IPR-II Module 3

LL.
B- I[2017 Pattern] LO 0609 Intellectual Property Rights-II
Module 03: The Trade Marks Act, 1999

1970
1. Object and Functions of Trademark, Commercial and Non-Commercial

Role of Trade Marks
2. Development of Trademark law in India
3. Definition of Mark, Trademark, under the Trade Mark Act, 1999,

Essential Features and functions of Trademark, Kinds of Trademark,
Registered Trade Mark and Unregistered Trade Mark
4. Conditions for Registration, Procedure of Registration, Grounds of

Refusal for Registration
5. Protection of Trade Mark through International Registration under

Madrid Protocol
6. Duration, Renewal, Removal and Restoration of Trademark
7. Rights and liabilities of Trademark Holder, Limitations on rights,

Honest and concurrent use
8. Effect of Registration of Trade Mark, Infringement and Passing off

Remedies, Deceptive Similarity
9. Change of Ownership, Assignment and Transmission, Licenses
10. Contemporary Developments - Effects of Information Technology,

Protection of Trade Names and Domain Names
Dr. Pandhare B. D.[LL.M.Ph.D.] Asst. Prof. New Law College, Ahmednagar Page 1
LL.B- I[2017 Pattern] LO 0609 Intellectual Property Rights-II
1. Object and Functions of Trademark, Commercial and Non-Commercial

Role of Trade Marks
A Trademark is a type of intellectual property. It can be a word, device, name, symbol or

any combination which is acquired by any institution or company to show the difference between
their product and the products of other companies. It can also be known as the brand name.
Trademark can be owned by any business organization, individual or any legal entity. Rules and
regulations of trademarks are governed by The Trade Marks Act of 1999, The Trade Marks
Rules of 2002, and The Trade Marks Amendment Act of 2010.
The object of trade mark law is to deal with precise nature of the rights which a person
can acquire in respect of trade mark, the mode of acquisition of such rights, the method of
transfer of those rights to others, the precise nature of infringement of such rights, the procedure
for enforcement of those rights and the remedies available in respect thereof. This branch of
Commercial Law has undergone change from time to time in tune with changing pattern of
business methods and practices. Even the very concepts of a trade mark and its functions have
changed. Already in UK a new trade mark law had been enacted in 1994. In India, the law now is
governed by the Trade Marks Act 1999.
Functions of a Trademark
A trademark serves the purpose of identifying the source or the origin of goods. Trademark
performs the following four functions.
 It identifies the product and its origin.

 It proposes to guarantee its quality.
 It advertises the product. The trademark represents the product.
 It creates an image of the product in the minds of the public particularly the consumers or
the prospective consumers of such goods.
Commercial and Non-Commercial Role of Trade Marks
A Trademark protects your brand and provides you with the tools to prevent someone from
riding on the back of your business. Trademark is capable of distinguishing the goods or services
of one person from those of others and includes the shape of goods, their packaging, and a
combination of colors. Let us know more reasons of Importance of Trademark Registration in
India.
Valuable Assets
A registered trademark may prove to be a valuable assets for your company / Business. These
assets keeps on appreciating over time. As your business grows over time, the value of the
trademarks gets scaled up automatically. So, if your business grows, your trademark also grows
in value.
Protection to your Brand
A registered trademark establishes ownership over the brand, name or logo. It protects your
brand from any unauthorized use of the third party. The registered trademark proves that the
product totally belongs to you and you have exclusive rights to use, sell, and modify the brand or
goods in whichever manner you want.
Provides Uniqueness to Brand
A brand that is unique and different must be registered as every business needs a brand or logo
that stands out, which differentiates your brand from that of others. Hence, a registered
trademark gives a unique identity to your brand.
Easy Communication tool
Yes, Trademarks may prove to be an effective and easy communication tool. They speak for
themselves. A registered trademark can be easily identified which brand your product belongs to.
For example, when you see a silver color half bitten apple on any device, be it a laptop or a
phone, you can easily identify that it is an Apple product.
Easy for customers to find
A registered trademark makes it easy for customers to find the product. As it is an effective tool
and unique in its identity, the trademarks that are registered can be easily traceable and
customers may reach your product easily.
Trademark is forever
Trademark once registered can last for eternity. The Trademark registered by any firm remains
with them forever. Yes, the trademark registration shall be renewed after every 10 years.
However, the identity that it gave to the brand remains forever.
Conclusion
Trademark Registration provides an exclusive right to the owner and distinguishes the product
from other similar products from other businesses. Trademark proves as intangible assets for the
owner and protects the brand for a long time. Trademark provides an exclusive right to the owner
to use such words, logos, and slogans. In a market like India it is crucial that a brand is protected
and safe. Hence, not out of compulsion but out of necessity it is important to have a trademark
registration in India.
2. Development of Trademark law in India
While some form of proprietary protection for marks in India dates back several
millennia, India‟s statutory Trademarks Law dates back to 1860. Prior to 1940 there was no
official trademark Law in India. Numerous problems arouse on infringement, law of passing
off etc and these were solved by application of section 54 of the specific relief act 1877 and
the registration was obviously adjucated by obtaining a declaration as to the ownership of a
trademark under Indian Registration Act 1908.
To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1940,
this corresponded with the English Trademarks Act. After this there was an increasing need
for more protection of Trademarks as there was a major growth in Trade and Commerce. The
replacement to this act was the Trademark and Merchandise Act 1958.This Act was to provide
for registration and better protection of Trademarks and for prevention of the use of
fraudulent marks on merchandise. This Law also enables the registration of trademarks s o that
the proprietor of the trademark gets legal right to the exclusive use of the trademark. [38] The
objective of this act was easy registration and better protection of trademarks and to prevent
fraud.
The reappellation of the Trademarks and Merchandise Act gave rise to the Trademark
Act 1999; this was done by the Government of India so that the Indian Trademark Law is in
compliance with the TRIPS obligation on the recommendation of the World Trade
Organisation. The object of the 1999 Act is to confer the protection to the user of the
trademark on his goods and prescribe conditions on acquisition, and legal remedies for
enforcement of trademark rights.
It will for the first time protect service marks and give provision of registration for
collective marks, it will also differentiate between well known trademarks and trademarks in
general, and also special treatment and rights are envisaged for well known trademarks. The
act of 1999 also gives police the right to arrest in case of infringement. There are some points
of changes that are present between the 1958 act and 1999 act, it can be said that the 1999 act
is a modification of the 1958 act, it has provided exhaustive definitions of terms frequently
used, enhanced punishment for offenders, increased the period of registration, registration of
non- traditional trademarks. The rules of this act are called as Trademark Rules 2002. Both
the Act and its set of rules came to effect on September 15th 2003. The trademark act 1999
and its trademark rules 2002 presently govern Indian Trademark Laws in India. Laws of
trademarks are based on distinctiveness and deceptive similarity. If distinct signs are freely
used the brand equity created by one person will be freely used by another. The value of
distinctive sign depends on sales volume and public association of sign with quality
3. Definition of Mark, Trademark, under the Trade Mark Act, 1999,

