted; it was inserted by the Trade Marks (Amendment) Act, 2010 (Act 40 of 2010) and brought into force on 8 July 2013, the date the Protocol entered into force for India.

The interval between enactment and commencement deserves a word, because it is the kind of interval that recurs in Indian statute making and is rarely explained. The 1999 Act was on the statute book from the end of 1999, but it could not work until the Trade Marks Rules, 2002 replaced the rules made under the 1958 Act, until the Registry’s examination and advertisement machinery was reconstituted under the new scheme, and until pending applications and registrations under the old Act were provided for in the transition. The commencement notification, S.O. 1048(E) dated 15 September 2003, brought the Act into force on that date, and the repeal of the 1958 Act carried a saving for rights accrued under it, so that registrations granted under the earlier statute continued as registrations under the new one, and the register did not begin again from an empty page. The 1958 Act’s division of the register into two parts, under which marks of lesser distinctiveness were admitted to a secondary part on easier terms, was not carried into the 1999 Act: there is one register, and a mark is either registrable on the standard the Act sets, or registrable on proof of acquired distinctiveness under the proviso to section 9(1), or not registrable at all.

The subordinate legislation arrived much later still. The Trade Marks Rules, 2017 replaced the rules of 2002 with effect from 6 March 2017, cutting the number of prescribed forms from more than seventy to eight, repricing fees with a discount for electronic filing and a lower tier for individuals, start-ups and small enterprises, permitting hearings by video conference, making express provision for sound marks, and creating, in rule 124, a procedure by which the Registrar may determine a mark to be well known on application. The institutional frame changed again in 2021, when the Tribunals Reforms legislation abolished the Intellectual Property Appellate Board with effect from 4 April 2021 and sent appeals from the Registrar, and applications for rectification, to the High Courts. That institutional story is owned by the guide article in this series; here it is enough to note that the forum named in several provisions of the Act as enacted is a forum that has ceased to exist, and that the functions it performed have passed to the High Courts.

Why did Parliament extend registration to services in 1999?

The 1958 Act registered marks for goods alone, leaving service businesses, from banks to hospitals to hotels, to the uncertainties of passing off. The 1999 Act placed services on the same footing as goods, so a service provider could register, license and enforce its sign through the statute rather than only through the common law.

By the 1990s services formed a large and growing share of commerce, and the TRIPS Agreement required members to protect service marks, so the extension was as much the discharge of a treaty obligation as it was a domestic reform.

Extension to services sounds technical, and its consequences were not. Under the 1958 Act the proprietor of a service mark had one remedy, the action for passing off, with its heavy burden of proving goodwill, misrepresentation and damage in every case. Registration inverted the burden structure. A registered proprietor sues for infringement, and the registration itself is evidence of the right; an unregistered proprietor must first prove that the mark means his business to the public before any question of imitation is reached. The 1999 Act therefore did not merely add a category. It moved an entire sector of the economy from the harder action to the easier one, and much of the Act’s later history, the growth of the register, the volume of oppositions and the rise of the well known mark, follows from that movement.

What a trade mark is

Section 2(1)(zb) carries the central definition. A 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 the shape of goods, their packaging and a combination of colours. Section 2(1)(m) defines “mark” itself: it includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours, or any combination of these. Two conditions therefore govern everything that follows in the Act. The sign must be capable of graphical representation, because the register is a public record and a right that cannot be written down cannot be searched, opposed or enforced with certainty. And the sign must be capable of distinguishing, because distinction is the function the law protects: a mark is a badge of origin, and a sign that cannot tell one trader’s goods or services from another’s is not performing the only task the statute assigns it.

The definition is deliberately wide at the level of form and strict at the level of function. Almost anything perceptible can be proposed: a coined word, a surname, a signature, a label, a single colour combination, the shape of a bottle, a sound that can be notated. Nothing in the list of forms guarantees acceptance, because each candidate is then tested against the refusal grounds, and the commonest reason applications fail is not their form but their want of distinctiveness. A word that names the goods, praises them or describes their origin begins life on the wrong side of the line, whatever its form.

The Act also defines the special categories within the general definition. A certification trade mark, under section 2(1)(e), is a mark capable of distinguishing goods or services certified by the proprietor in respect of origin, material, mode of manufacture or performance, quality, accuracy or other characteristics from goods or services not so certified. A collective mark, under section 2(1)(g), is a trade mark distinguishing the goods or services of members of an association of persons, which is the proprietor of the mark, from those of others. A well known trade mark, under section 2(1)(zg), is defined in relation to any goods or services as 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 the mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade between those goods or services and the person using the mark in relation to the first mentioned goods or services. Each of these definitions is taken up in its own place below. The definition that does the everyday work of litigation is a fourth one, in section 2(1)(h): a mark is deemed to be deceptively similar to another if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

One boundary with a neighbouring right should be fixed here, because applicants routinely miss it. A logo or label filed as a trade mark may at the same time be an artistic work in which copyright subsists, and the two rights have different owners, terms and tests; the Copyright Act article in this series takes up the work side of that overlap. Registration of the logo as a mark does not extinguish copyright in it, and ownership of the copyright does not by itself confer the registered trade mark. The applicant who assumes that one filing has done both jobs discovers the gap at the worst moment, when a dispute has begun.

Colour, names and the edges of the definition

Three groups of provisions mark the edges of what the definition permits, and applicants meet all three early. The first concerns colour. Section 10 provides that a trade mark may be limited in whole or in part to one or more specified colours, and that in deciding the distinctive character of a mark the tribunal may have regard to the limitations imposed. A mark may also be registered without limitation of colour, in which case it is deemed to be registered for all colours. A combination of colours is within the definition of a mark, and colour combinations, deployed as the get up of a product’s packaging, have carried registrations where the combination had been used so as to denote a single source. A single colour claimed by itself faces the full force of the distinctiveness inquiry, because the stock of colours is small, the needs of competitors are obvious, and the Registry treats the category with corresponding caution: the applicant must show not that a colour is attractive, but that the purchasing public reads that colour, on those goods, as a badge of one origin.

The second group excludes names that no trader may appropriate. Section 13 prohibits the registration of the name of any chemical element or of any international non proprietary name declared by the World Health Organization, or a name deceptively similar to such a name, as a trade mark for a chemical substance or pharmaceutical preparation. The provision keeps the vocabulary of science common: a generic drug name is a piece of public language that prescribers and pharmacists must be free to use exactly, and its capture by one manufacturer would endanger patients as well as competitors. Section 14 deals with the names and representations of persons: where an application falsely suggests a connection with a living person, or with a person who died within twenty years before the date of the application, the Registrar may require the applicant to furnish the written consent of that person, or of his legal representative, before proceeding. The provision protects personality as the definition protects origin, and it explains why celebrity names and portraits, filed by traders with no connection to the person, are stopped at examination without any inquiry into distinctiveness.

The third group governs the architecture of a filing. Section 15 permits the registration of parts of a trade mark, and of a trade mark as a series: an applicant whose branding consists of a word in several stylised forms, differing in respects that do not substantially affect identity, may seek the series in a single application rather than paying for each variant, and a part of a mark may be registered as a separate mark where it itself distinguishes. Section 16 deals with associated trade marks: marks that are identical or so similar, and owned by the same proprietor for the same or associated goods or services, that they must be registered as associated, which carries the consequence, under section 41, that they must be assigned together, so that the register is not used to split a family of confusingly similar marks between different owners. Section 17, already noted, completes the group: registration of a composite mark confers the right to the whole, not to each element in isolation. The practical lesson of these sections is that the unit of registration is a considered choice. The proprietor who files only the composite label, whose central word the market actually remembers, has protected the packaging of his right rather than its substance.

The absolute grounds: what the register will not accept

The refusal grounds are the Act’s quality control, and they are divided into two chapters of reasoning. The absolute grounds, in section 9, concern the mark itself: some signs are refused because of what they are, whoever applies and whatever the state of the register. The relative grounds, in section 11, concern the mark’s relation to earlier rights: a perfectly distinctive sign may still be refused because someone else’s sign is already there. The division matters in practice because the absolute grounds are examined by the Registrar on the Registry’s own motion, while the relative grounds are where opponents earn their fee.

Section 9(1) states three grounds. A mark shall not be registered if it is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another. It shall not be registered if it consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service. And it shall not be registered if it consists exclusively of marks or indications which have become customary in the ordinary language of the trade or in the bona fide and established practices of the trade. The three grounds are the statutory form of one idea: the register will not give one trader a monopoly in signs that other traders legitimately need. A word that distinguishes can be owned. A word that merely describes must remain available to everyone who sells the thing described, including the trader who thought of filing it first.

Examiners apply the three grounds through a spectrum of distinctiveness that the profession uses to predict outcomes, and the spectrum is worth setting out because it organises nearly every refusal an applicant will receive. At the strongest end stand coined or invented words, signs with no meaning in the trade, which are distinctive by their nature and are accepted without evidence of use. Next stand arbitrary marks, real words applied to goods or services with which they have no connection, so that the word’s only work in the market is to identify source. Next stand suggestive marks, which hint at a quality of the goods without designating it, and which are accepted because a competitor does not need the allusion in order to describe his own goods fairly. At the weak end stand descriptive marks, which designate kind, quality, intended purpose or another characteristic, and which section 9(1) refuses unless acquired distinctiveness is proved; and beyond them stand generic names, the common name of the goods themselves, which no amount of use can make registrable by one trader, because to register the name of the thing is to forbid competitors to call their goods by the only name the public knows them by. Laudatory words, words that merely praise, fall with the descriptive: a claim of superiority is a description of the trader’s opinion of his goods, not a badge of their origin. Surnames, single letters, numerals and simple geometrical devices are examined against the same standard with a scepticism proportioned to their scarcity and their likelihood of honest adoption by others, and the applicant for any of them should expect to file evidence of use rather than argument about form.

The spectrum explains a feature of examination that applicants often read as inconsistency. Two applications for similar signs may receive opposite answers because one is filed at the start of a business and the other after a decade of trading: the proviso to section 9(1) makes the evidential record, not the sign in the abstract, the decisive material at the weak end of the spectrum. It also explains why the Act is not hostile to descriptive branding as a commercial choice. A business remains free to trade under a descriptive name and to protect the goodwill it builds through passing off; what section 9 denies it is the statutory monopoly and the procedural advantages of the register, until the name has done the work of acquiring a second meaning in the public mind.

The geographical origin limb of the second ground deserves attention because two neighbouring statutes meet there. A sign that designates where goods come from is refused as a trade mark for the trader who applies, because origin belongs to every producer in the place; and where the origin itself carries a reputation, the law protects it collectively through registration of the name as a geographical indication, a right held for the producers of a region rather than by one firm, as the article on the Geographical Indications Act explains. The same word can therefore be unregistrable by one trader, registrable by none, and yet protected, because the two statutes answer the refusal question with different owners.

