Section – C

1. CONCEPT OF TRADEMARK

Introduction
In the dynamic and competitive commercial world, trademarks have emerged as one of the
most valuable assets for businesses, playing a critical role in distinguishing products or
services from those of competitors. A trademark is a powerful tool that not only helps in
brand identification but also protects the goodwill of an enterprise. The concept of trademark
lies at the heart of Intellectual Property Rights (IPR) and is governed in India by the Trade
Marks Act, 1999. Over the years, the trademark regime in India has evolved through
legislative reforms and judicial interpretation, aligning itself with international standards such
as the TRIPS Agreement.

Meaning of Trademark
The term "trademark" is derived from two words—“trade” and “mark.” “Trade” refers to
commerce or business, and “mark” means a sign, symbol, or indication. A trademark,
therefore, represents a mark used in the course of trade. It acts as an indicator of origin,
quality, and association with a particular enterprise.
Trademarks are not merely decorative features on a product or packaging; they serve as a
means for consumers to identify the source and quality of goods or services. In an era where
brand value can exceed the tangible assets of a company, the strategic significance of
trademarks has dramatically increased.

Definition of Trademark
3.1. Statutory Definition
According to Section 2(1)(zb) of the Trade Marks Act, 1999, a trademark means:
“A mark capable of being represented graphically and which is capable of distinguishing the
goods or services of one person from those of others and may include shape of goods, their
packaging and combination of colors.”
This definition incorporates two essential criteria:
 Graphic representation: The mark must be capable of being graphically displayed.
 Distinctiveness: It must distinguish one person’s goods or services from another’s.
3.2. Judicial Definition
In the case of Dunlop Pneumatic Tyre Co. v. Dunlop Motor Co. Ltd., the court
emphasized that:
“A trademark is a symbol, word, or phrase used to identify a particular manufacturer's
products and distinguish them from others.”
Thus, the definition encompasses traditional trademarks such as words, logos, and symbols,
and also non-traditional ones like shape, sound, and smell, provided they fulfill the basic
requirements.

Objectives of Trademark Law

The objectives of trademark protection are multifaceted and serve both commercial and
consumer interests:
1. Consumer Protection
Trademarks help consumers to identify and distinguish between products. It protects them
from confusion and deception regarding the quality and origin of goods/services.
2. Encouragement of Fair Trade
Trademark law ensures that businesses do not indulge in unfair practices by imitating other
businesses' marks. It creates a level playing field for genuine enterprises.
3. Protection of Goodwill
Trademarks represent the goodwill and reputation of the business. Protecting a trademark
safeguards this intangible asset from being diluted or misappropriated.
4. Promotion of Innovation and Investment
Businesses are encouraged to invest in branding and innovation, knowing that their efforts
will be legally protected.
5. Legal Certainty and Economic Efficiency
The legal framework of trademark registration offers certainty, enforceability, and
predictability in commercial transactions.

Scope of Trademark Protection

The scope of trademark protection under Indian law is broad and inclusive:

1. Types of Marks Protected

The Act protects a wide range of marks, including:
 Words and names
 Letters and numerals
 Devices, symbols, and logos
 Shape of goods
 Sound marks (e.g., Yahoo! yodel)
 Color combinations
 Packaging
2. Territorial Scope
Trademark rights are territorial in nature. A registered trademark in India does not
automatically confer rights in another country.
3. Civil and Criminal Remedies
The Act provides both civil and criminal remedies for infringement and passing off, including
injunction, damages, account of profits, and seizure of goods.
4. Duration and Renewal
Registered trademarks are protected for ten years and can be renewed indefinitely upon
payment of prescribed fees.
5. Protection of Well-Known Trademarks
Section 11(6) recognizes and protects well-known trademarks even if they are not registered
in India.

Essential Features of a Trademark

A trademark must possess certain essential features to be eligible for protection:
1. Capable of Being Represented on the Register
A trademark must be clearly and precisely identifiable. This includes marks that can be
recorded in a manner accessible and comprehensible to the public and authorities (e.g., logos,
sound graphs, color swatches, etc.).
2. Capability of Use in Commerce
A trademark must be intended for use or actually used in the course of trade in relation to
specific goods or services. Mere ornamental or non-commercial marks do not qualify for
trademark registration.
3. Not Prohibited under Section 9 and 11 of the Trade Marks Act, 1999
Marks must not fall under the absolute or relative grounds for refusal, such as:
 Lack of distinctiveness
 Generic or descriptive terms
 Marks that hurt religious sentiments
 Deceptively similar or identical marks
4. Should Not Be a Generic Term
A trademark must not become a generic term used to describe a whole class of goods or
services (e.g., "thermos" or "escalator" once lost protection). A valid trademark should retain
its unique association with a brand.
5. Should Not Conflict with Public Order or Morality
Marks containing vulgar, obscene, or scandalous elements, or those promoting illegal
activities, are barred under Indian trademark law (Section 9(2)(c)).
6. Should Not be Geographically Misleading
A mark should not falsely indicate a geographical origin or suggest an association with a
place of cultural, historical, or commercial significance if the product is not actually from that
place (e.g., using “Darjeeling” for tea not grown in Darjeeling).
7. Should Not Be Identical to an Internationally Protected Mark
Under the Paris Convention and TRIPS, marks similar to internationally well-known
trademarks must be avoided, even for unrelated goods or services.
8. Should Not Include Prohibited Names or Emblems
Under the Emblems and Names (Prevention of Improper Use) Act, 1950, certain national
or international symbols, government names, flags, etc., cannot be used in trademarks.
9. Registrable for Specific Classes
The trademark must be applied under a specific class (as per the Nice Classification System,
comprising 45 classes), and protection is generally limited to that class unless extended.
10. Avoidance of Phonetic Similarity
A trademark must avoid even phonetically similar words or marks to those already existing
in the same or related class, especially when confusion is likely (e.g., “Airtel” vs. “Aircell”).
11. Compatibility with Honest Concurrent Use
In rare cases, two identical or similar trademarks may be allowed if both have been in honest
and concurrent use. However, this must be demonstrated with strong evidence of long-
standing, bona fide usage.
12. Stability in Trade Usage
A valid trademark should ideally not be subject to frequent changes in form or design, as
consistency reinforces brand identity. Frequent variation may erode distinctiveness and legal
enforceability.
13. Not Merely Functional
Under global jurisprudence, a trademark must not consist exclusively of a functional feature
of a product (e.g., a shape or design that is essential to the use of the product), as that falls
within the scope of patents or industrial designs, not trademarks.
14. Not Already Abandoned
A mark must not be abandoned or left unused for a continuous period of 5 years and 3
months after registration. Non-use may result in removal from the register (Section 47 of the
Trade Marks Act, 1999).
15. Capable of Building Brand Association
An ideal trademark should be suggestive, arbitrary, or fanciful in nature, aiding consumer
recall and facilitating long-term brand recognition and customer loyalty.

