The primary source of law governing trademarks in India is the Trade Marks Act, 1999. This statute and the Trade Marks Rules, 2017 form the basis of the regulatory regime in India.
In addition to the statute, official guidelines issued by the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), such as the Trade Marks Manual, govern several aspects of trademark law.
Besides these, other sources of trademark rights in India include:
A person may acquire rights in a trademark either by its use in the course of trade in relation to certain goods or service or by registration under the Trade Marks Act, 1999. The rights in a trademark may also be acquired by assignment or by inheritance. Judicial precedent in India has recognised the right of a prior user of a trademark as a superior right, which also prevails over the registered owner of a similar or identical trademark. If two or more similar or identical trademarks have been filed on the basis of future use (also referred to as 'proposed to be used'), the trademark with the earlier application date is given priority.
The statutory source of the trademark registration scheme in India is the Trade Marks Act, 1999 along with the Trade Marks Rules, 2017. Statutory protection of trademarks is administered by the CGPDTM, a government agency which reports to the Department of Industrial Policy and Promotion, under the Ministry of Commerce and Industry.
According to Section 2(1) (zb) of the Trade Marks Act, 1999, a 'Trademark' means a mark which is capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods or their packaging and combinations of colours.
The types of trademarks that may be registered in India include the following:
The legal requirements to register a trademark under the Trade Marks Act, 1999 are as follows:
Anyone that claims rights in a trademark, as long as the trademark is pending registration, can use the symbol TM after the trademark (wherever applicable). Once the trademark is registered, the person may use the symbol ® after the trademark. The use of the TM and the ® symbol in connection with a trademark aims to inform potential infringers that the particular word/combination/logo is being claimed as a trademark.
Sections 9 and 11 of the Trade Marks Act, 1999, provide a comprehensive list of grounds or identifiers to consider a mark ineligible to function as a trademark.
Any trademark which is devoid of distinctive character or which consists exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, place of origin or time of production of the goods, or that have become customary in the current language or in the bona fide and established practices of the trade, may be considered ineligible to function as a trademark.
Additionally, a mark that is likely to offend the religious susceptibilities of any class or section of the citizens, or that which consists or comprises scandalous or obscene matter or is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950, is ineligible to function as a trademark.
The chances of procuring a trademark registration are considered low if a mark exclusively contains the shape of goods resulting from the nature of goods, if it is a shape necessary to obtain a technical result, or if it gives substantial value to the goods.
Furthermore, if the mark is identical with or similar to earlier marks in respect of an identical or similar description of goods or services and, because of such identity or similarity, a likelihood of confusion on the part of the public may be caused, then such a mark may also be considered ineligible to function as a trademark.
Statutory protection of trademark rights in India is administered by the Office of the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion, under the Ministry of Commerce and Industry.
Rules 10 and 11 of the Trade Marks Rules, 2017 govern the fees and forms for the purpose of trademark application, prosecution and registration in India. The relevant forms are to be accompanied by the prescribed fees and the requisite documents, as mentioned in the Trade Marks Act, 1999 and under the First Schedule of the Trade Marks Rules, 2017. The official fees are currently as follows:
| Particulars | Physical filing (INR) | E-filing (INR) |
| To file a new application on behalf of a company, trust or partnership | 10,000 | 9,000 |
| To file a new application on behalf of an individual or start-up or small enterprise | 5,000 | 4,500 |
| To file a renewal application for each class | 10,000 | 9,000 |
| To include a trademark in the list of well-known trademarks | Not allowed | 1,00,000 |
As stated under the Trade Marks Act, 1999, the Registrar of trade marks shall classify the goods and services in accordance with the Nice Classification.
The registration of an application with class headings, as provided in the Nice Classification, is prohibited. Although a 'class-wide' specification of goods may be applied for, it is advisable that an applicant limit the specifications of the goods and services that are of specific interest to its business, to avoid any objections on the broad nature of the specifications.
The Applicant must have a bona fide intention to use the trademark. A trademark may be filed on a 'proposed to be used' basis. However, once the trademark proceeds to registration, the trademark is liable to be cancelled on the grounds of non-use should the same not be put to use in due course. A third party may file for a cancellation action on the grounds that a trademark has not been used in India for a continuous period of five years up to the date three months immediately preceding filing of the cancellation application. (For instance, a trademark is registered on 1 January 2018 on a proposed to be used basis but is not used until 31 December 2023. By March 2024, the trademark is liable to be cancelled on the grounds of non-use by a third party.)