The proviso to section 9(1) then qualifies the three grounds. A mark shall not be refused on those grounds if, before the date of application for registration, it has acquired a distinctive character as a result of the use made of it, or if it is a well known trade mark. This is the doctrine of acquired distinctiveness, sometimes called secondary meaning. A descriptive sign used long enough and exclusively enough can come, in the minds of the purchasing public, to denote one source rather than the thing itself, and at that point the reason for refusal falls away. The evidential burden is the applicant’s and it is not light: the Registry expects the use to be proved with dated material showing the mark in the market, turnover and advertising figures, and the length and exclusivity of the use. It is here that record keeping decides cases. A proprietor who has preserved invoices, advertisements, packaging and press coverage across the years holds the material from which acquired distinctiveness is proved; the proprietor who has not is asking the Registrar to take the public’s recognition on trust. The discipline resembles the one that leads journalists to store source material in a sealed vault so that its integrity can be demonstrated later: how journalists use VaultBook to protect sources turns on the same principle, that a record assembled in advance, and kept beyond quiet alteration, is worth more than a recollection offered in a dispute.

The first ground in section 9(2) repays separate attention, because it is the refusal ground that protects consumers rather than competitors. A mark is of such a nature as to deceive the public or cause confusion where the sign itself misstates the goods: a mark that proclaims a geographical origin the goods do not have, a composition they do not contain, or a character they do not possess. The deception inquired into is deception inherent in the mark as applied to the specification sought, not deception by comparison with another trader’s goods, which is the business of section 11. A mark may therefore be refused under section 9(2) although no other trader uses anything like it, and although the applicant is the only trader in the field, because the objection is to the statement the sign makes to the public. The ground also reaches get up and presentation in the application as filed, so an application that dresses ordinary goods in the trappings of a certification or of official approval may be refused for the impression the whole filing creates, and the Registrar’s power to accept subject to conditions or to a disclaimer is the proportionate response in the cases that fall short of outright refusal.

Section 9(2) states grounds of a different character, concerned with public order rather than distinctiveness. A mark shall not be registered if it is of such a nature as to deceive the public or cause confusion; if it contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; if it comprises or contains scandalous or obscene matter; or if its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950, the statute that reserves specified names and emblems, including those of the State and of international bodies, from commercial appropriation. These grounds are not cured by use. A mark that deceives does not become acceptable because it has deceived successfully for a long period, and no amount of turnover will launder a mark that wounds religious feeling or trades on a protected emblem.

Section 9(3) deals with shapes. A mark shall not be registered if it consists exclusively of the shape of goods which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods. The three exclusions are narrow and deliberate, and their reasoning reaches outside trade mark law altogether.

How do shape marks interact with design and patent law?

The shape exclusions exist to police the boundary between three rights. A shape that a product must have, or that makes it work, belongs to patent law, which protects function for twenty years, and to design law, which protects appearance for a shorter term; a registration renewable without end must not outflank either.

If the same shape could be registered as a trade mark and renewed indefinitely, the applicant would hold in perpetuity what the other statutes grant only for a period, and the time limits Parliament set on functional and aesthetic monopolies would be defeated by a change of filing office.

The substantial value limb completes the reasoning from the other side. A shape that is itself the reason consumers buy the goods, where the shape is the product’s ornament and appeal, is an aesthetic creation, and the statute directs its proprietor toward the Designs Act, under which appearance is protected as a design for a limited term, rather than toward a register that renews without end. What survives section 9(3) is the arbitrary shape: the bottle contour or container form that has no functional necessity and is not the goods’ selling point in itself, but has come to identify a source. Such shapes are registrable, and some of the most litigated marks in the world are shapes of exactly that kind, but the applicant must expect the Registrar to test the shape against all three exclusions before the file moves.

Classification, and why the class number does not decide similarity

Section 7 requires the Registrar to classify goods and services for the purposes of registration in accordance with the international classification, the scheme, maintained under the Nice Agreement, that divides the whole of commerce into forty five classes. The classification is administrative machinery: it organises the register, the search and the fee, so that an application is examined against the marks recorded for neighbouring trade, and it gives the applicant a language in which to draft his specification. It does not decide the legal questions. The Supreme Court settled the point in Vishnudas Trading v Vazir Sultan Tobacco Co Ltd, where the question was whether a registration for a mark in respect of manufactured tobacco should prevent its use and registration for cigarettes, both falling within the same broad territory of the classification: the Court held that the classification of goods is a matter of administrative convenience, that goods placed in the same class may be wholly dissimilar in nature, trade channel and purchasers, and goods in different classes may be closely allied, and that the similarity inquiry under the Act is an inquiry into the goods themselves, their character, their purpose, the trade that sells them and the public that buys them. The proposition runs in both directions and it disciplines both sides of a dispute. The applicant whose mark is cited against a registration in another class cannot answer merely by pointing at the class numbers, if the goods travel through the same shops to the same buyers; and the opponent whose goods share a class with the applicant’s cannot rest on the number either, if the trades never meet.

The specification drafting follows from the same principle. The forty five classes are not forty five fences; they are an index. What the registration protects, and what an infringement suit enforces, is the mark for the goods or services specified, judged by the trade reality of those goods or services, and the class number printed on the certificate is the address of the entry, not the boundary of the right. This is also why the Registrar’s power, on registration and on rectification alike, to strike out or confine parts of a specification is a working part of the system rather than an administrative afterthought: the register is a map of trades, and the classes are its grid references, useful precisely because everyone uses the same grid, and dangerous only when they are mistaken for the territory.

The relative grounds: what the register already holds

Section 11 refuses a mark because of its relationship to an earlier mark, and its structure mirrors the infringement provisions the reader will meet later. Section 11(1) provides that, save as provided in section 12, a trade mark shall not be registered if, because of its identity with an earlier trade mark and similarity of goods or services covered by it, or its similarity to an earlier trade mark and identity or similarity of the goods or services, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. The test is predictive and public facing. The question is not whether the applicant intends to trade on the earlier mark, nor whether any consumer has in fact been confused, but whether confusion is likely among the relevant public, judged through the resemblance of the marks and the proximity of the goods or services.

Section 11(2) extends the protection of a well known earlier mark beyond the confusion test altogether. A mark which is identical with or similar to an earlier trade mark shall not be registered if it is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, and the earlier trade mark is a well known trade mark in India, and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. This is the dilution principle written into the refusal stage: for a mark of sufficient repute, the statute protects the distinctiveness itself, not merely the public against confusion, and it protects it across the whole register.

For the purposes of section 11, an earlier trade mark is not confined to a registration already granted on the Indian register. The concept takes in a mark whose application bears an earlier filing date, including an application whose registration is still in process, a trade mark entitled to protection under the Paris Convention as a well known mark, and a mark protected through an international registration designating India, each as on the relevant date in the contest. The relevant date matters throughout the section: priority is judged as at the application date of the mark under examination, which is why an earlier mark that was filed later in real time but claims an earlier convention priority date may rank ahead, and why the relative grounds reproduce, inside the Registry, the priority contests that section 34 governs in the market. The examiner’s search is therefore a search of the register as it stood at the applicant’s filing date, and the citation of a conflicting mark in the examination report is the first notice an applicant receives of the system working as designed.

Section 11(3) adds two bars of a different source. A mark shall not be registered if its use in India is liable to be prevented by virtue of any law, in particular the law of passing off protecting an unregistered trade mark used in the course of trade, or by virtue of the law of copyright. The first limb is the hinge between the two halves of the Act. The register is not permitted to grant, to a later applicant, a right whose exercise the common law would restrain at the suit of an unregistered proprietor; the relative grounds thus incorporate the law of passing off into the examination itself. Section 11(4) then states the consent exception: nothing in the section prevents registration of a mark where the proprietor of the earlier trade mark or other earlier right consents to the registration. Consent letters and coexistence agreements therefore have statutory footing, though the Registrar retains a discretion and consent does not compel registration where confusion remains likely in the public interest. Section 11(5) closes the section by providing that the grounds in subsections (1) and (2) are to be raised only in opposition proceedings by the proprietor of the earlier mark, a provision which confines who may deploy the relative grounds at the opposition stage, while the absolute grounds remain available to the Registrar and to any opponent.

Between sections 11 and 12 stands the doctrine that tempers the whole system of priority. Section 12 permits the Registrar, in the case of honest concurrent use or of other special circumstances, to permit the registration by more than one proprietor of trade marks which are identical or similar in respect of the same or similar goods or services, subject to such conditions and limitations as the Registrar thinks fit. Honest concurrent use is the register’s confession that the market sometimes produces two innocent users of similar marks in ignorance of each other, and that the purpose of the Act is served better by recording both, on terms that protect the public, than by destroying one business for the other’s benefit. The applicant who invokes section 12 must prove honesty: adoption without knowledge of the earlier mark, use that is substantial and continuous, and a measure of concurrent presence in the market such that the public has in fact accommodated both.

Well known trade marks

The well known mark is the point at which trade mark law stops being only about confusion and becomes, in part, about the protection of reputation as an asset. The definition in section 2(1)(zg) fixes the threshold in terms of public recognition: the mark must have become so, to the substantial segment of the public which uses the goods or receives the services, that its use on other goods or services would be likely to be taken as indicating a connection with the same source. Recognition by the relevant segment, not by the public at large, is the statutory threshold, and it is recognition of a particular strength: the public does not merely know the mark, it treats the mark as a badge that travels.

Section 11(6) lists the factors to which the Registrar shall take account in determining whether a trade mark is well known. They are the knowledge or recognition of the mark in the relevant section of the public, including knowledge in India obtained as a result of the promotion of the mark; the duration, extent and geographical area of any use of the mark; the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and presentation at fairs or exhibitions of the goods or services to which the mark applies; the duration and geographical area of any registration of, or any application for registration of, the mark to the extent that they reflect the use or recognition of the mark; and the record of successful enforcement of the rights in the mark, including the record that the mark has been recognised as well known by any court or Registrar. Section 11(7) adds the considerations that bear on the scale of that recognition: the number of actual or potential consumers of the goods or services, the number of persons involved in the channels of distribution, and the business circles dealing with the goods or services. Section 11(8) provides that where a mark has been determined to be well known in at least one relevant section of the public in India by any court or by the Registrar, the Registrar shall consider that mark to be a well known mark for registration under the Act. Section 11(9) is equally significant for what it forbids the Registrar to demand: the Registrar shall not require, as a condition for determining that a mark is well known, that the mark has been used in India, that it has been registered, that an application for its registration has been filed in India, that it is well known in or registered in any other jurisdiction, or that it is well known in India to the public at large. A foreign mark known to the relevant Indian segment through promotion and reputation, without a single sale in India, is therefore capable of recognition, which is the statutory adoption of the principle that reputation crosses borders faster than goods do.