Conventional and Non- Conventional trademarks

Conventional trademark
Legal statutes do not specifically define trademarks as conventional and non-conventional.
The division is a practical outcome of how different types of marks are handled in legal and
administrative processes worldwide. Conventional trademarks are the traditional forms of
marks used to identify and distinguish goods or services. The main characteristic of the
conventional trademark is that it can be easily represented on a piece of paper, like you can
represent a word mark, music notes, etc. The following are included in the conventional
trademarks:

1. Product Marks: A product mark is a trademark explicitly used to identify a product to

distinguish the goods of one manufacturer or seller from those of others. For example,
“Colgate” is for toothpaste, and “Nike” is for athletic footwear. Applications for a trademark
registration filed under Class 1-34 IV Schedule under the Trade Marks Act, 1999.

2. Service Marks: Service marks function similarly to product marks but are used to identify
and distinguish services rather than goods. They help consumers recognize the source of a
service and thus help differentiate it from competitors. They are primarily used in advertising
products. Applications for trademark registration are filed under Class 35-35.

3. Word Mark: It consists of words, letters, numerals, and combinations of these to identify
the products and services of a company. Word marks are used when your product is text-
based, only letter-based, or just your business name. For example, Coca-Cola, Nike, and
McDonald’s.

4. Collective Marks: Collective marks are used by members of an association, cooperative,

or other collective group to certify that their products or services meet specific standards set
by the group. For instance, the mark “CA” is used by members of the Institute of Chartered
Accountants to denote certified professionals.

5. Certification Marks: Certification marks are used to certify that goods or services meet
certain standards or possess specific characteristics, such as quality, origin, or manufacturing
methods, established by a certifying authority. Examples include “FSSAI” for food safety
standards and “Agmark” for agricultural products in India.

Non-Conventional Trademarks

With the rise of globalisation and digital technology, businesses began experimenting with
sensory branding, which resulted in the emergence of marks that were not simply visual. To
set their brands apart, the businesses started utilising unusual colour schemes, noises, and
shapes. Among the non-traditional trademarks are:

1. Colour Marks: Colour marks include the use of specific colours or combinations to
distinguish goods or services. The colour mark has to acquire distinctiveness through long-
term, exclusive use in such a manner that the consumers associate that specific colour with a
particular brand or source. For example, the distinctive purple colour Pantone 2685C is used
by Cadbury for its chocolate packaging.

2. Sound Marks: Sound marks consist of unique sounds or jingles associated with a brand.
In India, the registration of sound marks requires a graphical representation or a sound wave
representation, such as the popular Nokia tune.

3. Shape Marks: Shape marks protect the distinctive shapes of products or their packaging.
It is pertinent to note that the shape must serve as a brand identifier and not provide technical
or utilitarian purpose to the brand. For example, the Coca-Cola bottle and the Toblerone
chocolate have unique shapes.

4. Pattern Marks: Pattern marks include distinctive designs and arrangements of designs, as
well as a pattern capable of identifying one’s goods or services and distinguishing them from
those of another. They can also include textile patterns or decorative designs that become
synonymous with a brand. For example, the distinctive pattern of the Louis Vuitton
monogram.

5. Scent (Olfactory) Marks: Scent marks are one of the most challenging to register due to
difficulties in graphical representation and subjective perception. There is no universally
accepted method to visually depict a scent because it cannot be adequately represented
graphically, and its perception can vary among individuals. A popular example is the PIÑA
COLADA scent used to coat Ukuleles.

6. Motion Marks: Motion marks include moving images or sequences that serve as brand
identifiers. These can be represented graphically by depicting a series of still images that
show the sequence of motion. Examples of moving marks are the Columbia Pictures logo and
the Microsoft Windows logo.
 Difference Between Conventional Trademarks and Non-Conventional Trademarks

Conventional Trademarks Non-Conventional Trademarks

These traditional marks identify and

distinguish goods or services. It is
comprised of words, logos, and These are innovative marks that identify and distinguish goods or services but are
symbols. not traditionally recognized, including sounds, colours, shapes, and more.
For example, Nokia’s ringtone, Toblerone’s triangular chocolate bar, the scent of
Chanel No. 5 perfume, etc.
For example, Google, Nike, Apple’s
apple symbol, etc.

They are easily represented through It is challenging to represent them graphically as they are not traditionally
standard images, words, or symbols. recognized, including sounds, colours, shapes, and more.

They are recognized and identified They are recognized through sensory experiences beyond sight, such as hearing a
based on visual elements like design particular sound or associating a specific colour with a brand, which enhances
and text. brand recall and emotional connection.

It must be distinctive enough to As they are not inherently distinctive, a colour mark must acquire distinctiveness
identify the source of goods or through use. For instance, a colour mark must be shown to be associated with a
services. particular brand in the minds of consumers.

They serve as identifiers as they are

used to ‘identify,’ not ‘dictate,’ the They serve as identifiers of the products and services.
nature of goods or services.

It is difficult to register as it faces higher scrutiny during registration due to

Easy to register and protect provided
challenges in graphical representation and proving acquired distinctiveness. For
that they meet the distinctiveness
instance, scent marks are difficult to register because they cannot be graphically
criteria.
represented in a precise and universally understandable manner.

Easy to sue for infringement as any In comparison to a conventional trademark, the case for infringement is
similarity in design, wording, or subjective and needs a detailed holistic analysis of the distinctiveness, market use,
symbols is easily identifiable. and consumer perception.

Landmark Case Laws on Trademarks

1. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001)
Facts: Both parties used the mark "Falcigo" and "Falcitab" for anti-malarial drugs.
Issue: Whether the mark was deceptively similar.
Held: The Supreme Court laid down factors for determining deceptive similarity, such as
nature of the mark, similarity of goods, class of consumers, etc. It emphasized public interest
in avoiding confusion in medicinal products.
Significance: This case is seminal for assessing deceptive similarity and consumer
protection.