Essential Features and functions of Trademark, Kinds of Trademark,
Registered Trade Mark and Unregistered Trade Mark
2. DEFINITIONS [Sec.2]
MARK [Sec. 2 (m)]
"mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colors or any combination thereof.
TRADE MARK [Sec. 2 (zb)]
"trade mark" means a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from choose of others and may include shape
of goods, their packaging and combination of colors , and in relation to Chapter XII (other than
section 107), a registered trade mark or mark used in relation to goods or services for the purpose
of indicating or so as to indicate a connection in the course of trade between the goods or
services, as the case may be, and some person having the right as proprietor to use the mark, and
in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods
or services for the purpose of indicating or so to indicate to a connection in the course of trade
between the goods or services, as the case may be, and some person having the right, either as
proprietor or by way of permitted user, to use the mark whether with or without any indication of
the identity of that person, and includes a certification trade mark or collective mark.
ASSOCIATED TRADE MARKS [Sec. 2 (c)]
(c) "associated trade Marks" means trade-marks deemed to be, or required to be, registered as
associated trade-marks under this Act;
CERTIFICATION TRADE MARK [Sec. 2 (e)]
(e) "certification trade mark" means a mark capable of distinguishing the goods or service in
connection with which it is used in the course of trade which are certified by the proprietor of the
mark in respect of origin, material, mode of manufacture of goods or performance of service not
so certified and registrable as such under Chapter IX in respect of those goods or service in the
name, as proprietor of the certification trade mark , of that person;
COLLECTIVE MARK [Sec. 2 (g)]
(g) "collective mark" means a trade mark distinguishing the goods or services of members of an
association of persons (not being a partnership within the meaning of the Indian Partnership Act,
1932 (9 of 1932) which is the proprietor of the mark from those of others.
DECEPTIVELY SIMILAR [Sec. 2 (h)]
(h) "deceptively similar", - A mark shall be deemed to be deceptively similar to another mark if
it so nearly resembles that other mark as to be likely to deceive or cause confusion.
WELL-KNOWN TRADE MARK [Sec. 2 (zg)]
"well-known trade mark" in relation to any goods or service, means a mark which has becomes
so to the substantial segment of the public which uses such goods or receives such services that
the use of such mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first mentioned goods or services.
4. Conditions for Registration, Procedure of Registration, Grounds of

Refusal for Registration
1. PROCEDURE AND DURATION OF REGISTRATION
Online Trademark Registration
So, the trademark is a brand or logo which helps people to differentiate between your
products than that of others. A registered trademark is an intangible property of a business that is
used to protect the company‟s investment in the brand or symbol. This unique identity can be a
slogan, photograph or logo, it can be anything.
In India, trademarks can be registered online by the Controller General of Patents,

Designs, and Trademarks. The trademarks are registered under the regulations of the Trademark
Act, 1999. The registration also gives the right to sue anyone who tries to copy your trademark.
The validity of the trademark is 10 years from the date of registration and can be re-registered
after expiration. With all the technical advancements, trademark registrations can be easily done
online with the help of a registered trademark attorney.
E-Filing of a Trademark Application
E-Filing of a trademark application is a simple process. The applicant has to login first
on the website portal. New users have to register while old users can log in through their
username and password or their digital signature. On successful login, the username and its user
code will be displayed. Both international, as well as domestic trademarks can be filed through
this website portal.
 Trademark Registration From

 Online New User Registration
 https://ipindiaonline.gov.in/trademarkefiling/user/frmNewRegistration.aspx
 Application for Registration of Trademark
 http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/FORM-TM-A.pdf
Documents required for Trademark Registration
Through the process of trademark registration, various documents are needed. They are:
 Applicant details: Name, address, and nationality

 Business type and its objectives
 A copy of the brand/logo/slogan name
 Identity and business proofs
 Signed Form 48 by the applicant
 Class of trademark must be filed under the application
 In the case of a company or LLP, the incorporation certificate is needed
How to Register Trademarks
The registration process of a trademark in India is by „first come first serve‟ basis.
Therefore, it is important for every person to apply for registration as soon as possible.
Generally, a trademark usually takes around 2-3 years to get registered unless it is not opposed
by any third party.
Steps to register a trademark in India are
Trademark Search
The first step in the process of registration is the trademark search. The search is
necessary to check for similar trademarks on the intellectual property website. In case any
similar trademark is found, go through its description to check about the product or service it
represents.
Select a Trademark Agent in India
In India, only the proprietors are allowed to file a trademark application. If any
proprietor is not present, the right holder must file the application through an agent or attorney.
Usually, the agent takes care of all the responsibilities like searching, filing, preparing, and
prosecution of the trademark.
Determination of the Eligibility and Availability of the Trademark
Initially, the agent starts the process by checking the eligibility for registration of the
trademark and a complete search to check for any similar trademark present in the office of the
Controller general.
Completing the Application Form and Filing
The right holder can give his power of attorney to the agent to complete the process and
file an application on his behalf. The form requires every bit of detail such as name, address of
the proprietor, a brief description of services and goods linked with the trademark, whether any
similar mark is present and a copy of the trademark.
Review by the Trademark Office
After the completion of the form, the trademark office reviews the application to check
for errors and then gives the application number. If the trademark is approved, the application
number becomes the registration number.
Preliminary Approval and Publication, show cause hearing or rejection of the Application
The application further goes to the association for examining the application is barred
from registration on any grounds described under the Trademarks Act, 1999. Later, an
examination report is prepared by the association through which the registrar of the trademark
association decides the future of the application, whether accepted, rejected, or put up for „show
cause‟. In the case of show cause, the application can be accepted, rejected and accepted with
some restrictions.
Registration
The registration certificate can be issued within three months if not opposed by any
third party.
Conditions for Registering a Trademark in India
 There are certain conditions or requirements to be fulfilled before filing a trademark

application in India. They are:
 The name, nationality, and address of the applicant are necessary. If there is any sort of
partnership, details of every partner must be submitted with mentioning any minor, if
present.
 Details of the goods and services linked with the registration must be submitted.
 A soft copy of the trademark came for registration.
 Translation of all the non-English words is required.
 Date of the initial use of the trademark.
 If the application submitted is to claim authority for an earlier-filed application, details of
that application are also required.
Who can apply for a Trademark
 Any person who shows the authority on the trademark can apply for the registration of its
mark for goods as well as services.
 Any person whose business lies under the jurisdiction of India can apply for registration
of a trademark.
 In case, the principal place of business is outside India, the lawyer associated with the
proprietor present in India can file an application in the trademark office.
 In the case of a company, anyone can apply the application but it should be in the
company‟s benefit.
Checklist for Trademark Registration
 The selected trademark must be able to represent in the paper form or graphically.
 The trademark must be different in every way, which means it must be able to
differentiate its goods and services from others.
 It should be used to create a connection between the people and the goods or services the
person is offering. It means trademarks are used to promote the business.
Absolute grounds for refusal of registration
Absolute grounds for the refusal of registration is defined in Section 9 of the Act. The
trademarks which can be lacking any distinctive characteristics or which consists exclusively of
marks or signals, which can be used in trade to indicate the kind, fine, quantity, supposed
grounds, values, geographical origin.
And also a time of production of goods or rendering of the offerings or different

characteristics of the goods or offerings which consists solely of marks or indications which have
come to be average in the present language. That marks are not entitled to registration. Except it
is confirmed that the mark has in fact acquired a new character as a result of use before the date
of application. It gives that a mark shall not be registered as trademarks if:
 It frauds the public or causes confusion.