Before 2017, a mark became well known in India in one way: a court, or the Registrar in contested proceedings, held it to be so on evidence led in a dispute. The Trade Marks Rules, 2017 added a second way. Rule 124 permits any person to request the Registrar to determine a trade mark as well known, on an application in the prescribed form accompanied by a statement of case, evidence and documents, and a fee of one lakh rupees. The Registrar considers the application against the section 11 factors, may invite objections from the general public before deciding, and, if the determination is made, enters the mark in the list of well known trade marks maintained by the Registry and publishes the entry. The determination, once made, is then deployed by the proprietor across the Act: in examination, in opposition, in infringement proceedings for dissimilar goods, and in rectification.

The case for the administrative route is made by the structure of the Act itself and by India’s treaty position. The Paris Convention, in article 6bis, and the TRIPS Agreement, in article 16, oblige members to protect well known marks, including marks known through promotion alone, and the protection India’s treaty partners expect is protection of reputation that was expensive to build and is cheap to imitate. A trader who copies a famous mark for unrelated goods commits no confusion in the strict sense, yet takes a free ride on a distinctiveness that another business paid to create, and blurs the mark’s singularity each time the copy is seen. Litigation over that conduct, fought mark by mark and court by court, produced recognition slowly and unevenly, and the proprietors who needed it most in a fast imitation market were those whose fame was conceded by everyone except the procedure. A list, the argument runs, merely records what the market has already decided, and recording it in advance saves every tribunal from re-proving the same fame in every case.

The case against the administrative route is a case about what kind of decision a determination is. Entry on the list confers advantages across all forty five classes of goods and services, against traders who were not parties to the application and had no notice directed at them. The determination is made by the Registrar on the proprietor’s own evidence, in proceedings that are not a contest between identified opponents, even where the Registrar invites public objections; nobody cross-examines the turnover figures, and no defendant tests whether the recognition claimed is recognition in a relevant segment or merely advertising weight. The objection is not to the protection of famous marks, which the courts had been granting for decades, but to the conversion of a judicial finding, made in a dispute where the stakes justified the evidence, into an administrative status obtained on application. Determinations of that breadth, the critics say, belong to forums that hear both sides, because a monopoly over a sign across unrelated markets is exactly the kind of grant the rest of the Act surrounds with opposition, evidence and appeal.

In litigation the determination is made on the same factors but in an adversarial setting, and the case law has settled three working propositions. The relevant public is the segment that uses the goods or services, or trades in them, and fame within that segment suffices; a mark for industrial machinery may be well known among the few thousand buyers of such machinery and unknown to everyone else, and it qualifies. The connection the definition requires is a connection in the course of trade, so the claimant need not show that the public thinks the same company makes the defendant’s goods, only that it would take the use as indicating a link, a licence, an endorsement or a common source. And the factors are weighed as a whole, so that a mark strong on promotion but weak on duration may fail where a mark of long and extensive use succeeds, and no single factor, neither a registration in many countries nor a schedule of advertising expenditure, is by itself decisive. Courts recording the status have treated it as a finding of fact about the market, to be proved like any other fact, and a decree recording well known status in one contest is the material on which section 11(8) then operates in the Registry.

The balance of the statute suggests a verdict, and this article states it. The factors in section 11(6) and the considerations in section 11(7) are evidential in form: they describe matters that are proved, contested and weighed, and the section contemplates recognition being tested, which is why courts determining well known status in litigation have generally produced the more durable findings. The rule 124 list is defensible as a record of determinations already made by courts and Registrars in contested matters, which is one thing rule 124 covers. As a route to first-instance status on unopposed evidence, it grants the widest right in the Act through its thinnest procedure, and the friction that follows from that mismatch appears wherever a listed mark is later asserted against a trader who had no opportunity to contest the fame on which the assertion rests. The protection is right; the shortcut is the problem.

From application to registration

The procedural chapter of the Act, chapter III, follows the life of an application. Section 18 permits any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, to apply in writing to the Registrar. An application may cover one mark for goods or services in one class, or, through the forms consolidated by the 2017 rules, a single application may span classes; a series of marks may be sought in one application under section 15 where they resemble each other in material particulars while differing in respects that do not affect identity. Goods and services are classified under section 7 according to the international classification, which arranges the whole field of commerce into forty five classes, thirty four for goods and eleven for services, and a registration is always a registration for specified goods or services within that scheme, never a registration of a mark in the abstract.

The register itself is kept under section 6 at the head office of the Trade Marks Registry. Section 3 appoints the Registrar: the Controller General of Patents, Designs and Trade Marks, the officer who heads the office that also administers the patents and designs systems, is the Registrar of Trade Marks for the purposes of the Act, and other officers are appointed to discharge functions under his superintendence and direction. Section 5 establishes the Registry and its offices: the head office sits at Mumbai, with further offices at New Delhi, Kolkata, Chennai and Ahmedabad, each administering applications for its territory. The applicant files at the office within whose limits his principal place of business in India lies, and the territorial division runs through examination, advertisement and opposition alike.

Examination follows filing. The examiner tests the application against the absolute grounds on the Registry’s own motion and searches the register for conflicting earlier marks under the relative grounds, and issues an examination report recording objections. The applicant replies, and may be heard; applications are refused, accepted outright, or accepted subject to conditions, limitations or disclaimers, and section 19 allows the Registrar to withdraw an acceptance given in error before registration. On acceptance, section 20 requires the application to be advertised in the Trade Marks Journal, which is the Act’s act of public notice: the advertisement opens the window in which the world may object.

Opposition, under section 21, is the register’s adversarial gate. Any person may, within four months from the date of the advertisement or re-advertisement of an application, give notice of opposition to the Registrar in the prescribed manner and on payment of the prescribed fee. The grounds available to an opponent span the Act: the absolute grounds, the relative grounds where the opponent is the proprietor of the earlier right, and the claim that the applicant is not entitled to the mark. The Registrar serves the notice on the applicant, who must send a counter statement of the grounds on which he relies within two months of receiving it, failing which the application is deemed abandoned. Evidence follows in rounds prescribed by the rules, evidence in support of the opposition, evidence in support of the application, and evidence in reply, and the Registrar then hears the parties and decides whether registration is to be permitted, and on what conditions or limitations, taking into account any ground of objection whether relied on by the opponent or not. An opposition is therefore a complete trial of registrability in miniature, and a substantial share of the Act’s case law on distinctiveness, similarity and honest concurrent use is generated in it.

The procedure carries several lesser provisions that decide real files. Section 22 empowers the Registrar to permit the correction of any error in or in connection with an application, and the amendment of an application, on such terms as he thinks just, which is the route by which an applicant narrows an over wide specification of goods or services in answer to an objection, in place of losing the filing altogether. Where the Registrar proposes to accept an application subject to conditions or limitations, or refuses it, the grounds are recorded in writing, because the applicant’s right of appeal depends on knowing the case he has to answer. Section 24 provides for jointly owned trade marks, where the proprietors are associated in the business to which the mark relates, so that neither is entitled to use the mark to the exclusion of the other except on behalf of both. And section 26 governs the interval after a registration has been removed for failure to renew: no trade mark shall be registered in respect of any goods or services in a manner conflicting with the removed mark until one year has passed from the removal, unless the Registrar, the court or the tribunal is satisfied either that there has been no bona fide use of the removed mark during the two years immediately preceding its removal, or that no deception or confusion would arise from the use of the later mark by reason of the earlier use of the removed one. The register thus remembers, for a measured interval, the marks it has let go.

If no opposition is filed, or an opposition fails, section 23 provides for registration. The registration, when granted, dates from the date of the application, which is deemed to be the date of registration, a rule that gives the filing date a significance out of proportion to its place in the procedure: priority contests between rival applicants, and the assessment of earlier and later rights, are run from filing dates, not from the later dates on which certificates issue. Section 31 makes registration prima facie evidence of the validity of the original registration and of all subsequent assignments and transmissions. Section 32 goes further after time has passed: in all legal proceedings relating to a trade mark registered in the name of the original proprietor, the original registration shall, after the expiration of seven years from its date, be taken to be valid in all respects, unless it is proved to have been obtained by fraud, or unless the mark offends against section 9 at the date of the proceedings. The seven year rule does not make a registration unassailable, but it shifts the ground of attack, and it expresses the statute’s policy that the register should settle into reliability as third parties build on the faith of it.

What did the Trade Marks Rules of 2017 change in practice?

The rules of 2017, effective from 6 March 2017, consolidated more than seventy forms into eight, repriced fees with a discount for electronic filing and a lower tier for individuals, start-ups and small enterprises, extended expedited processing through the whole course of an application, and allowed hearings by video conference.

They also provided for sound marks to be filed with an MP3 recording and a graphical representation in musical notation, required affidavits supporting claims that a mark has been used, and created in rule 124 the application route to a determination that a mark is well known.

What registration confers

Section 28 states the right. Subject to the other provisions of the Act, the registration of a trade mark, if valid, gives the registered proprietor the exclusive right to the use of the trade mark in relation to the goods or services in respect of which it is registered, and to obtain relief in respect of infringement in the manner provided by the Act. Where two persons hold identical or nearly resembling marks registered for the same goods or services, neither acquires, merely by registration, a right against the other, and each has the same rights as if he were the sole registered proprietor, subject to the rights of a person who has used the mark earlier, whose position section 34 preserves. Section 17 adds a rule of construction with practical consequences in litigation: where a trade mark consists of several matters, its registration confers the exclusive right to use the mark taken as a whole, and the registration of a composite label does not by itself confer exclusivity in any single element of it, which is why proprietors are counselled to file the word element separately from the device that carries it. The right of section 28 is also a right with edges that the register itself draws. It extends only to the goods or services for which the mark is registered, so that the proprietor of a mark for clothing who meets the same mark on furniture must travel by section 29(4), with its burden of proving reputation, rather than by section 29(1). It is subject to the conditions and limitations entered on the register, to any disclaimer of exclusive right in a part of the mark which the Registrar required as the price of registration, and to the rights of every other registered proprietor of a similar mark, each of whom holds the same statutory right in parallel. And it is a right to obtain relief in the manner the Act provides, which means through the courts under section 134 and not by self help: the proprietor who writes to a rival’s customers asserting infringement he cannot support exposes himself to the action for groundless threats that section 142 provides, a provision that keeps the enforcement of the register honest by giving the person threatened a remedy against the threatener where the threats are not followed by proceedings diligently prosecuted.