2. Yahoo! Inc. v. Akash Arora (1999)

Facts: Akash Arora used the domain name "YahooIndia.com" similar to "Yahoo.com."
Held: The court held that domain names are entitled to the same protection as trademarks and
granted injunction against the defendant.
Significance: The case extended trademark protection to domain names, especially in
cyberspace.

3. Daimler Benz v. Hybo Hindustan (1994)

Facts: The defendant used the mark "Benz" for underwear.
Held: The Delhi High Court restrained the use of "Benz," stating that prestigious marks
deserve special protection.
Significance: Recognized the enhanced protection granted to well-known and luxury
trademarks.

4. ITC Ltd. v. Punchgini Inc. (2007)

Facts: Defendant opened a restaurant in New York using the name "Bukhara," previously
used by ITC.
Held: U.S. courts held that Indian trademark reputation cannot extend automatically to
foreign territories.
Significance: Reinforced territorial nature of trademark rights.

Conclusion
The concept of a trademark has evolved from a simple trade symbol to a powerful legal and
commercial instrument in today’s globalized economy. The Indian legal regime under the
Trade Marks Act, 1999 provides comprehensive protection aligned with international
practices. The essential features of a trademark—distinctiveness, graphic representation, non-
deceptiveness—ensure that only genuinely distinguishable marks are protected. Judicial
pronouncements have further clarified complex issues such as deceptive similarity, trans-
border reputation, and domain name protection.
Trademarks, as part of IPR, not only protect the interest of businesses but also safeguard
consumer rights, promote fair competition, and facilitate economic growth through brand
recognition and goodwill. Hence, a sound understanding of trademark law is indispensable
for both legal professionals and commercial stakeholders.
2.Registration of Trademark under the Trade Marks Act,
1999

Introduction
A trademark is an essential element of brand identity in the competitive commercial world. It
symbolizes the source, quality, and goodwill of a business. The Trade Marks Act, 1999,
governs the law relating to trademarks in India. One of the primary objectives of this Act is to
provide a legal mechanism for the registration of trademarks and confer rights upon the
proprietors of registered marks.
The process of registration is significant because only a registered trademark holder has
statutory rights under the Act, such as the right to sue for infringement and the exclusive
right to use the mark. This answer provides a detailed exposition of the trademark
registration process, along with the relevant statutory provisions and judicial precedents.
Meaning and Definition of Trademark
Section2(w) defines registered trade mark as a trade mark which is actually on the register
and remaining in force;
According to Section 2(1)(zb) of the Trade Marks Act, 1999:
"Trademark means a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others..."
A trademark includes words, logos, shapes, packaging, sounds, and even colors that can
distinguish one product/service from another.

Relevant Statutory Provisions Related to Registration of Trademarks

1. Section 18 – Application for Registration
This is the first and most crucial step in the registration process.
 Section 18(1): Allows any person claiming to be the proprietor of a trademark used or
proposed to be used to file an application.
 The application must specify:
o The mark
o Class of goods/services (as per the Nice Classification)
o Full name and address of the applicant
o Usage details (whether the mark has been used or proposed to be used)
 Section 18(2): A single application may cover multiple classes.
 Section 18(3): The Registrar may accept the application absolutely, conditionally,
or refuse it based on preliminary examination.

2. Section 19 – Withdrawal of Acceptance

 This section gives power to the Registrar to withdraw the acceptance of an
application if it was accepted in error or requires reconsideration.
 The applicant must be given an opportunity to be heard.
This safeguards the registration system from errors and ensures the mark meets legal
standards.

3. Section 20 – Advertisement of Application

 Once accepted, the trademark application must be advertised in the Trade Marks
Journal.
 This is to allow third parties an opportunity to oppose the registration.
 It also serves as public notice, facilitating transparency

4. Section 21 – Opposition to Registration

This section provides the process for opposition by third parties.
 Any person may file an opposition within 4 months of the advertisement.
 The opponent must submit a notice of opposition in Form TM-O, stating the
grounds.
 The applicant must file a counter-statement.
 Evidence is submitted by both parties.
 A hearing is held, and the Registrar passes a decision.
Grounds for opposition include:
 The mark is identical or similar to an existing trademark (Section 11)
  The application was made in bad faith
 The mark is descriptive or deceptive

5. Section 23 – Registration
 If no opposition is filed or if the opposition fails, the trademark is registered.
 The Registrar enters the trademark into the Register of Trademarks and issues a
certificate of registration under the seal of the Trademarks Registry.
Section 23(1): Registrar shall register the mark and issue a certificate.
Section 23(2): The effective date of registration is the filing date of the application, not the
date of actual registration.
Legal Significance:
 Upon registration, the proprietor obtains exclusive rights under Section 28.
 The proprietor may file for infringement under Section 29.

6. Section 25 – Duration, Renewal, Removal, and Restoration

This section ensures that registration remains valid only when actively maintained.
 Section 25(1): A registered trademark is valid for 10 years.
 Section 25(2): The registration can be renewed indefinitely for further 10-year terms
by filing a renewal application with fees in Form TM-R.
 Section 25(3) & 25(4): If not renewed, the mark may be removed from the register
after serving notice. However, it may be restored within 1 year by paying additional
fees.
Practical Relevance:
Non-renewal leads to loss of exclusive rights, exposing the mark to unauthorized use by
others.

7. Section 26 – Effect of Non-Use Due to Legal Hindrance

This section is a protective measure for applicants whose marks are delayed due to
opposition or legal proceedings.
 Any delay in using the trademark caused by pending registration shall not be treated
as non-use under Section 47 (which deals with removal for non-use).
 This ensures that applicants are not penalized due to procedural delays.

8. Section 29 – Infringement of Registered Trademarks (Post-Registration Relevance)

Though not directly a part of the registration process, Section 29 comes into effect after
registration.
 It provides the registered proprietor with the legal right to sue for infringement.
 Infringement occurs when:
o A person uses an identical/similar mark for identical/similar goods or services
without permission.
o There is likelihood of confusion or association.
o Dilution of distinctive character or reputation.