 There is any matter to hurt religious susceptibility.
 There is an obscene or scandalous matter.
 Its use is prohibited.
 It provides that if a mark contains exclusively of
a) the shape of goods which form the nature of goods or,
b) the shape of good which is needed to obtain a technical result or,
c) the shape of goods which gives substantial value of goods then it shall not be
registered as trademark.
Test of similarity
For the conclusion, if one mark is deceptively similar to another the 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 they are of such a character to prevent one design from being
mistaken for the other. It would be enough if the disputed mark has such an overall similarity to
the registered mark as it likely to deceive a person usually dealing with one to accept the other if
offered to him. Apart from the structural, visual, and phonetic similarity or dissimilarity, the
query needs to be viewed from the factor of view of man typical intelligence and imperfect
collection secondly. It‟s regarded as an entire thirdly it is the query of his impressions. In Mohd.
Iqbal v. Mohd. Wasim it was held that “it is common knowledge that „bidis‟ are being used by
persons belonging to the poorer and illiterate or semi-literate class. Their level of knowledge 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 are
common. In view of the above, there appears to be a deceptive similarity between the two
labels”.
Relative grounds for refusal of registration
Under Section 11 of the Act, it gives relative grounds for the refusal of registration of a
trademark. A trademark cannot be registered if because of (i) its identity with an earlier
trademark and similarity of goods or services, (ii) its similarity to an earlier trade mark and the
similarity of the goods and there is a probability of confusion. It also gives that a trademark
cannot be registered which is identical or similar to an earlier trademark. And also which is to be
registered for goods and services which are not similar to those for which earlier trademark is
registered in the name of a different proprietor if, or to the extent, the earlier trademark is well
known in India. It further gives that a trademark is cannot be registered if, or to the extent that,
its use in India is liable to be prevented by virtue of any law.
Duration of registration
The registrar on the application made by the proprietor of the trademark in the
prescribed manner within the given period of time with the adequate payment of fees.
Registration of a trademark shall be of ten years and renewal of the registered trademark is also
for a period of ten years from the date of expiration of the original registration or of the last
renewal of registration. The registrar shall send the notice before the expiration of last
registration in the prescribed manner to the registered proprietor. The notice mentions the date of
expiration and payment of fees and upon which a renewal of registration may be obtained if at
the expiration of the time given in that behalf those conditions have not duly complied with the
registrar may remove the trademark from the register.
But the registrar shall not remove the trademark from the register if implication made
within the prescribed form and the prescribed rate is paid within six months from the expiration
of the final registration of the trademark and shall renew the registration of the trademark for an
interval of ten years. If the trademark is removed from the register for non-payment of the
prescribed fee, the registrar shall after six months and within one year from the expiration of the
last registration of the trademark renew the registration,
And also on receipt of implication in the prescribed form and on payment of the
prescribed fee the registrar restores the trademark to the register and renew the registration of the
trademark, for a period of ten years from the expiration of the last registration.
Opposition to registration
Any person may with 3 months from the date of advertisement, give notice in writing to the
Registrar of opposition to registration of the Mark as registered Trademark. The registrar shall
within send the notice of opposition to the applicant asking him to send his counter statement and
pieces of evidence he relied in support of his claim. On receipt of a counter statement from the
applicant, the Registrar shall forward the same to the person who opposed the application to file
his statement and grounds of opposition.
After considering the presentation of both the parties the registrar may either register the mark or
refuse to register the mark or it provide for any amendments or correction to be made in the
mark. Once the Registrar is satisfied that the application is complete in all respect, The
application has not been opposed by anyone within the time period mentioned in the act for filing
notice of opposition or
The application has been opposed but opposition has been decided in favour of the applicants.
The Registrar shall register the TM and issue a certificate in the prescribed form of the
registration thereof, sealed with the seal of the TM registry.
If the process of registration is not completed within 12 months from the date of application by
default of the applicant; the registrar may after giving the notice to the applicant treat the
applicant as abandoned unless the same has been rectified by the applicant within the time
prescribed by the registrar.
Effect of Registration
The registration of a trademark shall if valid give the exclusive right to the registered
proprietor to the use of trademarks in respect of goods and services of which the trademark is
registered, and also to obtain relief in respect of the infringement of the trademark.
5. Protection of Trade Mark through International Registration under Madrid

Protocol
International Trademark Registration
India‟s mobile phone manufacturer, Micromax recently received the 1.25 millionth
international trademark registration for its trademark – „MICROMAX‟, giving it protection in
over 110 countries. The international trademark registration for Micromax was filed under the
Madrid Protocol, under which a mark can be protected in many jurisdictions by filing an
application for international registration. In this article, we look at the Madrid Protocol in depth
and also the process for international trademark registration.
Madrid Protocol
The Madrid Protocol which came into operation in 1996 and the Madrid Agreement
which dates from 1891 govern the system of international trademark registration. Under the
Madrid Protocol, a mark can be registered in multiple countries by filing an application
for international trademark registration through the trademark office of the applicant (“office
of origin”).
International Trademark Registration Process
International trademark registration application under the Madrid Protocol must be filed
by the trademark applicant through the trademark office of the applicant, know as the office of
origin. In case of Indian Businesses, the Office of Registrar of Trademark, India is the office of
origin. The office of origin will process the trademark application and file it with the Intellectual
Property Organization at Geneva.
If the trademark application is found fit, then the mark is recorded in the International
Register and published in the World Intellectual Property Organization (WIPO) Gazette of
International Marks. The International Bureau then provides a certificate of international
registration and notifies each of the country contracting to the Madrid Protocol for which
protection has been requested by the trademark applicant. Each of the countries trademark office
has the right to refuse protection of the mark by notifying to the International Bureau within the
time limits specified in the Madrid Protocol. The Madrid Protocol has set strict time limits of 12
or 18 months for objections to be raised by the designated offices.
Any objection to registration of the trademark must be made to the International Bureau in the
prescribed format. If there are no refusals by any of the country, then the protection of the mark
in each of the country is the same as if it had been registered by the Office of that country.
Once an international trademark is registered under the Madrid Protocol, the mark is
registered for 10 years. International trademark registrations can be renewed at the end of the 10
year period directly through WIPO or through the concerned office of origin.
Requirements for Obtaining International Trademark Registration
There are three main requirements for obtaining an international trademark registration in India:
 The applicant should be a national of India or domiciled in India or have real and
effective business or commercial establishment in India.
 The applicant must have a national (Indian) trademark application or registration of a
trademark with the Indian Trade Marks Registry. This national trademark
application/registration will be used as the basis of the international application. The
international application will have the same trademark as mentioned in the national
trademark application or registration; The list of goods and services mentioned in the
international application should also be identical with the national mark.
 The applicant in the international application must choose one or more other member
countries of the Madrid Protocol, where the applicant wants to protect his trademark.
Countries That Protect International Trademark Registrations
The following countries are parties to the Madrid Protocol. Hence, an International Trademark
can be afforded protection in the 94 countries
1.
6. Duration, Renewal, Removal and Restoration of Trademark
25. Duration, renewal, removal and restoration and registration .-
(1) The registration of trade mark, after the commencement of this Act, shall be for a period of
ten years, but may be renewed from time to time in accordance with the provisions of this
section.
(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the
prescribed manner and within the prescribed period and subject to payment of the prescribed fee,
renew the registration of the trade mark for a period of ten years from the date of expiration of
the original registration or of the last renewal of registration, as the case may be (which date is in
this section referred to as the expiration of the last registration).
(3) At the prescribed time before the explanation of the last registration of a trade mark the
Registrar shall send notice in the prescribed manner to the registered proprietor of the date of
expiration and the conditions as to payment of fees and otherwise upon which a renewal of
registration may be obtained, and, if at the expiration of the time prescribed in that behalf those
conditions have not been dully complied with the Registrar may remove the trade mark from the
register.
Provided that the Registrar shall not remove the trade mark from the register if an application is
made in the prescribed form and the prescribed fee and surcharge is paid within six months from
the expiration f the last registration of the trade mark and shall renew the registration of the trade
mark for a period of ten years under sub-section (2).
(4) Where a trade mark has been removed from the register for non-payment of the prescribed
fee, the Registrar shall, after six months and within one year from the expiration of the last
registration of the trade mark, on receipt of an application in the prescribed form and on payment
of the prescribed fee, it satisfied that it is just so to do, restore the trade mark to the register and
renew the registration of the trade mark either generally or subject to such conditions or
limitations as he thinks fit to impose, for a period of ten years from the expiration of the last
registration.
Duration of registration
The registrar on the application made by the proprietor of the trademark in the
prescribed manner within the given period of time with the adequate payment of fees.
Registration of a trademark shall be of ten years and renewal of the registered trademark is also
for a period of ten years from the date of expiration of the original registration or of the last
renewal of registration. The registrar shall send the notice before the expiration of last
registration in the prescribed manner to the registered proprietor. The notice mentions the date of
expiration and payment of fees and upon which a renewal of registration may be obtained if at
the expiration of the time given in that behalf those conditions have not duly complied with the
registrar may remove the trademark from the register.
But the registrar shall not remove the trademark from the register if implication made
within the prescribed form and the prescribed rate is paid within six months from the expiration
of the final registration of the trademark and shall renew the registration of the trademark for an
interval of ten years. If the trademark is removed from the register for non-payment of the
prescribed fee, the registrar shall after six months and within one year from the expiration of the
last registration of the trademark renew the registration,
And also on receipt of implication in the prescribed form and on payment of the
prescribed fee the registrar restores the trademark to the register and renew the registration of the
trademark, for a period of ten years from the expiration of the last registration.
RENEWAL AND RESTORATION
Where a TM has been removed due to non-payment of fees, the Registrar shall after 6 months
but before 1 year from the expiration of last registration of the trade mark, on receipt of complete
application along with the prescribed fees renew the registration with generally or subject to such
conditions as it think fit for a period of 10 years from the expiration of the last registration.
REMOVAL
A trademark is liable to be removed from the register in case registration is obtained by fraud.
Suppression of material facts or false statement are considered as two ingredients which the
registrar or appellate Board must look into before initiate a proceeding for removal of mark from
the register. Including certain goods or services which does not belongs to same class or
description for which the mark was registered.
Not confirming one of more grounds specified in section 9(Absolute ground for refusal of
registration) and Section 11(relative ground for refusal of registration) of the Act.
7. Rights and liabilities of Trademark Holder, Limitations on rights,

