TRADEMARK REGISTRATION PROCESS AND ITS

EFFECTS

Registration Process-

Section 18-26 of Trademarks Act, 1999 deal with the registration of trade marks.

Application of Registration-

An application for Registration of Trade mark shall be filed to the Registrar in writing in the
prescribed manner.

Who may apply- any person who is proprietor of a trademark used or proposed to be used by
him

Place of filing of application- Every such application shall be filed in the office of
trademarks registry within whose territorial limits the principal place of business in India of
the applicant or in the case of joint applicants the principal place of business in India of the
applicant whose name is first mentioned in the application having a place of business in
India.

The registrar may refuse the application or may accept it absolutely or subject to such
amendments, modifications, conditions or limitations as he thinks fit. The Registrar shall
record in writing the grounds for such refusal or conditional acceptance and the material used
in reaching to such decision.

Withdrawal of Acceptance-

S.19 empowers the Registrar to withdraw the acceptance after the acceptance of application
but before its registration. Registrar can withdraw if he is satisfied that-

(a) The application has been accepted in error; or

(b) In the circumstances of the case the trademark should not be registered or should be
registered subject to conditions or limitations or to conditions additional to or different from
the conditions or limitations subject to which the application has been accepted.
Advertisement of application-

The Registrar shall advertise the application as soon as it is accepted for registration. If the
application is accepted with respect to some conditions or limitations then those conditions or
limitations shall also be advertised therewith.

The Registrar may cause the application to be advertised before acceptance if it relates to a
trade mark which is devoid of any distinctive character or if the identity of the trademark is
identical to an earlier trademark.

Opposition to Registration-

Any person can give notice to the Registrar in prescribe form within two months of
advertisement or re-advertisement of application. The Registrar shall send a copy to the
applicant and the applicant shall file his counterstatement within two months of receipt of
such copy. If the applicant does not reply within two months then the application is
considered as abandoned. Where the applicant sends the counterstatement then a copy of
counterstatement shall be served on the person giving notice of opposition. Then the
Registrar hears the parties and decides whether registration should be allowed or not?

Registration-

Section 23 deals with registration of trademarks and this section is mandatory on the registrar
where the procedure for Registration has been completed.

The central Government may prohibit registration in certain cases in which case registration
must be refused though otherwise the Registrar may accept registration. For example, the
central government has prohibited marks containing the device of an arrow, Ashok Chakra ,
Names of some saints etc. No appeal lies from an order of central government or from
decisions of Registrar giving effect to such order.

Under section 23(1), the date of application will be deemed to be the date of registration if a
mark is ultimately registered. Because of registration being deemed to be completed on the
date of application, if eventually the application for registration of trademark is allowed, it
has been held that a suit for infringement of trademark lies during the pendency of the
application for registration.1

1
P. L. Anwar Basha v. M. Natrajan AIR 1958 Mad 56
Where an application dies after the date of his application but before the mark is entered in
the register of the registrar may, on proof of the applicant’s death and on proof of
transmission of interest, substitute in the application his successor –in-title and the
application may proceed thereafter as so amended.

Duration, renewal, removal and restoration of registration-

A trademark is registered for a period of 10 years but may be renewed from time to time in
accordance with the provisions of this section.

Who may apply-

Only those persons who are either the proprietors, or registered owners or users of the
trademark are eligible to apply for renewal.

Notice before removal of trademark from register-

At a date not less than one month and not more than two months before the expiration of the
last registration of a trademark of a trademark, if no application on Form TM-12 for renewal
of the registration together with the prescribed fee has been received, the Registrar shall
notify the registered proprietor or in case of a jointly registered trademark each of the jointly
registered proprietors.

Advertisement of Removal of Trademark from the Register-

If at the expiration of the last registration of a trademark the renewal fee has not been paid the
registrar may remove the trademark from the register and advertise the fact forthwith in the
Journal.

Restoration or Renewal of Registration-

An application for the restoration of a trademark to the register and renewal of of its
registration under S. 25(4), shall be made on Form T.M.-13, within one year from expiration
of the last registrations of the trademark accompanied by the prescribed fee. Section 25(2)
empowers the registrar to renew the registration on an application from the registered
proprietor. When the application for renewal is not from the registered proprietor then the
registrar cannot exercise his power for renewal.
Section 9 of the Trademarks act 1999 provides some absolute grounds for non-
registration of a trademark.
1) The trademarks —
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing
the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate
the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods or
service;

(c) which consist exclusively of marks or indications which have become customary in the
current language or in the bona fide and established practices of the trade,

shall not be registered :

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

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India;

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

(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950 (12 of 1950).

(3) A mark shall not be registered as a trade mark if it consists exclusively of—
(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.

Explanation.—
For the purposes of this section, the nature of goods or services in relation to which the trade
mark is used or proposed to be used shall not be a ground for refusal of registration.
This section stipulates that the trade marks which are devoid of any distinctive character or
which consist exclusively of marks or indications which may serve in trade to designate the
kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of goods or rendering of the services or other characteristics of the goods or
service or which consist exclusively of marks or indications which have become customary in
the current language or in the bona fide and established practice of the trade shall not be
registered, unless it is shown that the mark has in fact acquired a distinctive character as a
result of use before the date of application.

It also provides that a mark shall not be registered as trademarks if

(i) it deceives the public or causes confusion,

(ii) it contains or comprises of any matter likely to hurt the religious susceptibilities,

(iii) it contains scandalous or obscene matter,

(iv) its use is prohibited.