Legal Rights Conferred Upon Registration

Under Section 28, the registration of a trademark grants:
 Exclusive right to use the trademark in connection with the goods/services
  Right to assign, license, and enforce the trademark
 Statutory remedy for infringement (Section 29)
 Prima facie evidence of validity (Section 31)

Case laws
1. Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd.(2018)
Facts: The appellant, Nandhini Deluxe (a restaurant), applied to register its trademark
‘NANDHINI’ in various classes, including food items. The Karnataka Co-operative Milk
Producers Federation opposed the application, claiming their registered mark ‘NANDINI’
(used for dairy products) was deceptively similar.
Issues:
 Whether 'NANDHINI' is deceptively similar to 'NANDINI' despite being used in
different classes.
 Can opposition succeed solely based on phonetic similarity?
Judgment: The Supreme Court held that although the words were phonetically similar, the
businesses operated in distinct fields, and the visual appearance and presentation were
different. Thus, the opposition failed.
Relevance: This case clarified that phonetic similarity alone does not bar registration if
the goods/services are unrelated and there’s no likelihood of confusion.

2. Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.(2004)

Facts: Satyam Infoway, owner of the registered mark ‘SIFY,’ sought an injunction against
Sifynet Solutions for using domain names ‘siffynet’ and ‘siffynet.com’.
Issues:
 Can domain names be protected under trademark law?
 Is unauthorized use of similar names on digital platforms considered infringement?
Judgment: The SC held that domain names serve the same function as trademarks, and
the use of a deceptively similar domain name can amount to infringement.
Relevance: It emphasized that registration of a trademark protects the mark not just in
traditional commerce but also in the digital world, affirming its wide scope.

3. J.R. Kapoor v. Micronix India(1994)

Facts: Micronix India objected to Kapoor’s use of the same brand name ‘Micronix’ for
electronic goods. The latter had applied for registration and was using it simultaneously.
Issues:
 Should trademark registration be granted if there's prior use of a similar mark?
 What is the role of prior user rights?
Judgment: The Court held that even if a party applies for registration, a person with prior
use holds superior rights, and such registration can be refused.
Relevance: Reiterated the legal principle that "prior user prevails over registration" –
important for deciding opposition proceedings under Section 21.

4. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories(1965)

Facts: Durga Dutt Sharma sued Navaratna Pharma for using a similar trademark for
medicinal goods.
Issues:
 What constitutes deceptive similarity?
 Can a mark be refused registration due to likelihood of confusion?
Judgment: The Supreme Court laid down the test of deceptive similarity, stating that a
side-by-side comparison is not enough—confusion must be judged from the viewpoint of the
average consumer.
Relevance: Provides legal grounding for refusing registration under Section 11 (relative
grounds for refusal) during opposition.

Conclusion
The process of registration of trademarks under the Trade Marks Act, 1999 is an
elaborate and robust mechanism that ensures only distinctive and genuine trademarks are
granted legal protection. Sections 18 to 26, along with Section 29, form the bedrock of the
registration framework, providing both procedural guidelines and substantive rights.
Registration confers several advantages: exclusive rights, statutory remedies, legal
recognition, and protection against infringement. Given the growing importance of brand
value and intellectual property in today's commercial environment, understanding and
utilizing the registration provisions of the Trade Marks Act is essential for businesses and
proprietors.

3. Grounds for Refusal of Registration

Introduction
A trademark is a unique sign, symbol, logo, word, phrase, design, or a combination thereof
used by an entity to distinguish its goods or services from others in the marketplace. It is one
of the most crucial aspects of intellectual property, serving both commercial and legal
functions. The primary legislation governing trademarks in India is the Trade Marks Act,
1999.
However, not all marks are eligible for registration. The law lays down specific grounds for
refusal of registration, which are vital for maintaining market fairness, consumer protection,
and the prevention of deceptive practices. These grounds are codified under Sections 9 and
11 of the Trade Marks Act, 1999 and are further interpreted by Indian courts through
various judgments.
The grounds for refusal of registration are divided into:
 Absolute grounds – Related to the inherent nature of the mark (Section 9).
 Relative grounds – Related to conflict with earlier marks or rights (Section 11).

Section 9: Absolute Grounds for Refusal of Registration

Section 9 of the Trade Marks Act, 1999 deals with the intrinsic qualities of the trademark. If
a proposed trademark lacks essential characteristics such as distinctiveness or includes
elements that may be misleading, offensive, or contrary to public policy, it will not be
registered.
Section 9(1): Inherent Ineligibility
(a) Lack of Distinctive Character
A trademark must possess the ability to distinguish goods or services of one enterprise from
those of another. Marks that are inherently incapable of distinction are barred under this
clause.
Example: The word "Milk" for a dairy company or "Cold" for air conditioners is non-
distinctive.
(b) Descriptive Marks
Marks that only describe the kind, quality, quantity, intended purpose, values, or origin of the
goods/services are disallowed. Such words are public domain and cannot be monopolized.
Example: "Fast" for courier services or "Sweet" for chocolates.
(c) Customary Words or Expressions
Terms that are in common usage in trade or have become generic over time are not capable of
exclusive protection.
Example: "Super," "Ultra," or "Extra" used in everyday marketing are customary and hence
not eligible.

Section 9(2): Prohibited Matter

This sub-section prohibits trademarks that may lead to deception, confusion, offense to
religious beliefs, or obscenity.
(a) Deceptive or Confusing Marks
Marks that mislead consumers regarding the nature, quality, or geographical origin of goods
or services are not permitted.
(b) Hurts Religious Sentiments
Trademarks that offend the religious sentiments of any class or section of citizens are refused.
Example: Using names of deities such as "Ramayan" for products like incense sticks.
(c) Scandalous or Obscene Marks
Marks containing vulgar, immoral, or offensive matter are unregistrable.
Example: Sexual slang, abusive phrases, or graphics promoting indecency.
This clause protects public morality and decency.
(d) Marks Prohibited under Law
Trademarks whose usage is prohibited under other laws, especially the Emblems and Names
(Prevention of Improper Use) Act, 1950, are restricted.
Example: Names like “Gandhi,” “Ashoka Chakra,” “President of India,” etc.
This is to prevent misuse of national symbols or names of historical importance.