Honest and concurrent use
The registration of a trademark is a costly and time-consuming process. However, once

the registration is obtained, the proprietor of a registered trademark is vested with certain
valuable rights. These rights exist for ten years which can be renewed further. On the other hand,
a proprietor of an unregistered trademark is also vested with rights under the common law. One
such right conferred on both, registered as well as unregistered trademark proprietor, is to
prevent the third party from using an identical or deceptively similar trademark under certain
circumstances. Exclusive rights of trademark owner
It is pertinent to note that an unregistered trademark can be protected with the help of
common law after an extensive use made of it however, the registered trademark can be
protected from the date of registration only and before they are used. This brings into sharp focus
that a right of registered trademark holder to prevent an unauthorized use of his trademark is
more convenient than that of an unregistered trademark holder.
1. Rights of Unregistered Trademark Holder/Owner
The proprietor of an unregistered trademark can prevent any third party from using an
identical or deceptively similar trademark, provided such an unauthorized use by the rival results
into passing-off. For this purpose, he can initiate the proceedings under common law. Therefore,
such a right is known as a common law right. Apart from an injunction, the claimant may at his
option, obtain either damages or an account of profits. The claimant must establish three
important factors in order to bring an action against the pass-off, namely-
1. He has acquired goodwill in his trademark;
2. The act of the defendant amounts to misrepresentation;
3. The claimant has suffered or is likely to suffer damage due to the act of the defendant.
2. Rights Of Registered Trademark Holder/Owner

Following are the rights which are at disposal of the owner or holder of a registered
trademark
(i) Right to Exclusive Use
Section 28(1) of the Act provides that subject to the other provisions of this Act,
registration of a trademark, if valid, give to the registered proprietor of the trademark the
exclusive right to use the trademark in relation to the goods or services in respect of which the
trademark is registered. In Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel the
Supreme Court observed “Section 28…. confers an exclusive right of using trademark to a
person who has the trademark registered in his name. Such right is, thus, absolute. However,
from the opening of Section 28(1) of the Act namely, “subject to the provisions” the right
conferred on the registered proprietor is not an indefeasible right. This is further, made clear by
Section 27(2) of the Act, which says “nothing in this Act shall be deemed to affect the right of
action any person for passing off the goods as goods of another person, or the remedies in respect
thereof. Thus, the right created by Section 28(1) of the Act in favour of a registered proprietor of
a trademark is not an absolute right and is subservient to other provisions of the Act Namely
Sections 27(3), 33 (saving for vested rights) etc. It is also pertinent to note that the registered
proprietor of a trademark gets exclusive rights to use the trademark in relation to goods or
services in respect of which it is registered and that person may not have the right to use the
trademark in respect of the other goods or services in respect of which the trademark is
registered”.
(ii) Right to Seek Statutory Remedy Against an Infringement
Section 28(1) also provides that the registered proprietor of a trademark can seek legal
remedy in case of an infringement of his trademark in the manner provided by this Act. He may
obtain an injunction and at his option, either damages or an account of profits by instituting a suit
against the alleged infringer. The proprietor of an unregistered trademark cannot initiate the
infringement proceeding in the event of a deliberate counterfeiting. The Delhi High Court has
observed that registration of a trademark confers on the person some very valuable rights. To
mention only one such right, one may turn to Sub-section (1) of Section 27 which provides that
no person shall be entitled to institute any proceedings to prevent or to recover damages for, the
infringement of an unregistered trademark.
(iii) Right of Registered Trademark holder of Identical Trademark
Section 28(3) provides that where two or more persons are registered proprietor of
trademarks, which are identical with or nearly resembling with each other, the exclusive right to
use of any of those trademarks shall not (except so far as their respective rights are subject to
conditions or limitations entered on the register) be deemed to have been acquired by any of
those persons as against any other of those persons merely by registration of trademarks.
However, each of those persons has otherwise the same rights against other persons excluding
registered users using by way of permitted use, as he would have if he were the sole registered
proprietor.
(iv) Right to Assign
Section 37 of the Act provides that the registered proprietor of a trademark shall have the
power to assign the trademark and to give effectual receipts for any consideration for such
assignment. However, this right shall be subject to the provisions of the Act and to any rights
appearing from the register to be vested in any other person.
(v) Right to Seek Correction of Register
The registered proprietor of a trademark has a right to make an application to the registrar
seeking correction of register regarding the errors pertaining to the particulars of the registered
proprietor and other aspects relating to the registered trademark.
(vi) Right to Alter Registered Trademark
The registered proprietor of a trademark must make an application to the registrar seeking
leave to add to or after the trademark in any manner not substantially affecting the identity
thereof. The Registrar may refuse the leave or grant it on such terms and may be subject to such
limitations as he may think fit.
LIMITATIONS ON THE RIGHTS OF TRADE MARK HOLDER
The Trademarks Act 1999, protects well-known trademarks in two ways – an action against
registration of similar marks and action against misuse of well – known marks. While having a
trademark can provide many advantages and privileges, it is subject to some limitations. The
limitations arise due to the inherent limitations of the nature of Trademarks.
Design or Functionability of Trade Mark
This limitation arises from the very fact of what can be trademarked and what cannot be. This
limitation implies that the product must be non – functional; that is, it must not have any purpose
or function to it. For example, a pen design can be trademarked, but if there is a special feature of
cushion grip or any functional design that enhances usability, it cannot be trademarked as it can
be used by organisations to limit competition by registering functional elements and pursuing the
trademark rights against a competitor.
Geographical Area Limitation
The Trademark Act applies in the country or geographical area that it has been imposed. Hence
if a product is trademarked in the USA, it can be replicated in India if the organisation has not
obtained the trademark registration in India as well. Some trademarks are transactional and hence
apply to certain unions or committees. To obtain multiple country protection, the organisation
has to apply for a separate international application.
Fair Use Limitation
The Fair Use doctrine is found under Copyright Laws. The doctrine states that parts of
copyrighted material can be used without the permission of the owner. This can be used for
education, research, parody, etc. Under the Trademark Law, this applies to situations wherein
common words are used every day in a distinctive context owing to which it cannot be
trademarked. Even if the product is fanciful, the owner might not be able to enforce rights if it is
used in a manner qualifying as nominative fair use.
Under Section 30(2)(d) of Trademark Law, in order to claim the defence of nominative fair use,
the user must establish that it is crucial for him/her to use the registered mark to identify the
product in the market.
Parallel Importation
Parallel imports mean the acquisition of product/goods from the rightful owner and selling it for
a lesser price via unaccredited channels in the market. Trademark Law cannot protect against
parallel importation. It is considered legal and hence if a trademarked product/goods are
imported without the consent of the owner and sold for a lesser price, the owner has no rights on
the subsequent sale, his rights are exhausted on the first sale.
Trademark registration provides benefits to an organisation like recognition, adding value and
also rights against infringement. However, the limitations exist, and organisations must check
which of the limitations apply and seek professional help.
HONEST AND CONCURRENT USE OF A TRADEMARK
A Trademark identical or similar to an already registered trademark cannot be registered.