Infringement is defined by section 29, and the section is built as a ladder of widening protection. Section 29(1) provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the registered mark in relation to goods or services in respect of which the mark is registered, and in such manner as to render the use of the mark likely to be taken as being use as a trade mark. Section 29(2) covers the penumbra: use of an identical mark on similar goods or services, of a similar mark on identical goods or services, or of an identical or similar mark on identical or similar goods or services, where in each case there exists a likelihood of confusion on the part of the public, or a likelihood of association with the registered mark. Section 29(3) then supplies a presumption: where the mark used is identical with the registered mark and the goods or services are identical, the court shall presume that the use is likely to cause confusion. Section 29(4) carries protection across classes for marks with a reputation in India: a registered mark is infringed by use of an identical or similar mark on goods or services that are not similar, where the registered mark has a reputation in India and the use, being without due cause, takes unfair advantage of or is detrimental to the distinctive character or repute of the registered mark. This is the infringement counterpart of the dilution ground in section 11(2), and it is the provision through which a well known mark is enforced against uses far from its own trade. The Delhi High Court’s decision in Daimler Benz Aktiegesellschaft v Hybo Hindustan, decided under the earlier statute and routinely cited on the principle section 29(4) codified, shows the provision at its most extended: the use of the name Benz, and of the three pointed star device associated with the motor manufacturer, on undergarments was restrained, the court reasoning that a mark of such fame does not travel only with its own goods, and that a trader who places it on goods of a wholly different kind takes the benefit of a reputation he did not build and cheapens the mark by the association. The case also illustrates the discipline of the doctrine: what carried the day was not celebrity in the abstract but the proven strength of the mark in India, and a proprietor who cannot prove reputation within the jurisdiction has no section 29(4) case to make.

The remaining subsections of section 29 close the routes around the section. Section 29(5) treats the use of a registered mark, or of a mark identical or deceptively similar to it, as a trade name or as part of a trade name, a partnership name or a company name dealing in the same goods or services, as infringement. Section 29(6) specifies what amounts to use of a mark for the purposes of the section, including affixing it to goods or their packaging, offering goods for sale or supplying services under it, importing or exporting goods under it, and using it on business papers or in advertising. Section 29(7) and section 29(8) reach the supply chain and the advertisement: a person who applies a registered mark to material intended for labelling, packaging, business papers or advertising, intending that it be used in a manner constituting infringement, is treated as a party to the infringement, and advertising that takes unfair advantage of a mark, or is contrary to honest practices in industrial or commercial matters, or is detrimental to the mark’s distinctive character, or is against its reputation, infringes. Section 29(9) confirms that where the distinctive element of a mark consists of or includes words, infringement may be by the spoken use of those words as well as by their visual representation. The section is, taken together, a complete map of how marks are misused in trade, drawn by a legislature that understood that imitation rarely announces itself in one form only.

What counts as use of a mark in Indian law?

Use, throughout the Act, means use in the course of trade in relation to the goods or services concerned: printing the mark on goods or packaging, offering goods for sale or services under it, importing or exporting under it, and using it on invoices, business papers and advertising.

Use need not be by the proprietor personally. Use by a registered user is permitted use and is deemed to be use by the proprietor, and use by another person with the proprietor’s written consent, within the meaning of the definition of permitted use, is treated in the same way, which is what keeps a registration alive against a non use attack when the trading is done through licensees.

The limits written into the right

The exclusive right of section 28 is fenced by limits that express the same policy as the absolute grounds: registration monopolises a sign for a purpose, not for every purpose. Section 30 provides that acts which would otherwise infringe do not do so where the use is in accordance with honest practices in industrial or commercial matters and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the mark; and it protects, among other things, the use of a mark to indicate the kind, quality, quantity, intended purpose, value or geographical origin of goods or services where that use is bona fide descriptive, the use of a mark on goods for which it was lawfully applied by or with the consent of the proprietor, and the use necessary to indicate the intended purpose of goods sold as accessories or spare parts or of compatible services. Section 35 saves the bona fide use by a person of his own name or the name of his place of business, or of the name of his predecessor in business, and the use of bona fide descriptions of the character or quality of his goods or services, from being treated as infringement at all. A trader does not, because another trader has registered a surname, lose the right to trade under his own.

Two further limits run on time rather than on purpose. Section 33 bars a proprietor who has knowingly acquiesced for a continuous period of five years in the use of a later registered mark from thereafter attacking that mark or opposing its use, unless the later registration was applied for in bad faith. Section 34, the most consequential limit of all, saves vested rights: nothing in the Act entitles the proprietor of a registered mark to interfere with the use by another person of an identical or deceptively similar mark in relation to goods or services for which that person, or his predecessor in title, has continuously used the mark from a date prior to the use of the registered mark by its proprietor or to the date of its registration, whichever is earlier. The prior user is the register’s standing reminder that the system records rights rather than creating them from nothing. A later registrant who sues a trader who was in the market first will find the registration answered by section 34, and the discovery has ended many infringement suits that looked straightforward on the register.

Advertising, comparison and the honest practices test

The meeting point of trade mark law and advertising practice is the honest practices standard, which appears on both sides of the infringement line. Section 29(8) makes advertising an infringement where it takes unfair advantage of a registered mark, is contrary to honest practices in industrial or commercial matters, is detrimental to the distinctive character of the mark, or is against its reputation. Section 30(1) protects the converse: use of a mark in advertising and elsewhere is not infringement where it is in accordance with honest practices and does not take unfair advantage of or damage the mark’s distinctive character or repute. Between the two provisions lies the law of comparative advertising. A trader may name a rival’s mark to identify the rival’s goods, and may compare his goods with them, because the mark’s function of identification is not a monopoly over reference: a market in which competitors cannot be named is a market in which comparison, and with it price and quality competition, cannot be communicated. What the advertiser may not do is use the comparison as a vehicle for disparagement, presenting the rival’s goods as defective or contemptible, or present his own goods in a manner that trades on the rival’s mark while disclaiming the connection the presentation creates. The distinction the courts draw is between puffery about one’s own goods, which the law tolerates, and denigration of the identified rival’s goods, which it restrains.

The same standard governs the use of a mark in keyword and marketplace settings in substance, though the Act was written before those settings existed: the statutory questions remain whether the use is in the course of trade, whether it is use as a trade mark or use to identify another’s goods for a lawful purpose such as resale or repair, and whether it is honest. A reseller of genuine goods may use the proprietor’s mark to describe what he sells, because the goods are the proprietor’s goods and the mark means them; section 30 protects the use of a mark in relation to goods lawfully bearing it, and the exhaustion principle that runs through the section means the proprietor’s right is spent, for those goods, once they have been put on the market by him or with his consent. The reseller crosses the line when he presents the goods in a way that suggests his business is the proprietor’s business, or is authorised by him in a manner it is not, which returns the analysis to the statute’s constant question: what will the public understand by the use?

How similarity is judged

Every stage of the Act at which two marks meet, examination, opposition, infringement and rectification, turns on the same judicial method, and the Supreme Court built that method in a small group of decisions that practitioners recite as a canon. The starting rule, from Corn Products Refining Co v Shangrila Food Products Ltd, is that the question whether one mark resembles another is to be answered in the first instance by the eye and the ear applied to the marks as wholes, and that the likelihood of confusion is a matter of first impression. The Court in that case refused to reason from the presence or absence of a single shared feature: marks must be considered as they will be encountered in trade, by purchasers who see or ask for them in the ordinary rush of commerce, and not in the artificial quiet of a courtroom comparison.

Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories supplied the corollary for composite marks. Where a mark consists of words, the comparison must take the words as a whole and must ask whether the essential feature of the claimant’s mark has been taken, rather than whether the defendant’s mark, broken into parts, differs in its unessential details. A trader who adopts the striking and memorable element of another’s mark does not escape by adding matter of his own around it, because the public carries away the essential feature and forgets the additions. The doctrine protects the substance of the sign rather than its letterpress, and it is the reason infringement analysis begins by identifying what the claimant’s mark means to the public before any question of copying is reached.

Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd then fixed the factors for the infringement and passing off comparison and attached a special rule to medicines. The factors the Court enumerated are the nature of the marks, whether word marks, label marks or composite marks; the degree of resemblance between them, phonetically, visually and in basic idea; the nature of the goods in respect of which they are used; the similarity in the nature, character and performance of the goods of the rival traders; the class of purchasers likely to buy the goods bearing the marks, their education and intelligence and the degree of care they are likely to exercise; the mode of purchase; and any other surrounding circumstances relevant to the extent of dissimilarity. On medicinal products the Court held that a stricter test must be applied, because confusion between different medicines may cause harm that confusion between ordinary goods does not, and that the public interest requires the possibility of confusion to be guarded against with greater vigilance in that field than in others. The decision is the standard citation wherever pharmaceutical marks are contested, and its reasoning about the consequences of confusion has been carried into other fields where error is dangerous.

Three consequences of this method are worth holding. The comparison is of impressions, not of documents, which is why trade dress, colour and get up enter the infringement inquiry even though the registered mark may be a word, where the word is used in a form calculated to recall the claimant’s presentation. The comparison assumes a purchaser of average intelligence and imperfect recollection, not a suspicious examiner, which is why side by side differences that are plain in court do not defeat a claim. And the inquiry is indifferent to the defendant’s intention except at the margins: an intention to deceive, where shown, supports an inference that deception is likely, but its absence does not answer a case built on resemblance, since honest adoption of a deceptively similar mark infringes as much as dishonest adoption does. The defendant’s innocence is relevant to costs and to the measure of relief, not to liability.

Passing off: the action the statute preserves

Section 27 performs the Act’s decisive act of restraint. Subsection (1) provides that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. Subsection (2) then provides that nothing in the Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof. Read together, the two subsections allocate the field. The statutory action for infringement belongs to the registered proprietor alone. The common law action for passing off belongs to whoever holds goodwill, registered or not, and the Act expressly declines to disturb it.

Passing off protects goodwill against misrepresentation. The classical statement of its elements is the trinity formulated by the House of Lords in Reckitt and Colman Products Ltd v Borden Inc, the Jif lemon case: the claimant must prove goodwill or reputation attached to the goods or services he supplies, in the mind of the purchasing public, by association with the identifying get up or name under which they are offered; a misrepresentation by the defendant to the public, leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant; and damage, in that he suffers or is likely to suffer injury to his business or goodwill by reason of the erroneous belief engendered by the misrepresentation. The Supreme Court of India has applied the same structure, and Indian courts treat goodwill, not registration, as the property the action protects: a foreign claimant must generally show goodwill within the jurisdiction, reputation in India being the matter in issue where the claimant’s mark is known here through the spillover of advertising and trade.

The territorial limit of goodwill produced the doctrine of trans border reputation, and its authority is N R Dongre v Whirlpool Corporation, where the Supreme Court protected a mark whose proprietor had not manufactured or sold the goods in India, on the footing that reputation is not confined by the boundaries within which goods are sold, where the mark has been advertised in publications circulating in India and is known to the Indian public through that circulation. The decision carried two propositions of lasting effect. The first is that goodwill for the purposes of passing off may exist in a jurisdiction where the claimant does not trade, because what the action protects is the attractive force of the mark in the minds of the public, and that force is generated by advertisement as well as by sale. The second is that an Indian trader who adopts a mark known abroad, in the expectation that the foreign proprietor’s absence from the Indian market leaves the field open, adopts at his peril: when the foreign proprietor arrives, or even before, the Indian adopter must answer for passing off if the public associates the mark with the earlier source. The 1999 Act absorbed the principle for registered and unregistered marks alike in the well known provisions, and section 11(9), in forbidding the Registrar to require use or registration in India as a condition of well known status, writes the Whirlpool proposition into the statute.