Once a trademark reaches the examination stage, objections may be raised on two grounds: absolute and relative. Under Section 11 of the Trade Marks Act, 1999, a trademark application is examined on relative grounds involving searches for earlier conflicting marks. A trademark may be refused registration on relative grounds if it is:
Besides relative grounds, a trademark application may be refused on absolute grounds for refusal under section 9 of the Act, as follows:
Apart from absolute and relative grounds for refusal, including confusion with an earlier trademark, descriptiveness or genericness, a trademark may not be registered under Section 9(2) of the Trade Marks Act, 1999 in the following circumstances:
Judicial precedent has held that a descriptive word that lacks inherent distinctiveness may be refused registration under the Trade Marks Act, 1999.
However, considering that a descriptive trademark proceeds to registration on the basis of acquired distinctiveness, there is no separate or supplemental register for descriptive marks. According to Section 6 of the Trade Marks Act, 1999, only a single record - the Trademarks Register - is to be kept at the head office of the Trade Marks Registry, containing details of all registered trademarks, including:
The Trade Marks Act, 1999 provides that a third party may object to the registration of a trademark once the trademark has been advertised in the Trademarks Journal.
Trademarks may be filed and registered on the basis of intent to use (ie, 'proposed to be used' basis). Therefore, a trademark need not be used commercially prior to registration. However, registered trademarks may be cancelled by third parties if they have not been put to commercial use in India for a continuous period of five years up to the date three months immediately preceding filing of the cancellation application.
The first office action in a trademark application is usually issued in the first two months from the date of filing of the application.
It takes approximately four to six months for a trademark application to proceed from filing to publication, if no serious objections are raised. The time may vary if a 'show cause' hearing is scheduled for an application after the examination stage and prior to the publication stage.
The refusal of the registration may be challenged in the form of a review before the Trademarks Office itself. Alternatively, the Applicant may file an appeal against the refusal before the relevant High Court within its jurisdiction.
Under Section 91 of the Trade Marks Act, 1999, any person aggrieved by an order or decision of the Registrar of trademarks may file an appeal with the appropriate High Court within three months of receipt of the decision.
An appeal to the High Court shall be made in the prescribed form, verified in the prescribed manner, and accompanied by a copy of the order or decision appealed against, along with the required fees as prescribed. An appeal may be admitted after the expiry of the specified period if the appellant satisfies the High Court that there was sufficient cause for not filing the appeal within the specified period.
The Trade Marks Act, 1999 prescribes that any third party can oppose the registration of a trademark, as long as it has sufficient cause to believe that the existence of the trademark application would lead to confusion or deception among the relevant trade public.
Section 21 of the Trade Marks Act, 1999 states that any third party may oppose the registration of a trademark in the prescribed manner and on payment of the prescribed fee as laid down under law. The third party need not necessarily be the registered owner of a trademark; it can be a purchaser, customer or a member of the public likely to use the goods. As long as the third party has sufficient cause to believe that the existence of the trademark in question would lead to confusion among the relevant trade public, it may proceed to oppose the trademark.
A third party may oppose a trademark application via a notice of opposition, which must be filed within four months from the date of publication of the trademark in the Trademarks Journal. This period is not extendable under any circumstance.
An opposition hearing board, comprised of hearing officers, is constituted by the Office of the Controller General of Patents, Designs and Trade Marks. A hearing officer conducts the opposition hearings at the respective office of the Trademarks Registry.
The trademark opposition procedure involves the following steps:
The decision of the Registrar in the opposition proceedings can be challenged by filing a review petition before the Trademarks Office itself or by filing an appeal before the appropriate High Court.
The Trade Marks Act, 1999 provides common law benefits to unregistered trademarks.
Even though Section 27 of the Trade Marks Act, 1999 provides no action for infringement of unregistered trademarks, it can still be protected by means of the common law tort of 'passing off'. Section 27(2) of the Trade Marks Act, 1999 provides a remedy for the unauthorised use of an unregistered trademark. Passing off is a common law tort which is most commonly used to protect goodwill and reputation that is attached to unregistered trademarks. Passing off is based on the principle that a person may not pass off its goods or services as those of another person. In order for a passing off action to succeed, the owner of an unregistered trademark must be able to establish that its unregistered trademark has accrued goodwill or reputation in connection with the products, services or business with which it is used. The owner should also be able to establish that there is deceptive similarity between its unregistered trademark and the trademark in question, which is bound to lead to confusion among the general public.