As per Section 11 of the Trade Marks Act, 1999, a trademark shall not be registered if it is
identical with an earlier trademark. This provision is there to prevent public confusion as to the
ownership or origin of the goods claimed.
For a mark to get protection under the Trade Marks Act, 1999, it has to be registered with
the Trade Mark Registry. When a mark is applied for registration, it can be objected by the
Registrar of Trade Marks under two broad grounds i.e. Absolute Grounds & Relative Grounds.
Section 9 of the Act lays down absolute grounds for refusal of registration whereas Section 11
lays down relative grounds for refusal of registration. Section 11 basically prevents a mark which
is identical or similar to a previously registered mark from getting registered. When the
registration is objected under Section 11 of the Act, the applicant can take up several
defenses. “Honest Concurrent Use” as laid down under Section 12 of the Act is one of those
grounds which the applicant can make use of to evade getting tangled in a trademark
infringement battle. Section 12 lays down the doctrine of Honest Concurrent User. Concurrent
use is when users have identical or similar marks on similar or non-similar goods. The main
contention to prove the honest concurrent use is that the applicant has been using the mark in a
bonafide manner and/or he didn‟t have the knowledge of the earlier registered trademark. The
applicant also needs to prove that the relevant customers associate their mark with their product
or service.
The section also provides that the registration of such mark is upon the subjective
discretion of the Registrar, thus the Registrar is no way obliged to register such mark.
Documents to prove Honest Concurrent Use
Some of the documentary evidence which can prove honest concurrent use under Section
12 of the Act are:
1) If it is a mark already in use then the evidence to prove the time period of the usage of the
mark;
2) Advertisements of the mark and the proofs of the amount spent on the advertisement of the
mark;
3) The applicant can also produce books of accounts showing the yearly sales figures for
goods/services offered under the mark.
All the above evidence helps the applicant to prove that the consumers have started associating
the mark with his product/services offered under the mark.
Landmark Cases using the defense of Honest Concurrent Use
In the case of Kores(India) Ltd. v. M/s Khoday Eshwarsa and Son [(1984) Arb LR
213 (Bom)] five factors were laid down as being necessary for determining the registrability of a
trademark. These were:
1. The quantum of the concurrent use of the trademark in connection with the goods concerned
and the duration, area and volume of the trade.
2. The degree of confusion likely to ensue from the resemblance of the marks, which is to an
indication of the measure of public inconvenience.
3. The honesty of the concurrent use
4. Whether any instances of confusion have in fact been proved.
5. The relative inconvenience, which would be caused if the marks were registered, subject if
necessary to any conditions and limitations.
In the case of, Goenka Institute of Education and Research vs. Anjani Kumar
Goenka and Anr. (2009), the appellant was allowed to use the mark “ Goenka” with a condition
so as to include the name of their trust below the name of their school so as to facilitate a clear
differentiation between the two marks. The reason which allowed the use of the doctrine of
honest concurrent use was that both the parties started using the mark “Goenka” at the same time
and both were based in different locations so there would be minimal chance of public confusion.
Circumstances when Honest Concurrent Use cannot be used as a defense
The defense of Section 12 has got diluted over time primarily due to these reasons:
1. Well-known Trademarks: The Act provides enhanced protection to Well-known Trademarks.

A well-known trademark gets protection in all the classes (NICE Classification) irrespective of
its registration in a particular class. (Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan)
2. New and innovative methods of advertisements tend to reach out to a larger number of
potential users. Online Advertisements and advertisements on social media have also contributed
to a quick brand building of a company or business house.
3. The trans-border reputation of brands or marks: Due to globalization, the brands are
recognized by consumers or customers all over the world. ( N.R. Dongre v. Whirlpool
Corporation)
4. Possibility of brands expanding their business in the future thereby expanding the possibilities
of reaching wider consumers.
Therefore the defense that the product or service is different from the product or service
on which the mark is already in use is now having a lesser impact, since the earlier proprietor of
the mark may expand his business in the future.
Conclusion
To conclude, when claiming honest concurrent use after receipt of a similarity objection
or opposition, the applicant or the defendant should produce strong evidence to substantiate such
claims of extensive, honest and concurrent use of the trademark. Extensive, honest and
concurrent use of the disputed mark does not negate but mitigates the likelihood of consumer
confusion due to the conceptual similarity of the marks. The primary objective of a Trade Mark
is to act as a source identifier, and if two identical or similar marks can exist without any public
confusion then the mark can be registered subject to the subjective discretion of the Registrar.
8. Effect of Registration of Trade Mark, Infringement and Passing off

Remedies, Deceptive Similarity
Effect of Registration
The registration of a trademark shall if valid give the exclusive right to the registered
proprietor to the use of trademarks in respect of goods and services of which the trademark is
registered, and also to obtain relief in respect of the infringement of the trademark.
RIGHTS CONFERED BY REGISTRATION
 Trademarks differentiate your goods and services to that of your competitors which
means that trademarks help consumers to identify you.
 Trademarks help to increase the goodwill and brand awareness of the product or services.
 Trademarks help in avoiding confusion in the market as a source of products and
services.
 Trademarks help in creating the brand value in the market to give an upper hand against
the competitors.
 Trademarks provide credit to the source of the goods or the service and it also guarantees
its quality.
 It helps in the proper advertisement of the product.
 Trademark provides legal protection as the person who registered the trademark becomes
the legal owner and he can take some legal against the person who uses your registered
trademark without your permission.
 Trademark helps in establishing a unique identity of the company which means no other
company can use your trademark for similar goods or services.
CONSEQUENCES OF NON REGISTRATION
As per Section 27 of Act, no infringement will lie with respect to an unregistered

trademark, but it recognizes the common law rights of the trademark owner to take action
against any person for passing off goods as the goods of another person as services provided
by another person or the remedies thereof.
1. INFRINGEMENT AND PASSING OFF AND REMEDIES
Infringement of trademark
A registered trademark is infringed by a person who not being a registered proprietor or a person
using by way of permitted use in the course of trade, a mark which is identical with or
deceptively similar to the trademark in relation to goods or services in respect of which the
trademark is registered. After infringement, the owner of the trademark can go for civil legal
proceedings against a party who infringes the registered trademark. Basically, Trademark
infringement means the unapproved use of a trademark on regarding products and benefits in a
way that is going to cause confusion, difficult, about the trader or potentially benefits.
Infringement of trademark on the internet
The expansion of the web is also leading to an expansion of inappropriate trademark