The practical comparison between the two actions decides litigation strategy, and it is worth stating plainly. In infringement, the registration is the title: the proprietor produces the certificate, identity or similarity and the goods are compared, and use by the defendant is infringement without inquiry into the defendant’s honesty where the mark and goods are identical. In passing off, there is no title deed; goodwill must be proved with evidence of sales, advertising and recognition, deceptive similarity is assessed in the full context of the market, and an honest defendant who has traded without deception may succeed where a registrant defendant in an infringement suit would not. The unregistered proprietor’s action is therefore harder to run and wider once run: it reaches get up, packaging and trade dress that no single registration covers, and it is not confined to the goods for which a registration exists. A side by side treatment of how the several rights in this cluster divide these questions between them is set out in the comparison of patent, copyright and trade mark, which takes up the contrast across the rights rather than within this one.

The comparison with the neighbouring rights is what gives section 27 its significance for the series. There is no passing off for a patent: an unpatented invention is free for all to use, however much goodwill its maker has built in it. There is no passing off for an unregistered design or an unregistered geographical indication. Trade mark is the only right in the cluster in which the law protects what the market has recognised independently of what the register records, and that is the namable claim with which this article began. The litigation volume follows. A dispute system with two doors, one statutory and one common law, each with its own burdens and reach, will always be busier than a system with one door and a registration at its threshold.

Situation	Cause of action	What must be proved	Forum	Remedy
Registered mark used for identical goods or services	Infringement, section 29(1) and (3)	Registration, identity of mark and goods; confusion presumed	District court or above, or a Commercial Court where the Commercial Courts Act applies	Injunction, damages or account of profits, delivery up
Registered mark used for similar goods or services	Infringement, section 29(2)	Registration, identity or similarity, and likelihood of confusion or association	District court or above, or a Commercial Court where the Commercial Courts Act applies	Injunction, damages or account of profits, delivery up
Registered mark with reputation used for dissimilar goods or services	Infringement, section 29(4)	Registration, reputation in India, use without due cause taking unfair advantage or detrimental to distinctive character or repute	District court or above, or a Commercial Court where the Commercial Courts Act applies	Injunction, damages or account of profits
Unregistered mark with goodwill	Passing off, saved by section 27(2)	Goodwill in the jurisdiction, misrepresentation likely to deceive, damage	District court or above, or a Commercial Court where the Commercial Courts Act applies	Injunction, damages or account of profits
Well known mark	Infringement, including section 29(4), and passing off	The elements of the action sued on, with well known status established under section 11(6) factors or by a rule 124 determination	District court or above, or a Commercial Court where the Commercial Courts Act applies	Injunction, damages or account of profits, including dilution relief across classes

Choosing and clearing a mark under the Act

The statute reads differently from the filing side than from the courtroom side, and a short account of the clearance discipline belongs in an explanation of the Act, because most refusals, oppositions and infringements are the downstream cost of decisions taken before the application was filed. The first decision is the sign itself. The spectrum of distinctiveness described in the section on the absolute grounds is, in practice, a pricing mechanism: a coined word costs little to register and much to invent and promote, because the public must be taught what it means; a descriptive word costs nothing to explain and a great deal to register, because the proviso to section 9(1) demands an evidential record, and because the registration, if granted, will be thin, leaving competitors free to use the same descriptive matter in its descriptive sense under section 30. A business that chooses a descriptive brand is choosing to spend its money on evidence and argument; a business that chooses an invented brand spends it on advertising. The Act does not prefer either choice. It prices them.

The second decision is the search. The register is public, and the Registry maintains a search facility in which a proposed mark can be tested against the marks already recorded, class by class, for identity and for the phonetic and visual resemblance that section 11 and section 29 treat as decisive. A clearance search is not a formality. The examiner will search the same register, and an applicant who has not searched is delegating the discovery of his obstacles to the office that will refuse him, at the price of the filing date he will lose when the application fails. The search must also be run outside the register, in the market itself, because section 11(3) and section 34 give rights to unregistered users, and a mark that is clear on the register may be blocked by a trader who has used a similar sign for years without filing. Clearance that looks only at the register answers only half the questions the Act asks.

The third decision is the specification. An application claims the mark for specified goods or services within the classes of section 7, and the width of that claim sets both the strength and the vulnerability of the resulting registration. A specification wider than the trade invites a citation against the unused part of it, a non use application under section 47 after five years, and an opponent’s argument that the applicant never intended to use the mark across the claim. A specification narrower than the trade leaves the adjacent goods or services open to a rival’s filing, which the proprietor must then oppose on relative grounds he could have covered by his own application. The honest course the Act rewards is the specification that matches a real and documented trade: filing on a proposed to be used basis is expressly permitted by section 18, and the intention it records is tested, years later, against the use the proprietor can prove. The affidavit of use required by the rules of 2017 where use is claimed, and the dated record of use that supports it, are the applicant’s first exercise in the evidentiary discipline that runs through the whole statute.

The fourth decision is what to file: the word alone, the device alone, the composite label, or the series. Section 17’s rule that registration protects the composite as a whole makes the composite filing the weakest of the set where the word is the valuable element, and the practice of filing the word mark separately, in standard characters, is the profession’s answer to that rule. Applicants who file only the label commonly discover, when a rival adopts the same word in a different get up, that their registration speaks to the label and the word travels free, and that the action they must then bring is passing off on the goodwill in the word, with its heavier proof, instead of the infringement action the separate filing would have given them.

The fifth decision is whether to watch. The Trade Marks Journal, in which accepted applications are advertised, is published for the world, and the four month opposition window runs whether or not the proprietor of an earlier right sees the advertisement. A proprietor who does not watch the journal learns of a conflicting application when it ripens into a registration, and must then proceed by rectification as a person aggrieved, carrying the burdens that section 31 and, after seven years, section 32 place in his way. The watch is therefore not an optional refinement of practice but the point at which the Act’s timetable is either used or lost, and the larger portfolios maintain it as a routine, matching each journal against the house list of marks and the names under which the business actually trades, because the application that matters is often filed not in the proprietor’s principal class but in the class of the trade he is about to enter. The same discipline applies in reverse to the proprietor’s own filings abroad: the six month priority the Paris Convention allows from the first filing, and the Madrid designations that follow it, are each lost by the same inattention, on timetables that admit no restoration of the kind section 25 gives to a lapsed Indian registration.

Duration, renewal and the loss of a registration

Section 25 fixes the term. The registration of a trade mark is for a period of ten years, and it may be renewed from time to time for further periods of ten years on application and payment of the prescribed fee. The right is therefore perpetual in design and conditional in fact: it endures indefinitely only if its proprietor renews it each decade and goes on using it. The Registrar is required, before the expiration of the registration, to send notice to the proprietor of the date of expiration and the conditions for renewal. If the fee is not paid, the Registrar may remove the mark from the register, but the statute cushions the lapse in two stages. Renewal remains possible within six months after expiration on payment of the fee with a surcharge. And where a mark has been removed for non payment, an application for restoration and renewal may be made within one year from the expiration of the last registration, and the Registrar, if satisfied that it is just to do so, may restore the mark subject to conditions. A registration that has expired and is awaiting renewal or restoration stands in a shadowed position against later applicants, since a mark removed from the register is treated, for the year that follows, as a mark already on it when a new application for a similar mark is examined, unless the Registrar or the court is satisfied that there has been no use of the removed mark during the two years preceding its removal. The filing diary of a trade mark practice is, in large part, machinery for never letting a client reach these provisions.

Removal for non use is the register’s own remedy against hoarding, and it is the principal way a blocking registration is cleared. Section 47 permits a registered trade mark to be taken off the register, on the application of any person aggrieved, on either of two grounds. The first is that the mark was registered without any bona fide intention on the part of the applicant that it should be used in relation to the goods or services, and that there has in fact been no bona fide use of it up to a date three months before the application. The second is that, up to a date three months before the application, a continuous period of five years from the date on which the mark was actually entered in the register, or a longer period, had elapsed during which there was no bona fide use of the mark in relation to those goods or services by any proprietor. The tribunal hearing such an application takes account of use that is shown, may refuse removal where the applicant for removal seeks the registration of a similar mark for himself in the circumstances the section specifies, and may impose limitations instead of removal where the non use is confined to part of the specification. Use by a registered user counts as use for these purposes, and the section looks to bona fide use in the market, not token use devised to defeat the application. The five year period is the answer to the question every blocked applicant asks: a registration that is not being used is not a permanent obstacle, it is a wasting one.

Below rectification sits the Registrar’s own power of correction, in section 58, by which the register is kept accurate in matters that do not require a contest. On the application of the registered proprietor, the Registrar may correct any error in the name, address or description of the proprietor, cancel the entry of a trade mark on the register, strike out goods or services from among those for which the mark is registered, and correct any other error or defect in the register; and a proprietor may likewise surrender part of a specification voluntarily, which is a common answer to a citation or a non use threat against the unused part of a wide filing. Section 59 provides for the adaptation of entries in the register when the classification of goods and services is amended, so that a revision of the international classification does not disturb the substance of rights recorded under the old arrangement. The distinction between the two powers is the distinction between the contested and the clerical: what a proprietor asks for himself, the Registrar corrects under section 58; what an aggrieved stranger asks against him, the tribunal decides under section 57.

Rectification, under section 57, is the register’s corrective jurisdiction. On the application of any person aggrieved, the Registrar or the High Court, as the case may be since the abolition of the appellate board, may make such order as it thinks fit for cancelling or varying the registration of a trade mark on the ground of any contravention of, or failure to observe, a condition entered on the register in relation to it. The tribunal may likewise rectify the register by making, modifying or deleting an entry, where an entry was made in the register in the absence of sufficient cause, or where an entry wrongly remains on the register, or where there is an error or defect in an entry. Standing is confined to a person aggrieved, a phrase the courts have read to mean a person with a genuine interest damaged or liable to be damaged by the entry, and not a stranger or a busybody. Rectification and opposition are the two ends of the same policy: opposition keeps unregistrable marks off the register before entry, rectification removes them after it, and both ask the same questions about distinctiveness, similarity and entitlement, at different moments in the life of the right.