Section 9(3): Functional Shapes

This clause prohibits registration of trademarks which consist exclusively of:
 The natural shape of goods.
 The shape necessary to obtain a technical result.
 The shape which gives substantial value to the goods.
The rationale is to prevent monopoly over functional or essential product shapes.
Example: A simple cylindrical battery shape or triangular chocolate bar (as in Toblerone)
may be considered functional or valuable in design and thus not registrable as a trademark.

Exception:
1. Acquired Distinctiveness (Proviso to Section 9(1)): A non-distinctive or descriptive
mark may still be registered if it has acquired a secondary meaning through continuous and
exclusive use.
2. Honest Concurrent Use – Section 12: This provision allows registration of similar or
identical marks in cases where:
 The use is honest and concurrent, and
 There has been no actual confusion.
The Registrar may impose limitations or conditions on such registration.

Section 11: Relative Grounds for Refusal of Registration

While Section 9 is concerned with the intrinsic character of the mark, Section 11 focuses on
conflict with existing rights or trademarks.
Section 11(1): Likelihood of Confusion Due to Similar Marks
A mark shall not be registered if:
 It is identical or similar to an earlier registered mark, and
 It is for identical or similar goods/services, and
 There exists a likelihood of confusion on the part of the public.
The test involves assessing visual, phonetic, and conceptual similarities between the two
marks.
Example: “Airtel” and “Aircell” in telecom could be seen as phonetically similar and
confusing.
Section 11(2): Well-Known Trademarks
This sub-section protects well-known marks from being diluted even when the goods or
services are not similar.
If the use of a mark:
 Indicates a connection with the well-known mark,
 Takes unfair advantage of the reputation, or
 Is detrimental to the distinctive character or reputation of the well-known mark,
then it is refused registration, even across different classes.

Section 11(3): Prior Common Law or Statutory Rights

If the use of a mark is likely to be prevented due to:
 The law of passing off (common law rights),
 Copyright or any other existing intellectual property law,
then it shall not be registered.
This protects unregistered but well-used trademarks, recognizing the importance of prior
use over formal registration.

Tests to Determine Confusion or Conflict (Section 11)

1. Visual Similarity – Fonts, design, and layout of the marks.
2. Phonetic Similarity – Pronunciation or sound of the marks.
3. Conceptual Similarity – Idea or meaning behind the mark.
4. Nature of Goods/Services – Identical or similar goods increase the likelihood of
confusion.
5. Target Consumer Group – Common people with average intelligence and imperfect
recollection are considered.

Important Differences between Sections 9 and 11

 Basis Section 9 Section 11
Type of Refusal Absolute Grounds Relative Grounds
Based On Inherent nature of the mark Conflict with existing rights
Focus Deceptiveness, descriptiveness, etc. Similarity with prior marks
Object Protect public interest and morality Protect rights of earlier mark holders
Defenses Acquired distinctiveness Honest concurrent use

Case laws

Section 9
1. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. (2008) 10 SCC 657
Facts: The appellant claimed rights over the word “Clear” for glass products.
Held: The court ruled that “Clear” was descriptive and not inherently distinctive.
Significance: Clarified that descriptive terms need secondary meaning to qualify for
trademark protection under Section 9(1)(b).
2. Lal Babu Priyadarshi v. Amritpal Singh (2015) 4 SCC 392
Facts: Trademark “Ramayan” was sought for incense sticks.
Held: Religious texts like “Ramayan” cannot be registered as trademarks. Such names
belong to public domain and are prohibited under Section 9(2)(b).
Significance: Clarified that religious and sacred terms cannot be monopolized as
trademarks.
Exception
1. TATA Sons Ltd. v. Manoj Dodia & Ors. (2011)
Facts: Defendant used “TATA” for hair oil and personal care products.
Held: The court held that “TATA” is a well-known mark that had acquired distinctiveness
through extensive use.
Significance: Applied the proviso to Section 9(1) allowing registration of marks that have
acquired secondary meaning.
2. Kores (India) Ltd. v. M/s. Eshwarsa & Sons (AIR 1985 Bom 404)
Facts: Two parties used similar marks in different regions for carbon papers.
Held: The court allowed registration based on long-standing, honest use by both.
Significance: Established the principle that Section 11(1) may be overridden with honest
concurrent use.

Section 11
1. N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714
Facts: Whirlpool had no registered trademark in India, but objected to another's use of the
name.
Held: Whirlpool’s mark enjoyed trans-border reputation even without registration.
Significance: Section 11(3) recognizes common law rights and passing off actions.
2. Daimler Benz AG v. Hybo Hindustan (1994)
Facts: Defendant used “Benz” on undergarments.
Held: Court ruled in favor of Daimler, protecting reputation of well-known marks under
Section 11(2).
Significance: First major Indian case acknowledging well-known marks protection.
Conclusion
Sections 9 and 11 of the Trade Marks Act, 1999 form the core framework of trademark
eligibility and conflict resolution in India. Section 9 ensures that only marks which are
capable of distinguishing goods and are not offensive or misleading are granted legal
protection. On the other hand, Section 11 ensures that existing trademark owners and prior
users are protected from imitation and unfair competition.
The combined reading of these provisions upholds the objectives of the Act: promoting
distinctive identity, consumer protection, and fair trade practices. With the evolution of
commerce, especially digital branding, courts have interpreted these provisions dynamically,
balancing public interest with private rights.
Therefore, while seeking registration, applicants must ensure:
 That their marks are inherently distinctive or have acquired distinctiveness, and
 That they do not infringe upon existing or well-known marks.
Proper due diligence and compliance with Sections 9 and 11 significantly improve the
chances of successful registration and protection of a trademark under Indian law.

5. Difference between infringement of trademark and

passing off
Introduction
A trademark serves as a critical commercial tool used by businesses to distinguish their
goods and services from others in the market. It represents the origin and consistent quality of
products and services, building reputation and goodwill over time. As a visual symbol, a
trademark can become synonymous with consumer trust, making it an indispensable element
in business competition.
With increasing instances of unfair competition, protecting trademarks is not just a matter of
corporate interest but also a matter of consumer protection. The Trade Marks Act, 1999 in
India plays a dual role—it promotes fair competition while safeguarding businesses from
fraudulent misrepresentation and deceitful practices.
Historically, before statutory enactments, trademark protection in India was governed by
common law principles rooted in English jurisprudence. The first Indian legislation on
trademarks was enacted in 1940. Today, under the Trade Marks Act, 1999, trademarks—both
registered and unregistered—are protected, the former under infringement actions, and the
latter under the common law remedy of passing off.