It further provides that if a mark consists exclusively of

(a) the shape of goods which form the nature of goods themselves, or

(b) the shape of goods which is necessary to obtain a technical result, or

(c) the shape which gives substantial value of the goods then it shall not be
registered as trade mark.

Test of similarity-
In order to come to the conclusion whether one mark is deceptively similar to another the
broad and essential features of the two are to be considered. They should not be placed side
by side to find out if there are any differences in the design and if so whether they are of such
a character as to prevent one design from being mistaken for the other. It would be enough if
the impugned mark bears such an overall similarity to the registered mark as would be likely
to misled a person usually dealing with one to accept the other if offered to him.2

2
Mumtaz Ahmed v. Pakeeza Chemicals AIR 2003 All 114.
Apart from the structural, visual and phonetic similarity or dissimilarity, the question has to
be considered from the point of view of man of average intelligence and imperfect collection.
Secondly, it is to be considered as a whole and thirdly it is the question of his impression.3

It is common knowledge that ’bidis’ are being used by persons belonging to poorer and
illiterate or semi-literate class. Their level of awareness is not high. It cannot be expected of
them that they would comprehend and understand the fine differences between the two labels,
which may be detected on comparing the two labels when placed side by side. The essential
features of the two labels are common. In view of above, there appears to be deceptive
similarity between the two labels.4

Section 11 provides the relative grounds of refusal to registration. Section 11 reads as-

(1) Save as provided in section 12, a trade mark shall not be registered if, because of—
(a) its identity with an earlier trade mark and similarity of goods or services covered by the
trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services
covered by the trade mark,

there exists a likelihood of confusion on the part of the public, which includes the likelihood
of association with the earlier trade mark.

(2) A trade mark which—

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier
trade mark is registered in the name of a different proprietor,

shall not be registered, if or to the extent, 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.

(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented—

3
BDH Industries Ltd. v. Croydon Chemical Works Pvt. Ltd. AIR 2002 Bom 361
4
Mohd. Iqbal v. Mohd. Wasim, AIR 2002 MP 162.
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade
mark used in the course of trade; or

(b) by virtue of law of copyright.

(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor
of the earlier trade mark or other earlier right consents to the registration, and in such case the
Registrar may register the mark under special circumstances under section 12.
Explanation.—For the purposes of this section, earlier trade mark means—

(a) a registered trade mark or convention application referred to in section 154 which has a
date of application earlier than that of the trade mark in question, taking account, where
appropriate, of the priorities claimed in respect of the trade marks;

(b) a trade mark which, on the date of the application for registration of the trade mark in
question, or where appropriate, of the priority claimed in respect of the application, was
entitled to protection as a well-known trade mark.

(5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2)
and (3), unless objection on any one or more of those grounds is raised in opposition
proceedings by the proprietor of the earlier trade mark.
(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark,
take into account any fact which he considers relevant for determining a trade mark as a well-
known trade mark including—
(i) the knowledge or recognition of that trade mark in the relevant section of the public
including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or exhibition of the goods or services to
which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for
registration of that trade mark under this Act to the extent they reflect the use or recognition
of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark; in particular, the
extent to which the trade mark has been recognised as a well-known trade mark by any court
or Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or recognised
in a relevant section of the public for the purposes of sub-section (6), take into account—
(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services,

to which that trade mark applies.

(8) Where a trade mark has been determined to be well-known in at least one relevant section
of the public in India by any court or Registrar, the Registrar shall consider that trade mark as
a well-known trade mark for registration under this Act.
(9) The Registrar shall not require as a condition, for determining whether a trade mark is a
well-known trade mark, any of the following, namely:—
(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark—

(a) is well known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other
than India; or

(v) that the trade mark is well-known to the public at large in India.

(10) While considering an application for registration of a trade mark and opposition filed in
respect thereof, the Registrar shall—
(i) protect a well-known trade mark against the identical or similar trade marks;
(ii) take into consideration the bad faith involved either of the applicant or the opponent
affecting the right relating to the trade mark.

(11) Where a trade mark has been registered in good faith disclosing the material
informations to the Registrar or where right to a trade mark has been acquired through use in
good faith before the commencement of this Act, then, nothing in this Act shall prejudice the
validity of the registration of that trade mark or right to use that trade mark on the ground that
such trade mark is identical with or similar to a well-known trade mark.

This section provides relative grounds for the refusal of registration of a trade mark. A trade
mark cannot be registered if because of (i) its identity with an earlier trade mark and
similarity of goods or services, (ii) its similarity to an earlier trade mark and the identity or
similarity of the goods and services, there is likelihood of confusion. It also provides that a
trade mark cannot be registered which is identical with or similar to an earlier trade mark and
which is to be registered for goods and services which are not similar to those for which
earlier trade mark is registered in the name of a different proprietor if, or to the extent, the
earlier trade mark is a well-known trade mark in India. It further provides that a trade mark
cannot be registered if, or to the extent that, its use in India is liable to be prevented by virtue
of any law.

Registration is not matter of right

Even if the appellant’s proposed trade mark satisfies the conditions under the Act, the
appellant is not entitled as a matter of right to the registration of trade mark. It is open to the
Registrar to decline to register the appellant’s trade mark.5

5
Geep Flashlight Industries Ltd. v. Registrar of Trade Mark, AIR 1972 Del 179.