Marks that degenerate: the genericide risk

A registration can die by success. Where a mark becomes, through the proprietor’s promotion or through his neglect of infringers, the common name of the goods themselves in the understanding of the public and the trade, the sign has ceased to perform the only function the Act protects: it no longer distinguishes one source from another because it denotes the thing. At the filing stage the same condition is a refusal ground, the third limb of section 9(1), covering matter that has become customary in the language and practices of the trade. After registration, the degeneration is a ground on which the entry may be attacked in rectification, on the footing that the mark has ceased to be distinctive of the proprietor’s goods and wrongly remains on the register. The doctrine allocates a continuing duty to the proprietor, and it is a duty of a particular kind: to use the mark as a mark, as an adjective attached to a generic noun rather than as the noun itself, to mark it as registered where that is the case, and to take proceedings against the publications and competitors whose usage teaches the public the generic sense. The history of the right in every common law country is littered with names that were once marks of the highest distinctiveness and are names of products everywhere, and in each case the loss occurred not in a single judgment but by a thousand unsupervised usages, which is why trade mark practice treats dictionaries, journalists and the proprietor’s own sales force as audiences to be policed with the same attention as infringers. The Indian Act gives the proprietor the instruments, the opposition, the infringement suit and the criminal chapter against the trade that lives by imitation, and it leaves the slower erosion, the erosion by language, to his vigilance, because no registrar can search the speech of a market.

Assignment and registered users

A trade mark is property that can move. Chapter V of the Act, sections 37 to 45, governs assignment and transmission. Section 37 states the power: the person for the time being entered in the register as proprietor of a trade mark shall, subject to the Act and to any rights appearing from the register to be vested in any other person, have power to assign the mark and to give effectual receipts for any consideration for the assignment. Section 38 makes a registered trade mark assignable and transmissible, whether with or without the goodwill of the business concerned, in respect of all or any of the goods or services for which it is registered. Section 39 does the same for unregistered marks. The permission to assign without goodwill, sometimes called assignment in gross, is a deliberate feature: the goodwill may be worthless, the business closed, or the mark more valuable to a buyer in another line, and the statute allows the sign to travel. It hedges the permission with safeguards against deception. Section 40 restricts assignments that would create exclusive rights in different persons in respect of the same or similar goods or services in circumstances likely to deceive or cause confusion, and section 41 restricts the assignment of associated marks separately from one another. Section 42 requires an assignment that is not with the goodwill of the business to be advertised, within the period the section prescribes, so that the public is not misled by a change of source it has no means of knowing. Section 45 requires an assignee to apply to the Registrar to register his title, and the assignment is not effective against a person who has acquired a conflicting interest in ignorance of it until the application is made. The register, once again, is where third parties are entitled to look.

Chapter VI, sections 48 to 54, governs registered users, the Act’s licensing machinery. A person other than the proprietor may be entered in the register as a registered user of a mark in respect of some or all of the goods or services for which it is registered, under section 48, on a joint application by proprietor and proposed user under section 49, supported by an affidavit and documents showing the degree of control the proprietor will exercise over the permitted use, the goods or services concerned, any conditions, and the duration. The point of the machinery is stated in section 2(1)(r) read with section 48: use of a mark by a registered user is permitted use, and permitted use is deemed to be use by the registered proprietor, for the purposes of section 47 and for any other purpose for which the use of the mark matters under the Act. Licensing, in other words, does not dilute the proprietor’s use; it constitutes it. The Registrar may vary or cancel a registered user entry under section 50, including at the instance of the proprietor or of another registered user, and cancellation is available where the user has used the mark otherwise than in accordance with the agreement or in a way liable to deceive. The registered user is not given power to assign his interest, and section 52 makes clear that he takes no right to proceed against infringers as proprietor, though he may call on the proprietor to act and, if the proprietor refuses or neglects for two months, sue in his own name as if he were the proprietor. The machinery is formal and, in a market where much licensing is informal, often skipped; the risk of skipping it is that use by an unrecorded licensee, if not otherwise brought within permitted use, may fail to protect the registration when a non use application arrives.

The reason the Act insists on control, and not merely on paperwork, is the function of the mark itself. A mark tells the public that the goods come from one source or from sources under one control. A licence without quality control breaks that statement while keeping its form: the public buys on the faith of the mark, and receives goods whose standard the proprietor has not set and does not inspect. Franchising, the dominant modern form of licensed use, is built on exactly the control the Act contemplates, operating manuals, inspection rights, approved suppliers and termination for breach, and a franchise network that documents its control is generally able to bring its use within the statutory scheme. The proprietor who licenses loosely, taking a royalty and asking nothing, risks more than a failed audit of his licensees: he risks the finding that his mark has ceased to distinguish his goods from goods over which he exercises no control at all, which is the beginning of the argument that the registration is vulnerable. The definition of permitted use also reaches a person who is not a registered user where the use is by consent of the proprietor under a written agreement and complies with the conditions and limitations to which the registration is subject, so a written licence with real control provisions does work under the Act even before, or without, a registered user entry; what the statute will not protect is the oral, uncontrolled permission whose existence the proprietor asserts only when the registration is attacked.

Collective marks and certification marks

Two chapters of the Act adapt the general scheme to marks that do not identify a single trader. Chapter VIII, sections 61 to 68, deals with collective marks. A collective mark, as section 2(1)(g) defines it, distinguishes the goods or services of members of an association of persons, not being a partnership, which is the proprietor of the mark, from those of others. An application for a collective mark must be accompanied by draft regulations governing its use, under section 63, specifying the persons authorised to use the mark, the conditions of membership of the association and the conditions of use, including sanctions against misuse, and the mark is not registered if it is liable to mislead the public into thinking it is something other than a collective mark. The association owns; the members use; and the public is told, by the regulations on the public file, on what terms.

Chapter IX, sections 69 to 78, deals with certification trade marks, defined in section 2(1)(e) as marks certifying origin, material, mode of manufacture or performance, quality, accuracy or other characteristics. The distinguishing rule of the chapter is in section 70: a mark shall not be registrable as a certification trade mark in the name of a person who carries on a trade in the goods of the kind certified or in the provision of services of the kind certified. The certifier must stand outside the trade he certifies, since a certificate issued by a competitor about his own goods certifies nothing. An application under section 71 must satisfy the Registrar that the applicant is competent to certify, must be accompanied by draft regulations governing the use of the mark, and the Registrar considers whether registration would be to the public advantage, advertises the application, and entertains opposition. Certification marks are where the trade mark system meets standard setting: the mark is a statement, by a body that does not sell the goods, that the goods meet a standard the body maintains, and the statute polices the independence of the statement rather than the originality of the sign.

Offences: the criminal chapter

Chapter XII equips the Act with criminal sanctions against the deliberate counterfeiter, and they are aimed at falsity rather than at similarity judged in civil proceedings. Section 102 defines the falsification of a trade mark: a person falsifies a mark who, without the assent of the proprietor, makes that mark or a deceptively similar mark, or falsifies any genuine mark by alteration, addition, effacement or otherwise, and a person falsely applies a mark who, without the proprietor’s assent, applies the mark or a deceptively similar mark to goods or services or to packaging. Section 103 prescribes the penalty for applying false trade marks and false trade descriptions: a person who falsifies any trade mark, or falsely applies it to goods or services, or possesses instruments for falsifying, or applies a false trade description, or tampers with a required indication of origin, shall, unless he proves that he acted without intent to defraud, be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years, and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees, with a proviso permitting the court, for adequate and special reasons recorded in the judgment, to impose a lesser sentence. Section 104 imposes the same scale of penalty on a person who sells, exposes for sale, or has in his possession for sale goods or services bearing a false trade mark or false trade description. Section 105 raises the floor for a second or subsequent conviction under section 103 or section 104: imprisonment of not less than one year and up to three years, and a fine of not less than one lakh rupees and up to two lakh rupees. A separate and lesser offence, under section 107, punishes falsely representing a trade mark as registered, a provision that gives legal meaning to the familiar practice of marking goods with a registration symbol the proprietor does not hold. The machinery of the chapter is in section 115. The offences under sections 103 and 104 are cognizable, and a police officer not below the rank of deputy superintendent of police, or an officer of equivalent rank, who is satisfied that an offence has been, is being or is likely to be committed, may search without a warrant the premises where the goods, dies, blocks, machines or plates are held and seize them; but the section requires such an officer, before making the search and seizure, to obtain the opinion of the Registrar on facts involved in the offence and to abide by that opinion. The Registrar’s opinion is the statute’s safeguard against the use of criminal process in what is, on examination, a bona fide dispute about similarity, and it marks the boundary the Act keeps between the counterfeiter, who is the chapter’s target, and the honest rival trader, who is not.

Why does a registration statute carry criminal penalties at all?

Counterfeiting differs from ordinary infringement in kind, not merely in degree. The counterfeiter does not compete with the proprietor; he impersonates him, selling his own goods as the proprietor’s to buyers who are themselves deceived, and the trade is organised to disappear when a civil suit is filed.

Injunctions and damages, the civil remedies of section 135, are slow against a defendant with no fixed business, and the legislature therefore armed sections 103 to 105 with mandatory minimum sentences of imprisonment and fine, so that the deliberate false application of a mark is prosecuted as a fraud on the public and not only compensated as a private wrong.

The criminal chapter operates alongside the civil remedies rather than in place of them. Section 135 sets out the reliefs a court may grant in an infringement or passing off suit: an injunction, subject to such terms as the court thinks fit; at the option of the plaintiff, either damages or an account of profits; and an order for delivery up of the infringing labels and marks for destruction or erasure. The section also carries the Act’s concession to the innocent defendant: where the defendant establishes that at the time when he began to use the mark complained of he was unaware, and had no reasonable ground for believing, that the claimant’s trade mark was registered or was in use, the court will refuse relief by way of damages, other than nominal damages, or an account of profits, though the injunction may still go. The concession marks the boundary of the register’s publicity function. Registration is notice to the world, and the trader who searches will rarely qualify as unaware; the trader who copied will never qualify. Between them stands the honest adopter of a remote and unused mark, and it is for him that the proviso exists, converting what would have been an account of years of profits into nominal damages and a change of name. Section 134 fixes the forum for those suits in a court not inferior to a District Court having jurisdiction, and adds, for the registered proprietor and for the passing off claimant alike, the plaintiff side rule that the suit may be brought where the plaintiff resides or carries on business. Enforcement costs, procedure and the working of the Commercial Courts are matters on which businesses take advice for their own disputes; this article is an account of the statute, offered as legal information and not as advice on any particular mark, and the distinction matters because trade mark rights turn on the facts of use and registration in each case.

Interim relief, and suits against infringers unknown

Because a mark is injured by every week of imitation, the decisive stage of most trade mark litigation is not the trial but the first hearing. The plaintiff who files a suit seeks, in the same proceeding, an interim injunction restraining the defendant from using the mark until the suit is decided, and he must satisfy the court of the three conditions the civil law imposes for such relief: a prima facie case on the material filed, a balance of convenience in his favour, and injury that money cannot repair if the injunction is refused and he later succeeds. In trade mark matters the second and third conditions are shaped by the statute: confusion in the market, once established over months of trading, destroys the distinctiveness the action exists to protect, and the injury is of the kind that an account of profits cannot undo, because the public that learned to associate the mark with the defendant’s goods cannot be made to unlearn it by a decree. The courts therefore grant interim injunctions in a substantial share of cases where the registration is produced and the resemblance is close, and refuse them where the plaintiff has delayed, where his own title is doubtful, or where the defendant shows an honest and earlier trade of his own, in which case the suit proceeds to trial with both parties in the market and the register’s priorities tested in full.