Passing Off of Trademarks

Definition and Legal Nature
“Passing off” refers to a misrepresentation made by one trader to another's potential
customers, leading them to believe that the goods or services offered are associated with
another trader. It is a common law remedy, meaning that the protection is granted not
through registration but through established use and goodwill.
The principle underlying passing off is:
"A man may not sell his own goods under the pretence that they are the goods of another
man."
In ICC Development (International) Ltd. v. Arvee Enterprises, the Delhi High Court
reaffirmed that passing off depends on this basic principle of preventing misrepresentation.
Statutory Recognition
Though not defined explicitly in the Trade Marks Act, 1999, passing off is recognized and
protected under:
 Section 27(2): States that nothing in the Act affects the rights of action against any
person for passing off goods or services.
 Section 134(1)(c): Empowers courts to adjudicate disputes related to passing off.
 Section 135: Lists remedies available in passing off actions, including injunctions and
damages.

Essential Elements of Passing Off

The traditional "classical trinity" test for passing off consists of:
1. Goodwill associated with the goods/services.
2. Misrepresentation by the defendant likely to lead the public to believe that the
defendant’s goods or services are those of the plaintiff.
3. Damage caused to the plaintiff’s business or goodwill due to such misrepresentation.
However, modern interpretations have expanded the scope of passing off to include:
 Businesses and services (not just goods),
 Professions and non-trading activities,
 Get-up, logos, slogans, and distinctive packaging.
Key Judicial Interpretation: Cadila Healthcare Ltd. v. Cadila
Pharmaceuticals Ltd.
In this landmark case, the Supreme Court laid down critical factors for determining passing
off based on deceptive similarity:
1. Nature of marks – Whether word marks, label marks, or composite marks.
2. Phonetic and visual similarity.
3. Nature of goods/services for which marks are used.
4. Similarity in performance or function of the goods.
5. Class of consumers – Whether literate or illiterate, rural or urban.
6. Mode of purchasing or placing orders.
7. Surrounding circumstances – Including market trends or advertisement campaigns.
This comprehensive test ensures that the courts analyze the situation holistically while
deciding on passing off actions.

Key Issue in a Passing Off Action

The core issue is whether consumers are likely to be confused into believing that the goods
or services of the defendant are actually those of the plaintiff. Even a proposed usage (not
actual usage) can be challenged if it would likely deceive or mislead the average consumer
into assuming a false connection.

Remedies for Passing Off

The court may provide the following remedies:
 Permanent/Interim Injunction
 Damages or account of profits
 Delivery up of infringing materials
 Erasure or destruction of offending goods
Defences in a Passing Off Action
The defendant can counter a passing off claim using the following valid defences:
1. Illegality or fraud on part of the plaintiff: If the plaintiff’s trade is illegal or
deceptive.
2. Misrepresentation by the plaintiff’s mark itself: If the mark contains misleading or
deceptive claims.
3. Lack of distinctiveness: If the plaintiff’s mark does not enjoy exclusivity or public
recognition.
4. Acquiescence or delay: The plaintiff’s delay in initiating action may imply consent.
5. Prior use by the defendant: If the defendant used the mark earlier.
6. Own name defence: The use of a personal name as a mark (applies only to
individuals).
7. Dissimilarity in fields of activity: No confusion is likely if the businesses are entirely
unrelated.
8. Honest and concurrent use: Where the defendant honestly uses a similar mark for a
significant period.
9. Bona fide use: If the mark describes the quality or nature of goods/services.
10. Innocent misrepresentation: Under Section 135(3), unintentional or accidental use
may also be a defence in specific cases.

Trademark Infringement
Statutory Provisions and Nature
Unlike passing off, trademark infringement is a statutory offence under the Trade Marks
Act, 1999. It applies only to registered trademarks. According to:
 Section 27(1): No infringement action can be brought for unregistered trademarks.
 Section 28: The proprietor of a registered trademark has exclusive rights to use the
trademark and prevent others from unauthorized use.
 Section 29: Describes what constitutes infringement in various scenarios.
Infringement occurs when:
 A person uses an identical or deceptively similar mark.
 The goods or services are identical or similar to those of the registered mark.
 There is likelihood of confusion in the minds of consumers.
Concept of Likelihood of Confusion
This is the most significant element in infringement cases. Courts evaluate whether an
average consumer would be likely to confuse the infringer’s mark with the registered one.
Factors similar to those under passing off (e.g., visual/phonetic similarity, class of purchasers,
nature of goods) are applied.
Trademark Dilution
Dilution is a modern trademark concept that prohibits the use of a famous trademark in a
way that weakens its distinctiveness, even without confusion or competition. For example,
using a famous cosmetic brand name to sell unrelated products like furniture or cereal can
amount to dilution.
There are two types of dilution:
1. Blurring – Weakening of the mark's uniqueness.
2. Tarnishment – Association with inferior or unwholesome products.
What Constitutes Infringement: Section 29 Analysis
Section 29 of the Trade Marks Act, 1999 provides detailed grounds that constitute
trademark infringement, including:
 Use of identical/similar marks for identical/similar goods (Section 29(1), 29(2)).
 Use in a manner likely to cause confusion or association with the registered mark.
 Use in advertising, which takes unfair advantage of the trademark (Section 29(8)).
 Use in trade names, domain names, or packaging, implying false association.

Differences between Passing Off and Infringement

Basis Passing Off Infringement
Nature Common law remedy Statutory remedy
Trademark Status For unregistered trademarks For registered trademarks
Right Based on use and reputation Based on registration under the Act
Essence of Action Misrepresentation causing damage Unauthorized use causing confusion
Only deceptive similarity and
Proof Required Goodwill, deception, damage
confusion
Injunction, damages, account of Same as passing off, but stronger
Remedy
profits statutory backing
Plaintiff must prove reputation and Plaintiff only needs to prove
Burden of Proof
deception similarity
Relevance of
Fraud not essential, but relevant Intention irrelevant
Intention

Conclusion
Trademark law is a cornerstone of brand protection, fair competition, and consumer trust.
The distinction between passing off and infringement highlights the two-fold protection the
law offers—both under common law principles and statutory enactments.
While passing off protects unregistered marks based on use, infringement safeguards
registered marks based on legal entitlement. Indian courts have consistently emphasized that
businesses have no right to ride on another’s reputation, whether through intentional
deception or negligent similarity.
Thus, understanding both these remedies is essential for businesses to ensure their brand
identity remains uncompromised and legally protected. As Indian commerce becomes
more competitive and globalized, the relevance of robust trademark protection becomes even
more vital.