infringement allegations. Probably, a company will assert trademark infringement each time it
views one among its trademarks on an online page of a Third party. For example, an individual
who develops a website online that discusses her expertise with Microsoft software could use
Microsoft‟s trademarks to consult exact merchandise without the worry of infringement.
However, she mainly would no longer be competent to use the marks in this kind of means as to
intent viewers of her internet web page to feel that she is affiliated with Microsoft or that
Microsoft is someway sponsoring her net web page. The honour could simplest be analyzed
upon seeing how the marks are sincerely used on the web page. In this way, there is an
infringement of trademark on the internet.
When will it be not considered as Infringement
To prove innocence, the defendant must prove that such usage is in line with the honest
commercial/industrial practices, and does not take unfair advantage of the repute of the
trademark. To prove the above, the following pointers help in understanding when a trademark is
not infringed and can be used–
the use also specifies the “kind, quality, quantity, intended purpose, value, geographical origin,
the time of production of goods or the rendering of services.”
The registration does not extend to the use of the trademark when the registration is subject to
any conditions/limitations.
The registered proprietor/user had allowed such use of the trademark or if the use is intended to
indicate such usage by the registered user/proprietor himself.
Neither the purpose nor the effect of the use of the trademark is to signify any connection with
the registered good/service. It is to be noted that there can be no infringement of an unregistered
trademark, for only upon registration does the user/proprietor receive the exclusive right to use
the trademark for their goods or services.
Case laws on Infringement
Hearst company Vs Dalal avenue verbal exchange Ltd.
The courtroom held that a trademark is infringed when a character in the course of trade makes
use of a mark which is same with or deceptively similar to the trademark in terms of the goods in
respect of which the trademark is registered. Use of the mark by using such man or woman needs
to be in a manner which is more likely to be taken as getting used as a trademark.
Amritdhara Pharmacy Vs Satya Deo Gupta,
In this case for determining the connection in two words related to an infringement action was
stated by the Supreme Court that there must be taken two words which are deceptively similar.
And judge them by their appearance and by their sound. There must be considered that the goods
to which they are to be utilised. There must be a consideration of the nature and kind of customer
who would be likely to buy those goods. In fact, it must be considered the surrounding
circumstances and also must consider what is likely to occur if each of those trademarks is used
in common ways as a trademark for the goods of the particular owners of the marks.
After considering all those circumstances, they came to the conclusion that there will be
confusion. This is to say that, not significantly that one man will be injured and the other will
gain the illegal benefit, but it for that there will be a mess in the mind of the public which will
lead to confusion in the goods then there may be the refusal of the registration.
No action for an unregistered trademark
This is defined under Section 27 of Act that no infringement will lie with respect to an
unregistered trademark, but recognises the common law rights of the trademark owner to take
action against any person for passing off goods as the goods of another person as services
provided by another person or the remedies thereof.
Passing off
Passing off is common legislation of tort, which can be used to put in force for unregistered
trademark rights. The regulation of passing off prevents one man or woman from
misrepresenting other items or services. The inspiration for passing off has faced some changes
in the duration of time. In the beginning, it was restrained to the representation of one person
goods to another. Later it was elevated to business and non- trading activities. Therefore it used
to be additionally accelerated to professions and non-trading movements. Today it is applied to
many types of unfair trading and unfair competitors where the activity of one person cause
damage to another person. The fundamental question on this tort turns upon whether the
defendant‟s conduct is such as deceive or mislead the general public to the confusion between
the industry activities of the two.
In British Diabetic organization V Diabetic, both the parties have been charitable societies.
Their names have been deceptively identical. The phrases „association‟ and „society‟ both should
be considering that they have been similar in derivation and meaning and were not completely
varied in kind. The everlasting injunction was granted.
Difference between passing off and infringement
The measures for passing off is different from the measures of an infringement. The claim for
infringement is a lawful remedy whereas the claim for passing off is a common law remedy.
Therefore, in order to establish infringement with respect to a registered trademark, it is only
required to prove that the infringing mark is same or deceptively similar to the certified mark and
no more proof is required. In the case of a passing off claim, proving that the marks are same or
deceptively similar only is not sufficient.
The use of the mark should be likely to mislead or cause confusion. Moreover, in a passing off
claim it is necessary to verify that the use of the trademark by the defendant is expected to cause
injury or damage to the plaintiff‟s goodwill, whereas, in an infringement suit, the use of the mark
by the defendant must not cause any injury to the plaintiff. But, when a trademark is registered,
registration is given only with respect to a particular category of goods. Protection is, therefore,
provided only to these goods. In a passing off action, the defendant‟s goods must not be the
same; it may be different.
In, Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical laboratories, the
Apex court held that there are some differences between the trial for passing off and trial for
infringement of a trademark. In American Home Products Corpn. Vs. Lupin Laboratories
Ltd., the Court held that it is well-settled law that when regarding the infringement of a
registered trademark. It is important to carry in mind the difference between the search for
infringement and the search in passing off the trial. In a passing off action, the courts seem to see
whether there is deception whereas, in infringement matter, it is important to note that the
Trademark Act gives to the owner an exclusive right to the use of the mark which will be
infringed in the case of indistinguishable mark and in the case of related marks, even though
there is deception, infringement can still take place.
In Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. it was held by the Court that to proceed
action for passing off three elements are required to be established, which are as follows:
In a trial for Passing off, as the expression passing off itself suggests, is to restrict the defendant
from passing off its goods or services to the public which of the plaintiff‟s. It is a claim not only
to preserve the status of the plaintiff but also to protect the public. The defendant must have
traded its goods or given its services in a manner which was deceived or would be likely to
deceive the public into thinking that the defendant‟s goods or services are the plaintiffs.
That second element that must be established by the plaintiff is a misconception by the defendant
to the public and what has to be placed in the possibility of confusion in the minds of the public
that the goods or services offered by the defendant are the goods or the services of the plaintiff.
In assessing the possibility of such confusion the court must allow for the „imperfect recollection
of a person or ordinary memory‟.
The third element of a passing off action is loss or the possibility of it.
Notwithstanding, trademark registration under the Act only has effect in India. To get trademark
rights and protection in other countries it is required to register the trademark in those countries.
Trademark protection is regional in nature. A single registration will have to be made in every
country where protection is wanted. To get protection outside India, it is required to file
applications in the respect of the countries individually. In enhancement, there should be
registration in a country before you begin the use of the trademark in that country. In some
countries such as China, Japan, Continental Europe, and Indonesia, the first person who applies
for registration will get the rights of a trademark, rather than the person who first uses the
trademark. Hence, the different party could legitimately take trademark by applying for
registration even if there is the first person using the trademark.
DECEPTIVELY SIMILAR [Sec. 2 (h)]
(h) "deceptively similar", - A mark shall be deemed to be deceptively similar to another mark if
it so nearly resembles that other mark as to be likely to deceive or cause confusion.
Test of similarity
If one mark is deceptively similar to another the 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 they are of such a character to prevent one design from being mistaken for the
other. It would be enough if the disputed mark has such an overall similarity to the registered
mark as it likely to deceive a person usually dealing with one to accept the other if offered to
him. Apart from the structural, visual, and phonetic similarity or dissimilarity, the query needs to
be viewed from the factor of view of man typical intelligence and imperfect collection secondly.
It‟s regarded as an entire thirdly it is the query of his impressions. In Mohd. Iqbal v. Mohd.
Wasim it was held that “it is common knowledge that „bidis‟ are being used by persons
belonging to the poorer and illiterate or semi-literate class. Their level of knowledge 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 are common. In
view of the above, there appears to be a deceptive similarity between the two labels”.
9. Change of Ownership, Assignment and Transmission, Licenses
ASSIGNMENT AND TRANSMISSION OF TRADE MARKS
The assignment of a trademark takes place when the ownership of such trademark is transferred
from one entity to another, which may either be along with or without the goodwill of the
trademarked business and which has to be recorded in the register of trademarks. Following is
the process of assignment of trademark in India:
Complete Assignment of trademark from one entity to another: The owner transfers all his
rights held in the trademark to the other entity.
Assignment of trademark with respect to only certain goods and services: Here, the
ownership of trademark is limited to only certain products or services. For example, “A” is the
owner of a brand and uses his trademark for selling computers, television sets, and air-
conditioners. “A” assigns “B” the rights in the brand with respect to only the Air-conditioners,
and whereby “A” retains the rights in the brand with respect to computers and television sets.
Assignment with the goodwill: Here, the absolute ownership over the rights and value of a
trademark associated with the product is transferred from one entity to another. For example,
”A” is the owner of a brand and uses his trademark for selling computers. “A” sells his brand to
“B” whereby “B” retains all such rights vested in the brand and can use the brand trademarks for
selling computers as well as other electronic products of his choice.
Assignment without the goodwill: The assignment without goodwill is also known as “gross
assignment”. Here, the assignment refers to restrictions of rights of the buyer whereby it limits
the new owner of using the brand on products that the original owner is already For example,
“A” is the owner of a brand and uses his trademark for selling computers. “A” sells his brand to
“B” such that “B” will have no rights to use the brand trademark for selling his computer
products. However, “B” can use the brand trademark in the chain of businesses other than a
computer. Using the case process of Trademarks Act 1999, there is a restriction of these
processes as per the registered process and their confusion amid various other clear public users
and other clear deliverables.
Such restrictions are
 Giving an account of these assignments and their results would have rights in a more
desperate work have effective goods and services. It further has a clear need for
association as per deeds.
 Taking the approach of these Assignments and their results would have different effective
process in a larger Spectrum.
Licensing of a Trademarks in India
The licensing of a trademark allows the licensee to use the trademark, albeit the trademark itself
is not assigned to the other entity, that is to say, the ownership has not been transferred but the
mere use of the trademark is permitted to be used by the licensee.
Licensing of trademark has a plethora of benefits for both entities. Here, the licensor may enjoy
his rights to the trademark by generating royalties for its use, whereby the licensee is able to
broaden his market chain operations by using the said trademark for building reputation and
brand value.
In layman words, a licensor has the right to license his rights over the trademark as he may be
pleased with, such as by restricting the rights of the licensee in the trademark with respect to
products or services. The licensor may restrict the time and area within which said trademark can
be used by the licensee with respect to the product and services.
Agreements for Transmission
Trademark assignments are generally executed by way of trademark assignment agreements