Two procedural instruments of Indian practice belong to this account. The first is the order for the appointment of a local commissioner, obtained in counterfeiting matters, under which a court appointed officer attends the defendant’s premises with the plaintiff’s representatives, inventories and seals the infringing goods, labels and printing material found there, and reports to the court; it is the mechanism by which evidence that would otherwise be destroyed on notice of the suit is preserved for the trial. The second is the order against persons unknown, the John Doe order, which the Delhi High Court developed in intellectual property litigation at the start of this century, permitting a plaintiff who can show that infringing goods are being circulated by persons he cannot name, typically at the wholesale and distribution level, to obtain an injunction that binds the unnamed defendants when they are identified in execution of the order. Both instruments are exercises of the ordinary powers of a civil court rather than creations of the Trade Marks Act, and both answer the same feature of the trade in imitations: the defendant structure is designed to dissolve, and a procedure that required every defendant to be named and served before any relief could issue would leave the proprietor permanently one step behind the market he is trying to protect. Their limits are the limits of the civil process itself: they are obtained on the plaintiff’s material, they are supervised by the court, and the defendant who appears and shows an honest title will have the order varied or vacated against him.

The international route

The Madrid Protocol supplies the cross border machinery, and the Act houses it in chapter IVA, inserted by the Trade Marks (Amendment) Act, 2010 and brought into force on 8 July 2013, when the Protocol entered into force for India. The scheme works in both directions. An applicant who has filed or registered a mark in India may file an international application through the Trade Marks Registry, which acts as the office of origin, designating the member countries in which protection is sought; the application is transmitted to the International Bureau of the World Intellectual Property Organization, which records an international registration and notifies the designated countries, each of which examines the designation under its own law as if the mark had been filed there directly. An international registration founded on a foreign application or registration may in turn designate India; the Registrar advertises the designation, and section 36E provides that protection is extended to the mark in India unless the Registrar, after examination and opposition in the same manner as for a national application, communicates a refusal to the International Bureau within eighteen months. The international registration is dependent on the basic application or registration for its first five years, so that if the home filing falls, the international registration founded on it falls with it, subject to transformation into national applications. What the Protocol changes is the clerical burden, not the substance of rights: each designated country applies its own refusal grounds, and the registration that results is a bundle of national rights obtained through a single filing, a single language and a single renewal. The Indian end of the machinery is administered by the Registry, which certifies the international application against the basic Indian application or registration, collects the handling fee the rules prescribe, and transmits the file to Geneva; where the international registration designates India, the Registry’s examination, advertisement and opposition proceed as for a national filing, so that an Indian opponent meets a Madrid designation in the same journal and on the same four month timetable as a domestic application. The system also permits the holder to designate further countries after the international registration has been recorded, so a filing programme can follow an export programme market by market, and it permits an international registration to replace an earlier national registration for the same mark in the same name, preserving the earlier rights, which is the mechanism by which a proprietor with a shelf of national registrations consolidates them into one renewal date and one record.

Appeals, and the difference the forum makes

Section 91 provides the appeal from the Registrar: any person aggrieved by an order or decision of the Registrar under the Act, or the rules made under it, may prefer an appeal to the High Court within three months from the date on which the order or decision is communicated to him, and the High Court may confirm, modify or set aside the decision and send the matter back with directions. The appeal lies on the record made before the Registrar, which is why the evidence rounds in an opposition are conducted as a trial: the affidavit evidence filed in the Registry is, in substance, the evidence on which the appeal will be decided. Aggrieved persons include the applicant refused, the opponent whose opposition failed, and the proprietor whose mark was removed or whose registered user entry was cancelled, and the three month period runs from communication, so the date on the Registrar’s order matters to the party who receives it late.

Opposition, rectification and appeal are three doors into the same questions, and the practitioner chooses between them by standing, timing and burden. Opposition is open to any person, requires no interest beyond the statutory one, and is confined to the window after advertisement; it is the cheapest contest and the only one available before the right exists. Rectification requires a person aggrieved, may be brought at any time during the life of the registration, and attacks the entry on the register itself, including on grounds that arose after registration, such as a mark that has become deceptive through the proprietor’s own conduct. Appeal corrects the Registrar’s errors in either proceeding. A rival who slept through the advertisement window is therefore not remediless, but his road is longer: he must qualify as aggrieved, and he carries the registration’s section 31 status as prima facie valid, and, after seven years, the weight of section 32, against him. The Act’s timetable for trade mark disputes is, in this sense, a set of incentives to watch the journal.

One further feature of the Registrar’s powers runs through all three proceedings and is easily missed: the discretion to impose conditions, limitations and disclaimers. An application that cannot be accepted for the whole of a wide specification may be accepted for part of it; a mark that contains a descriptive element it cannot own may be registered with a disclaimer of exclusive right in that element; two marks that would collide across the whole country may be kept apart by territorial limitations. The register that results is not a list of absolute grants but a set of calibrated ones, each recording the terms on which the sign may be used exclusively, and the calibration is itself a large part of what the examination, opposition and rectification machinery exists to achieve. A proprietor reading his own registration should therefore read its conditions with the same care as its specification, because the conditions, and not the mark in the abstract, mark out what he owns.

The forum

The Act as enacted sent appeals from the Registrar to the Intellectual Property Appellate Board, and gave the board jurisdiction over rectification applications alongside the High Courts. The Tribunals Reforms legislation abolished the board with effect from 4 April 2021: the definitions referring to it were omitted, appeals under section 91 lie to the High Court, and rectification under section 57 is sought before the Registrar or the High Court. The change moved a specialist tribunal’s docket into courts that have since constituted intellectual property divisions with their own rules of procedure, and the consequences of that institutional transfer, for this Act and for the cluster as a whole, are examined in the guide article rather than here. For the reader of the statute, the working points are two. The text of the Act in its current form has to be read with the substitutions the 2021 legislation made, so that a reference in an older edition to the appellate board is a reference to a forum that no longer sits. And the abolition did not change the substantive law at any point: every ground of refusal, every infringement provision and every defence in this article survived the transfer exactly as it stood, because what moved was the identity of the adjudicator, not the content of the rights.

The character of the Act

The argument of this article can be stated in one movement. The Trade Marks Act, 1999 is a registration statute built around a right that does not depend on registration, and every distinctive feature of it follows from that tension. Because protection can arise from the market, the register must be kept honest by refusal grounds that stop traders monopolising the language of the trade; because the register confers real advantages, the procedure to enter it must be adversarial, with advertisement, opposition and appeal; because a registration endures indefinitely, it must be policed by renewal, by removal for non use and by rectification; and because fame does not respect the classes of the register, the Act must protect the well known mark beyond confusion altogether, which it does in the provisions that have generated its most contested administrative experiment. The neighbouring statutes in this cluster ask one question of the State: grant the right or refuse it. This Act asks a continuing question of the market as well, and the register is its running answer, corrected by opposition, by rectification and by the common law action it was careful, in section 27, not to displace. That is also why the Act rewards a particular professional virtue more reliably than brilliance in argument: the keeping of records. The dated specimen of use, the advertisement preserved with its invoice, the licence in writing with its control provisions, the journal watched and the renewal diarised, are the materials from which acquired distinctiveness, honest concurrent use, prior use and permitted use are all proved, and they are assembled years before the dispute in which they will be needed, by proprietors who understood that in this statute the evidence is the right.

Frequently Asked Questions

Q: What can be registered as a trade mark in India?

Section 2(1)(zb) allows the registration of any mark capable of being represented graphically and capable of distinguishing one person’s goods or services from another’s. Section 2(1)(m) lists what a mark may be: a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours, or any combination of these. Form alone does not secure registration. The sign must survive the absolute grounds in section 9, so a coined or arbitrary word is readily accepted, while a word that describes the goods, their quality or their geographical origin is refused unless it has acquired distinctiveness through use. Non traditional signs such as sounds may be filed under the Trade Marks Rules, 2017, with the sound recorded and its graphical notation supplied.

Q: What are the absolute and relative grounds for refusing a trade mark?

The absolute grounds, in section 9, attach to the mark itself. A mark is refused if it is devoid of distinctive character, if it consists exclusively of indications designating the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or if it consists exclusively of matter customary in the trade. Marks that deceive the public, hurt religious susceptibilities, contain scandalous or obscene matter, use names or emblems prohibited by the Emblems and Names (Prevention of Improper Use) Act, 1950, or consist exclusively of a functional or value giving shape are also refused. The relative grounds, in section 11, attach to earlier rights: identity or similarity with an earlier mark coupled with identity or similarity of goods or services where confusion is likely, and conflict with a well known earlier mark even across dissimilar goods or services.

Q: How long does a trade mark registration last?

Section 25 of the Act fixes the term at ten years from the date of registration, which is deemed to be the date on which the application was filed. The registration may be renewed for successive periods of ten years, on application and payment of the prescribed fee, without any limit on the number of renewals, so a mark that is used and renewed can be maintained indefinitely. The Registrar must notify the proprietor before the term expires. If renewal is missed, renewal with a surcharge remains possible within six months after expiration, and a mark removed for non payment may be restored on application within one year from the expiration of the last registration, if the Registrar considers restoration just.

Q: How does a mark become a well known trade mark?

A mark becomes well known by being recognised, to the standard set by section 2(1)(zg), by the substantial segment of the public that uses the goods or receives the services, so strongly that its use on other goods or services would be taken as indicating a connection with the same source. Section 11(6) requires the Registrar to weigh the knowledge and recognition of the mark in the relevant section of the public, the duration, extent and geographical area of its use and of its promotion, the registrations and applications reflecting that recognition, and the record of successful enforcement, including any earlier recognition by a court or Registrar. A court or the Registrar may record the status in contested proceedings, and since the Trade Marks Rules, 2017, rule 124 also allows a proprietor to apply to the Registrar for the determination, on evidence and payment of a fee of one lakh rupees, after which the mark is entered in the list of well known trade marks.

Q: What is the difference between infringement and passing off?

Infringement is the statutory action, available only to the registered proprietor of a mark. The registration is itself the title sued on, and under section 29 the proprietor must show that the defendant has used an identical or deceptively similar mark in the course of trade on the goods or services covered, or, for a mark with a reputation, on dissimilar goods in a way that takes unfair advantage of or damages its distinctive character. Actual confusion need not be proved where the marks and goods are identical, because section 29(3) presumes it. Passing off is the common law action preserved by section 27(2), open to any trader with goodwill, registered or not. Its claimant must prove three things: goodwill in the mark within the jurisdiction, a misrepresentation likely to lead the public to believe the defendant’s goods or services are the claimant’s, and damage resulting from that belief.

Q: Can an unregistered trade mark be protected?