6. Infringement and Remedies of Trademark

INTRODUCTION
Trademarks play a crucial role in distinguishing goods and services of one business from
those of another. They reflect the identity, goodwill, and reputation of a business. The Trae
Marks Act, 1999 was enacted in India to consolidate and amend the law relating to
trademarks, providing a legal framework for registration, protection, and enforcement of
trademark rights. A key component of this statute is the concept of “infringement” and the
remedies available to aggrieved parties.
This answer delves into the concept of trademark infringement, the statutory provisions,
judicial interpretations, and the remedial mechanisms, as per the 1999 Act and supported
by landmark Indian case laws.
MEANING OF TRADEMARK INFRINGEMENT
Trademark infringement occurs when an unauthorized person uses a mark that is identical or
deceptively similar to a registered trademark, in a manner likely to confuse consumers or
dilute the brand value of the original trademark owner.
As per Section 29 of the Trade Marks Act, 1999, any unauthorized usage of a registered
trademark in the course of trade that causes confusion or misrepresentation amounts to
infringement.

STATUTORY PROVISIONS RELATED TO INFRINGEMENT

 Section 28 – Rights Conferred by Registration
This section lays down the rights granted to the proprietor of a registered trademark:
1. Exclusive Right to Use: The registered owner gets the exclusive right to use the
trademark for the goods or services for which it is registered.
2. Right to Sue for Infringement: The proprietor can initiate legal proceedings for
infringement when someone else uses a deceptively similar or identical mark.
3. Coexistence of Identical Marks: If two or more persons are registered with similar
or identical marks (e.g., due to honest concurrent use), then neither party can claim
exclusive rights against the other.
✅ Example: If Brand X has registered “PurePlus” for soaps, it gets the exclusive right to use
that name for soaps, and can stop others from using a confusingly similar name like
“PurePlush.”
 Section 29 – Infringement of Registered Trade Marks
This is the most critical section in relation to infringement. It provides multiple situations
under which infringement can take place:
Section 29(1): A trademark is infringed if someone uses an identical or deceptively similar
mark for identical goods/services, without authorization.
 Use must be in the course of trade.
 No need to prove actual confusion—likelihood is enough.
Section 29(2): Infringement can also happen if the goods/services are similar, not
necessarily identical, and the mark is likely to cause confusion or association.
 Even partial similarity that causes confusion amounts to infringement.
Section 29(3): If the marks and goods/services are identical, the court will presume
confusion automatically—no need for proof.
 Shifts the burden on the defendant to prove no confusion.
Section 29(4): Even if the goods/services are dissimilar, using a well-known mark without
authorization amounts to infringement if:
 It takes unfair advantage, or
 Is detrimental to the distinctive character or reputation of the mark.
Example: Using “Apple” for fashion accessories, though it's registered for electronics, may
dilute the brand.
Section 29(5): If someone uses a registered trademark as part of a trade or business name,
infringement occurs—especially if it causes confusion.
Example: Using “Nike Enterprises Pvt. Ltd.” for unrelated products could still infringe the
Nike trademark.
Section 29(6)-(7): These sub-sections Covers all possible commercial uses:
 Physical representation (on packaging, labels, invoices).
 Spoken use (radio, public announcements).
 Use in advertisements, including online ads.
Section 29(8): Use of a trademark in advertising may amount to infringement if:
 It takes unfair advantage.
 It is detrimental to the reputation of the trademark.
 It is not honest or fair.
Section 29(9): Even spoken use of a trademark (e.g., in telemarketing) can be considered
infringement if it causes confusion.

 Section 30 – Limits to Infringement

This section provides statutory defenses or exceptions to infringement:
 Bona fide use of a person’s own name or address.
 Descriptive use: Use of words to describe the nature, quality, or intended purpose of
goods/services.
 Use in comparative advertising, as long as it is honest and not misleading.
 Use of genuine parallel imports (i.e., imported products legally sold abroad).
Example: A person using the word “Sweet” in “Sweet Milk” in a descriptive sense is not
infringing a trademark on “Sweet” alone.

 Section 134 – Jurisdiction for Filing Suits

Permits This section deviates from the general rule under the Civil Procedure Code and
provides that:
 A suit for infringement or passing off can be filed in the District Court where:
o The plaintiff resides or carries on business, regardless of where the
defendant resides.
Advantage: This allows the trademark owner to sue in their own place of business, making
litigation easier.

ESSENTIAL ELEMENTS OF TRADEMARK INFRINGEMENT

To establish infringement, the following elements must be proved:
1. The plaintiff's trademark is validly registered.
2. The defendant has used a similar or identical mark without permission.
3. The usage is in the course of trade.
4. The use is in relation to similar or identical goods/services.
5. There exists a likelihood of confusion or deception among the public.

REMEDIES FOR TRADEMARK INFRINGEMENT

Under Section 135, courts may grant the following remedies:
1 Civil Remedies
These include:
(a) Permanent/Interim Injunctions
Courts can prevent further use of the infringing mark.
(b) Damages
Monetary compensation for loss suffered.
(c) Account of Profits
Profits earned by the infringer due to the infringement must be handed over to the rightful
owner.
(d) Delivery Up
Infringing goods, labels, and promotional materials may be seized and destroyed.
(e) Anton Piller Orders
To prevent the destruction of infringing material by allowing search and seizure without
notice.
(f) Mareva Injunction
Freezing of the defendant’s assets to prevent evasion of judgment.

2 Criminal Remedies
Sections 103–105 of the Trade Marks Act, 1999 provide for criminal penalties:
 Section 103: A person who:
 Falsely applies a registered trademark to goods or services, or
 Makes, disposes, or possesses any instrument for falsifying a trademark,
Shall be punished with:
 Imprisonment up to 3 years, and
 Fine not less than ₹50,000 (can extend to ₹2 lakh).
 Section 104: If any person sells or exposes for sale goods/services to which a false
trademark is applied, knowing it is false:
 Imprisonment up to 3 years, and
 Fine between ₹50,000 and ₹2 lakh.
 Section 105: If a person is convicted again for the same offense under Section 103 or
104:
 Imprisonment of not less than 1 year, extendable to 3 years.
 Fine of not less than ₹1 lakh, extendable to ₹2 lakh.