under which the transmission of transfer takes place from one entity to another.
The following points are to be ensured while drafting such agreements for the assignment and
licensing of trademarks in India,
That the rights of the trademark brand do not tend to cause harm due to obligations prescribed in
such agreement.
The provision with regard to the assignment is with or without the goodwill of the business
should be properly negotiated and explicitly mentioned in the agreement.
The agreement must be drafted in accordance with the purpose of the transaction in question.
The rights and duties of the licensee must be distinctively pre-determined and defined.
The license agreement should be registered with the trademark Registrar, although it is not
compulsory but in a legal perspective, it is most advisable.
It is more of the licensed for their agreement for Trademark Act 1999, relieved which do provide
registration for the license agreement. Using the process of the Trademark Assignment will do
make an impact in rights and duties for their distinctively determined and further relieved.
Conclusion
Understanding the process of assignment and licensing of trademarks in India is a paramount

issue. The process of marketing and strategic management would surely open a plethora of
broadening horizons in this domain, for the licensor and licensee likewise. It all depends upon
the development of a brand, and the use of the brand, which collectively form a factor to boost
marketing in various sectors.
Having an agreement which set an example for creating IPR and do allow intellectual property
transfer of these commercial returns. It is further ensured that various deliverable monetary gain
will have utilization as per the Agreements and have purchase value using the benefit of right
made up and also provide legal and equitable rights for law and other important Issues. Further
acceleration of these IPR would do study the IP rights more rigorously and have companies own
valuable needs more carefully understandable and have IPR made out of scope and address the
needs of the resource.
It further defines and also provides clear obligations for not able to disclose and create clause to
address the issue with the jurisdiction of Alternative Agreement clause for these issues legal
contract for their compliance exist laws.
It is, however, worth to note that the ability of a Company to Sell or buy is very much required to
sustain in the market. Although the Trademark does not take much of space, too much of IP can
actually be a burden to the Company due to the funds required to maintain the registering fees,
for its proper defense if there is any third party claim or for manufacturing and sale for a final
production or creating and marketing a final product. For a Company to sell an unused IP, this
can usher the Company‟s financial position and could generate revenues and decrease the overall
Costs. Selling unused or surplus intellectual property can have an immediate positive effect on a
company‟s finances, generating revenue and decreasing costs. When the Company plans to
enhance its business, Company looks forward in purchasing trademark to support their business
motive, creating an identity for themselves and ensure that this is properly marketed.
This was all about Assignment and Licensing of Trademarks in India. Please comment below
and let us know what are your views on Assignment and Licensing of Trademarks in India. Do
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10. Contemporary Developments - Effects of Information Technology,

Protection of Trade Names and Domain Names
The Internet Domain Names have now become much more than mere representing the
websites of different companies on the Internet. Today, in this age of well-developed information
technology and worldwide businesses through Internet, these domain names have attained the
status of being business identifiers and promoters. Since the commercial activities on the Internet
are to go on increasing day by day, the importance and usefulness of domain names too, are to be
enhanced for the purposes of greater publicity, popularity, and profitability of businesses in all
economic sectors. According to Bill Gates, the founder of Microsoft, "Domains have and will
continue to go up in value faster than any other commodity ever known to man". Broadly, the
functions of domain names are now quite similar to the functions of a trademark or service mark,
for these purposes. Ours this very informative web-article offers rich and hugely beneficial and
securing information regarding the registration and protection of the domain names as
trademarks, with a view to help and serve people, companies, and professions pertaining to
diverse occupational and economic fields.
Functions of A Domain Name and A Trademark
A Domain Name is a quite user-friendly form of an Internet Protocol (IP) address; the
technical IP address of this being invisible to the viewers. Addresses to the Internet Web Servers
are assigned and managed through the Domain Name System (DNS), the globally distributed
internet database administered by ICANN. An example of a domain name is "inta.org". The
name portion of a domain name [here, inta] is called as the Second-Level Name, and this unique
and scintillating name is to be created or selected by the domain name applicant. The end portion
of a domain name [here, .org] is termed as the Top-Level Domain (TLD); and is further
classified into the categories of the Generic Top-Level Domains (gTLDs) and the Country-Code
Top-Level Domains (ccTLDs). Some of the most common and popular categories of the top-
level domains are .com; .org; .gov; .net; .in; etc.
Generally, a domain name performs the same functions online, which a trademark serves in
the offline business dealings and transactions. While the trademark is striking graphic signifier of
your product or company, the domain name is magnificent navigator to your company on the
internet, and the virtual image of your business. Duly registered and protected trademark and
domain name can offer the following main benefits: ---
 A trademark or service mark promotes and protects your brand name, while a registered
and protected domain name provides you protection against any unauthorized use of your
domain name by any person or entity.
 Trademark supports the face value of your business or profession, while a domain name
increases access value of your business from any remote place of the world over.
 A trademark (or service mark) makes your any product (or service) prominent in the
concerned marketplace, while a domain name can also function to deliver your product or
service to your customers worldwide.
Thus, a well-protected domain name is certainly immensely helpful for security, worldwide
prominence, and profitability of a business, quite like an internationally protected trademark or
service mark. Hence, proper registration and protection of both the trademark and domain name
are advisable and imperative.
Can Internet Domain Names be Registered and Protected As Trademarks or Service