Yes, through the action for passing off, which section 27(2) expressly preserves. Section 27(1) bars any proceeding for infringement of an unregistered mark, so the unregistered proprietor cannot sue under section 29 and cannot rely on a certificate as title. What he protects instead is his goodwill: if he proves that the mark has come to identify his goods or services to the public in India, that the defendant has misrepresented his goods or services as the claimant’s, and that damage follows, the court will restrain the defendant and award damages or an account of profits. The unregistered proprietor also has a statutory foothold in the registration system itself. An earlier unregistered mark used in the course of trade is an earlier right for the purposes of section 11, its use can ground an opposition, and under section 34 the prior user can continue using his mark against the later registrant.

Q: When can a registration be removed for non use?

Section 47 allows any person aggrieved to apply for a registration to be taken off the register on either of two grounds. The first is that the mark was registered without a bona fide intention that it be used, and there has in fact been no bona fide use of it up to a date three months before the application. The second is that a continuous period of five years from the date on which the mark was entered in the register, or a longer period, has elapsed up to a date three months before the application without any bona fide use of the mark in relation to the goods or services concerned. Use by a registered user counts as the proprietor’s use. The tribunal may limit the registration to the goods or services actually used rather than remove it entirely, and special circumstances in the trade, not amounting to an intention to abandon, can answer an application based on the second ground.

Q: How does international trade mark registration work?

India is a member of the Madrid Protocol, and chapter IVA of the Act, in force from 8 July 2013, works the system in both directions. An Indian applicant files one international application, based on an Indian application or registration, through the Trade Marks Registry as office of origin, designating the member countries where protection is wanted. The World Intellectual Property Organization records the international registration and notifies each designated country, which examines the designation under its own law and may refuse it on its own grounds. A holder abroad may likewise designate India, and the Registrar here advertises the designation and must communicate any refusal to the International Bureau within eighteen months, failing which the mark is protected in India. For five years the international registration depends on the basic filing at home, so protection abroad rises and falls with it during that period.

Q: What happens after a notice of opposition is filed against an application?

The Registrar serves a copy of the notice on the applicant, who must file a counter statement of the grounds on which he relies within two months of receiving it; if he does not, the application is deemed to have been abandoned. If a counter statement is filed, the Registrar serves it on the opponent, and the parties then exchange evidence in the sequence the Trade Marks Rules, 2017 prescribe: evidence in support of the opposition, evidence in support of the application, and evidence in reply, each within the periods fixed by the rules. The Registrar then gives the parties an opportunity to be heard, if they wish it, and decides whether registration is to be permitted and on what conditions or limitations, and may take account of a ground of objection even if the opponent did not rely on it. An appeal against the Registrar’s decision lies to the High Court.

Q: What does deceptive similarity mean, and how do courts judge it?

Section 2(1)(h) deems a mark to be deceptively similar to another if it so nearly resembles that other mark as to be likely to deceive or cause confusion. The Supreme Court settled the method of comparison in Amritdhara Pharmacy v Satya Deo Gupta: the marks must be compared as a whole, not dissected into parts or placed side by side, because the purchaser does not carry the earlier mark before him for comparison; the question is whether the total impression left on a person of average intelligence and imperfect recollection is such that he is likely to be confused or deceived. The court in Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd added, for marks in the field of medicines, that the comparison must be stricter, because confusion between medicinal products can injure health. Sound counts alongside appearance, so a mark that reads differently may still fail because it is pronounced the same.

Q: What happens if the renewal of a registration is missed?

The consequences unfold in stages rather than at once. The Registrar first sends the proprietor notice of the approaching expiration date and of the conditions on which renewal may be obtained. If the renewal fee is not paid by the expiration of the registration, the mark may be removed from the register, but renewal remains possible within six months after expiration on payment of the renewal fee together with the prescribed surcharge. If the mark has in fact been removed for non payment, the proprietor may apply within one year from the expiration of the last registration for restoration of the mark and its renewal, and the Registrar may restore it, subject to such conditions as he thinks fit, if satisfied that it is just to do so. A removed mark is still treated as an earlier mark against a rival application filed within a year of removal, unless the tribunal is satisfied there was no use of it in the two years before it came off.

Q: Who can seek rectification of the register, and on what grounds?

Section 57 gives the power to any person aggrieved, a standing requirement the courts interpret as a person who has a real interest in the register and is damaged, or liable to be damaged, by the entry complained of; a mere stranger cannot apply. The application is made to the Registrar or to the High Court. The grounds are that an entry was made in the register in the absence of sufficient cause, that an entry wrongly remains on the register, that there is an error or defect in an entry, or that the registration contravenes, or the proprietor has failed to observe, a condition entered on the register in relation to the mark. In practice the commonest ground is that the mark was unregistrable from the start, because it offended section 9 or section 11 when filed, which makes rectification the post registration counterpart of opposition. The tribunal may cancel the registration, vary it, or correct the entry as it thinks fit.

Q: What is a registered user, and why does permitted use matter?

A registered user is a person, other than the proprietor, who is entered in the register under section 48 as entitled to use the mark for some or all of the goods or services for which it is registered. The entry is made on a joint application by the proprietor and the proposed user under section 49, supported by an affidavit and documents disclosing the relationship between them, the degree of control the proprietor exercises over the use, and the terms on which the use is permitted. The entry matters because of the doctrine of permitted use: use of the mark by a registered user is deemed to be use by the proprietor himself, for the purposes of section 47 and for every other purpose for which use of a mark is material under the Act. A licence recorded in this way therefore keeps the registration safe against removal for non use, and quality control by the proprietor over the user’s goods is what keeps the mark honest as an indication of a single controlled source.

Q: How does a certification trade mark differ from a collective mark?

Both are marks owned by a body and used by others, but the bodies certify different things. A collective mark, under chapter VIII, belongs to an association of persons and distinguishes the goods or services of its members from those of non members; it says, in effect, that the trader belongs to the group. A certification trade mark, under chapter IX and section 2(1)(e), belongs to a proprietor who certifies that goods or services meet standards he maintains, in respect of origin, material, mode of manufacture or performance, quality, accuracy or other characteristics; it says that the goods or services meet the standard, whoever made or supplied them. The decisive difference is independence: section 70 bars registration of a certification mark in the name of a person who himself trades in the goods or services of the kind certified, because a certifier who competes in the market he certifies cannot be believed, while no such bar applies to a collective mark’s association.

Q: What remedies can a court grant in an infringement suit?

Section 135 of the Act sets out the reliefs. The court may grant an injunction, on such terms as it thinks fit, restraining the infringing use, and that injunction is the remedy plaintiffs most often seek first, usually on an interim application at the start of the suit. The plaintiff may also elect, at his option, either damages or an account of profits, so that he chooses between compensation for his own loss and the stripping of the defendant’s gain. The court may further order that the infringing labels and marks be delivered up for destruction or erasure. These reliefs apply, so far as they can, to passing off suits as well, and section 135 adds that an injunction may include an order restraining the defendant from disposing of assets where the court is satisfied the plaintiff will be obstructed in recovering what is due to him. A plaintiff who cannot yet identify the infringer’s operation in detail may also obtain orders for the preservation and inspection of the infringing material, under the ordinary powers of the court.

Q: What protection does Section 34 give to a person who used a mark first?

Section 34 saves the vested rights of the prior user. It provides that nothing in the Act entitles the proprietor of a registered trade mark to interfere with or restrain the use by any other person of a mark identical with or deceptively similar to it in relation to goods or services for which that other person, or his predecessor in title, has continuously used the mark from a date prior to the earlier of two dates: the date from which the registered proprietor used his mark, and the date of the registered mark’s registration. The defence is complete where its conditions are met. The later registration does not extinguish the earlier trade, and a registered proprietor who sues a trader who was in the market before him will lose on section 34 even though the register is in his favour. The prior user must prove continuous use from the earlier date; a use that began early but was abandoned and resumed does not qualify, and the right belongs to the person and his successors in the same business, not to the world at large.

Q: Can a trade mark be assigned without the goodwill of the business?

Yes. Section 38 provides that a registered trade mark is assignable and transmissible whether with or without the goodwill of the business concerned, and in respect of either all of the goods or services for which it is registered or only some of them, and section 39 extends the same freedom to unregistered marks. The Act hedges the freedom with three safeguards. Section 40 restricts an assignment that would create exclusive rights in more than one person for the same or similar goods or services in a way likely to deceive or cause confusion, and section 41 restricts the separate assignment of associated marks. Section 42 requires that where an assignment is made otherwise than with the goodwill of the business, the assignee must advertise the assignment in the manner the Registrar directs, within the period the section allows, so that the purchasing public is told that the source behind the mark has changed. To be fully effective, the assignee must also apply under section 45 to be entered in the register as proprietor.

Q: What is honest concurrent use, and when does Section 12 allow two similar marks?

Section 12 empowers the Registrar, in the case of honest concurrent use or of other special circumstances which in his opinion make it proper to do so, to permit the registration by more than one proprietor of marks which are identical or similar, for the same or similar goods or services, subject to such conditions and limitations as he thinks fit to impose. The doctrine recognises that two traders may adopt and use similar marks in complete ignorance of one another, build real goodwill in different territories or trades, and reach the Registry with equal innocence. To succeed, the applicant must show honesty in the adoption of the mark, which means it was not copied from the earlier mark; the extent and duration of his concurrent use in the market; the degree of confusion likely to result if both marks are registered; and the relative inconvenience to each side if registration is refused. The Registrar commonly imposes conditions to keep the two trades apart, such as confining each registration to a territory or to a form of the mark with a distinguishing feature.

Q: How is a sound mark filed under the Trade Marks Rules, 2017?

The Trade Marks Rules, 2017 made sound marks practically filable by prescribing the form in which the graphical representation requirement is satisfied for a sign that is heard rather than seen. An application for a sound mark is filed on the ordinary application form, and the sound must be submitted as an MP3 recording of not more than thirty seconds, accompanied by a graphical representation of the sound in the form of musical notation, so that the register records both what the sound is and how it may be reproduced and examined. The application then passes through the same examination as a word or device mark: it is tested against section 9 for distinctiveness, which is where most unconventional marks face their real difficulty, since a sound that merely reproduces a noise the goods themselves make, or a jingle that the trade uses descriptively, will fall at the absolute grounds like any other non distinctive sign. A distinctive short signature tune, used consistently as the badge of one source, stands on the same footing as a coined word.

Q: Does an Indian registration protect a mark outside India?

No. Trade mark rights are territorial, and a registration under the Trade Marks Act, 1999 confers rights only within India; it is enforceable against uses in the course of trade in India and it does not restrain a trader who uses the same mark in another country under that country’s law. Protection abroad must be acquired country by country, either by national filings in each market, or by designating those countries in an international application under the Madrid Protocol, which is a route to national rights in the designated states and not a single world registration. The one qualification concerns reputation: the Act protects a mark that is well known in India even before any registration here, under section 11(2), and Indian courts protect Indian goodwill against deception practised here, but the converse does not follow. An Indian proprietor whose mark is copied in a foreign market must look to that market’s law, and to any registration he holds there, for his remedy.