LANDMARK CASE LAWS ON TRADEMARK INFRINGEMENT

1 Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001)
 Facts: Both parties used the name "Falcigo" and "Falcitab" for anti-malarial drugs.
 Issue: Whether such similarity could cause confusion.
 Held: Supreme Court laid down factors for determining deceptive similarity:
o Nature of marks.
o Similarity in goods.
o Class of purchasers.
o Mode of purchase.
o Degree of care.
Significance: Established that public interest is paramount, especially in medicines.

2 Milmet Oftho Industries v. Allergan Inc. (2004)

 Facts: Foreign company not selling in India sued for infringement.
 Held: Indian company was restrained from using the mark even though foreign firm
wasn't present in India.
  Significance: Recognized trans-border reputation of trademarks.

3 Yahoo! Inc. v. Akash Arora & Anr. (1999)

 Facts: Defendant used “Yahoo India” domain.
 Held: Domain names can be protected trademarks. Injunction granted.
Significance: Affirmed protection of online trademarks and domain names.

4 S. Syed Mohideen v. P. Sulochana Bai (2016)

 Issue: Clash between registered trademark rights and passing off rights.
 Held: Common law rights of passing off prevail even against registered trademarks in
appropriate cases.

5 Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2017)

 Facts: Indian company used “Prius” before Toyota launched it in India.
 Held: Toyota failed to prove goodwill of Prius in India before the Indian company’s
use.
 Significance: Reinforced the territoriality principle in trademark law.

DEFENSES AGAINST INFRINGEMENT

A defendant may invoke the following defenses:
 Use is not in course of trade.
 Bona fide use of one’s own name.
 Use of generic or descriptive terms.
 Use is comparative advertisement without misrepresentation.
 Invalid registration or mark is not distinctive.
 No likelihood of confusion.

PROCEDURE TO INITIATE LEGAL ACTION

 Send a legal notice to the infringer.
 File a civil suit before District Court under Section 134.
 Seek interim injunction and damages.
 Alternatively, file criminal complaint under Section 103.

CONCLUSION
The protection of trademarks from infringement is essential for preserving business identity
and consumer trust. The Trade Marks Act, 1999, through its comprehensive provisions,
offers both civil and criminal remedies against such infringements. Indian judiciary has
played a vital role in shaping trademark jurisprudence through its proactive decisions.
However, with digital commerce growing rapidly, enforcement mechanisms must adapt to
newer forms of violations such as domain squatting and online deception.
The law ensures that the sanctity of a trademark is upheld and misuse is effectively deterred,
thereby promoting fair competition, consumer protection, and economic innovation.
7. Personality Rights
Introduction
Personality rights, often considered a subset of Intellectual Property Rights (IPR), refer to the
rights of an individual to protect his or her identity, likeness, voice, signature, expressions,
and other personal attributes from unauthorized commercial exploitation. These rights are
increasingly gaining significance in the Indian legal landscape, particularly with the rise of
celebrity culture, media outreach, and digital technology.
While India does not have a codified statute exclusively for personality rights, these are
derived from a combination of constitutional rights, tort law, and intellectual property
statutes, primarily under the umbrella of Right to Privacy and Right to Publicity.

Nature and Scope of Personality Rights

Personality rights broadly encompass two types of legal protections:
1. Right to Privacy – The right to be left alone and to control the dissemination of
personal information.
2. Right to Publicity – The right to commercially exploit one’s identity, including
name, image, likeness, and voice.
These rights are often invoked by celebrities, public figures, and occasionally, private
individuals, especially in cases of unauthorized commercial use of personal identity traits.

Legal Basis in Indian Context

1. The Constitution of India – Article 21
 Right to Life and Personal Liberty under Article 21 has been judicially interpreted
to include the Right to Privacy and, by extension, Personality Rights.
 Key case:
Justice K.S. Puttaswamy v. Union of India (2017)
The Supreme Court held that the right to privacy is a fundamental right, which
includes protection against unauthorized use of a person's identity.

2. The Trade Marks Act, 1999

While not directly mentioning "personality rights", certain provisions are used to protect
them:
 Section 14 – Prohibits registration of a trademark which falsely suggests a connection
with a living person (or recently deceased), unless consent is obtained.
This is relevant in protecting names of individuals from being registered without
consent.
 Section 29 – Deals with infringement of registered trademarks and may apply in
cases where a person’s identity is commercially misused under the guise of a brand or
product, particularly in passing off scenarios.
 Passing Off (Common Law Tort) – Although not codified under a section in the
Act, it is recognized and actionable under Indian IP jurisprudence.

3. The Copyright Act, 1957

 Section 38 & 38A – Grant performers (like actors and musicians) moral and
economic rights over their performances.
✔️These may support protection of voice, gestures, and performance-based traits
under personality rights.

Personality Rights and Intellectual Property Law

The intersection between IPR and personality rights becomes prominent when a person's
identity is used for commercial purposes. The Trade Marks Act, 1999, while not explicitly
defining personality rights, indirectly supports them through provisions that deal with
passing off and misrepresentation, particularly under Section 29 (Infringement of
trademarks).
The exploitation of celebrity status for branding, endorsements, and commercial campaigns is
an area where personality rights overlap with trademark and publicity rights.

Challenges in Enforcing Personality Rights in India

1. Absence of Codified Law – No comprehensive statute defining or protecting
personality rights.
2. Overlap with Other Rights – Confusion between privacy, publicity, trademark, and
copyright laws.
3. Posthumous Rights – Lack of clarity regarding whether personality rights persist
after death.
4. Digital Exploitation – Misuse through deepfakes, AI-generated likenesses, and social
media impersonation.

Conclusion
Personality rights form a crucial component of the modern IP landscape, especially in the era
of media proliferation and digital transformation. Although India lacks a formal statutory
framework, the judiciary has played a commendable role in evolving and protecting these
rights through creative legal interpretation and enforcement mechanisms.