Marks?
Yes, domain names can also be registered and protected as trademarks or service marks
at the national and international levels, provided that the domain names do satisfy all conditions
to be duly registered and protected like the trademark and service marks.
Any unique internet domain name which is capable of identifying and distinguishing goods or
services of a company from that of other companies, and can also act as a reliable source
identifier for the concerned goods or services on the internet, may be registered and thus
protected as trademark, if it satisfies all other rules and requirements for registration which are
commonly applicable to the trademarks and service marks. Again, for proper registration of a
domain name as a trademark or service mark, this must be unambiguously unique from all other
domains names and well-known trademarks on the internet, so that it does not mislead, confuse,
or deceive customers of other companies engaged in the same or different fields, or violate
public order or morality. Such cases may give rise to instances of trademark infringement
litigation. Exclusive information about registration and protection of domain names as
trademarks in India and abroad is provided in the sections below.
In this connection, the following judgment of the Honorable Supreme Courts of India is
worth mentioning, which was extended in the case of Satyam Infoway Ltd. Vs Sifynet
Solutions Pvt. Ltd. [Where the matter for consideration before this Apex Court of India was
whether Internet Domain Names are recognizable as other Intellectual Properties such as
Trademarks]: --- "The original role of a domain name was no doubt to provide an address for
computers on the internet. But the internet has developed from a mere means of communication
to a mode of carrying on commercial activity. With the increase of commercial activity on the
internet, a domain name is also used as a business identifier. Therefore, the domain name not
only serves as an address for internet communication but also identifies the specific internet site,
and distinguishes specific businesses or services of different companies. Consequently a domain
name as an address must, of necessity, be peculiar and unique and where a domain name is used
in connection with a business, the value of maintaining an exclusive identity becomes critical.
"As more and more commercial enterprises trade or advertise their presence on the web, domain
names have become more and more valuable and the potential for dispute is high."
Trademark Protection Vs. Domain Name Protection
Trademarks or service marks are provided recognition and protection in only those
national and international jurisdictions, where these are properly registered; these may not attain
trademark protection worldwide. The domain names as trademarks or service marks are
registered and protected at the entire global level supremely by only one organization which is
ICANN [Internet Corporation for Assigned Names and Numbers], along with the national and
international protection under the directly concerned national Trademark Law and diverse
International Trademark Treaties of the world. Any national or international trademark law is not
fully capable of protecting a domain name in countries of the world over. To meet this vital
objective, the ICANN with support of the WIPO (World Intellectual Property Organization)
prescribed the following two strong and strict measures --- a rigorous and censorious system of
registration of domain names with accredited registrars [by ICANN]; and an efficient and
efficacious dispute resolution policy, named as the Uniform Domain Name Disputes Resolution
Policy (UDNDR Policy).
For a dispute resolution under the UDNDR Policy of October 1999, a person or entity may
formally complain before the competent administration-dispute-resolution services providers
[listed by ICANN under Rule 4(a)], that:
1. Any specified domain name is very strikingly or confusingly similar to a previously

registered domain name or trademark of the complainant
2. Any accused domain name has been registered, and is blatantly being used in bad faith
3. There exists any certain case of trademark infringement against the complainant
Today, the domain name registrars duly authorized by the ICANN, operate a dispute
resolution procedure under the UDNDR Policy, for the purposes of providing efficient and
rigorous remedy against bad faith and abusive registration of domain names which violate the
trademark rights of the complainants.
Protection of Domain Names in India
The protection of domain names in India has been deeply felt and approved by the law
courts of the country, like the protection enjoyed by the trademarks or service marks; provided
that the proposed domain name fulfils all requirements to be properly registered under the Indian
trademark law. Any person or business or professional entity may obtain protection to his/her/its
newly created domain name in entire India under the Trade Marks Act of 1999 and the Trade
Marks Rules of 2002, and all amendments made in these so far. For the purpose of worldwide
protection of registered domain names, the concerned people or entity has to follow the above-
mentioned system or procedure. Here, it may be reiterated that a well-protected domain name
will offer to the registrant all those legitimate rights and authorities which are commonly availed
by the owners of registered trademarks or services marks in India. The rights to take rigorous and
drastic actions against any infringement cases connected with the registered and protected
domain name within the Indian jurisdictions, are essentially covered by these rights granted to
the registrant of domain name by any regional Trademarks Office of India.
In this connection, the opinion and judgment of the law courts of India, essentially
including the Apex Court, are expressed explicitly during the handling of many domain-name
related law cases, particularly the cases of Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd;
and the Tata Sons Ltd. Vs Manukosuri and Others.
Conclusion
Through reading the above article, it is quite clear that importance of internet domain
names has now increased manifold, both in connection with internet communication and
business & commerce on the internet. As the internet is fast becoming an immensely popular and
highly preferred platform for accelerated flow of business related information of all types, by
people and entities in all economic fields, there is an imperative need for getting proper
protection to the unique domain names, like trademarks and service marks. This increasingly
desirable protection to the internet domain names as trademarks is now quite achievable under
the auspices of the ICANN and the WIPO. However, for the best possible, efficient, and rigorous
protection of domain names at the level global, close harmonization of the trademark laws of
individual countries worldwide is also highly desirable.

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B- I[2017 Pattern] LO 0609 Intellectual Property Rights-II

Module 03: The Trade Marks Act, 1999

1. Object and Functions of Trademark, Commercial and Non-Commercial

2. Development of Trademark law in India

3. Definition of Mark, Trademark, under the Trade Mark Act, 1999,

4. Conditions for Registration, Procedure of Registration, Grounds of

5. Protection of Trade Mark through International Registration under

6. Duration, Renewal, Removal and Restoration of Trademark

7. Rights and liabilities of Trademark Holder, Limitations on rights,

8. Effect of Registration of Trade Mark, Infringement and Passing off

9. Change of Ownership, Assignment and Transmission, Licenses

10. Contemporary Developments - Effects of Information Technology,

1. Object and Functions of Trademark, Commercial and Non-Commercial

A Trademark is a type of intellectual property. It can be a word, device, name, symbol or

 It identifies the product and its origin.

Commercial and Non-Commercial Role of Trade Marks

Protection to your Brand

Provides Uniqueness to Brand

Easy Communication tool

Easy for customers to find

2. Development of Trademark law in India

3. Definition of Mark, Trademark, under the Trade Mark Act, 1999,

MARK [Sec. 2 (m)]

TRADE MARK [Sec. 2 (zb)]

ASSOCIATED TRADE MARKS [Sec. 2 (c)]

CERTIFICATION TRADE MARK [Sec. 2 (e)]

COLLECTIVE MARK [Sec. 2 (g)]

DECEPTIVELY SIMILAR [Sec. 2 (h)]

WELL-KNOWN TRADE MARK [Sec. 2 (zg)]

4. Conditions for Registration, Procedure of Registration, Grounds of

1. PROCEDURE AND DURATION OF REGISTRATION

Online Trademark Registration

In India, trademarks can be registered online by the Controller General of Patents,

E-Filing of a Trademark Application

 Trademark Registration From

Documents required for Trademark Registration

 Applicant details: Name, address, and nationality

How to Register Trademarks

Steps to register a trademark in India are

Select a Trademark Agent in India

Determination of the Eligibility and Availability of the Trademark

Completing the Application Form and Filing

Review by the Trademark Office

Conditions for Registering a Trademark in India

 There are certain conditions or requirements to be fulfilled before filing a trademark

Who can apply for a Trademark

Checklist for Trademark Registration

Absolute grounds for refusal of registration

And also a time of production of goods or rendering of the offerings or different

 It frauds the public or causes confusion.

Relative grounds for refusal of registration

5. Protection of Trade Mark through International Registration under Madrid

International Trademark Registration

International Trademark Registration Process

Requirements for Obtaining International Trademark Registration

Countries That Protect International Trademark Registrations

25. Duration, renewal, removal and restoration and registration .-

RENEWAL AND RESTORATION

7. Rights and liabilities of Trademark Holder, Limitations on rights,

The registration of a trademark is a costly and time-consuming process. However, once

2. Rights Of Registered Trademark Holder/Owner

Design or Functionability of Trade Mark

Geographical Area Limitation