A registered trademark confers a bundle of exclusive rights upon the registered owner under Section 28 of the Trade Marks Act, 1999. The owner of a registered trademark can prevent unauthorised use of the trademark in relation to the products or services for which it is registered.
Section 31 allows registration to be treated as prima facie evidence of validity. Section 28 also confers certain benefits on registration, including the following:
Various precedents have held that a descriptive word which lacks inherent distinctiveness may be refused registration under the Trade Marks Act, 1999.
In order to trademark a descriptive mark, the owner of the trademark must show that the mark has acquired a 'secondary meaning' in the marketplace. Accordingly, considering that a descriptive mark proceeds to registration based on acquired distinctiveness, there is no separate register for descriptive marks. According to Section 6 of the Trade Marks Act, 1999, only a single record – the Trademarks Register – shall be kept at the head office of the Trade Marks Registry, in which the details of all registered trademarks are recorded, including:
Trademark infringement is a violation of the exclusive rights attached to a registered trademark without the authorisation of the trademark owner or any licensees. Infringement may occur when one party, the infringer, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to those which the registration covers. The owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark.
Sections 29 and 30 of the Trade Marks Act, 1999 deal with the infringement action as a remedy against unlawful and unauthorised use of a registered trademark.
The following remedies are available against trademark infringement:
As per Section 29(4) of the Trade Marks Act, 1999, trademark infringement in the form of dilution will occur only when a person uses a trademark that:
The doctrine of dilution gives further powers to the owner of a well-known trademark. Section 29(4) offers a remedy independent of the infringement action, allowing the owner of a well-known registered trademark to claim for civil, criminal and administrative remedies. The doctrine of dilution works at the discretion of the courts and according to the tests set by the courts. For instance, the court will consider the overall structure and the visual, phonetic and conceptual similarity of the marks, the nature of the community, the class of purchasers, the mode of purchase and other relevant circumstances. If the court finds a risk of dilution, the mark will not be allowed on the market, so as to avoid confusion.
Besides infringement and dilution, courts in India also recognise passing off as a remedy under common law. Passing off is a tort actionable under common law and is mainly used to protect the goodwill attached to unregistered trademarks. Section 27 of the Trade Marks Act, 1999 provides that no infringement action will lie in respect of an unregistered trademark, but recognises the common law rights of a trademark owner to take action against any person for passing off/misrepresenting its goods or services as those of another person, causing actual loss and damage to the business or goodwill of the trademark owner.
Violation of the exclusive rights granted to a registered owner under the Trade Marks Act, 1999 to use its trademark in relation to the goods or services for which the mark is registered constitutes trademark infringement.
The procedure for trademark infringement follows the same stages as any other civil commercial litigation, which broadly includes the following:
The following defences are available to a defendant in trademark litigation:
Any party which is aggrieved by the decision of the court can challenge that decision before a higher appellate court. The determination of the appellate court will depend upon the subject matter and the monetary value of the case. Appeals are heard as follows:
A trademark is a right in perpetuity, subject to renewal from time to time and to 'use', to avoid cancellation for non-use. The length of the initial term of registration is 10 years, with renewals valid for subsequent 10-year periods. A registered trademark in India can be renewed an unlimited number of times, on payment of the renewal fees, failing which the trademark becomes liable to removal from the Trademarks Register.
In order to renew a registration, an application for renewal must be filed in the prescribed form along with the requisite fee. The procedure for filing an application for renewal of a trademark is as follows:
A registered trademark is open to cancellation on the application of an aggrieved party if it was wrongly registered or if it wrongly remains on the Trademarks Register. The aggrieved party must show that the trademark was registered in contravention of, or has failed to observe a condition of, the Trade Marks Act, 1999. A cancellation application can be filed on the following grounds:
The Registrar of trademarks will not cancel a registration on his own initiative. However, the Registrar may, subject to Rule 60 of the Trade Marks Rules, 2017, proceed to remove a trademark from the Trademarks Register for failure to file a renewal request within the prescribed timeframe.
Section 57 of the Trade Marks Act, 1999 states that any aggrieved party may file a cancellation petition before the Registrar of Trademarks or before the relevant High Court. After giving notice and the opportunity to be heard to both parties, the Registrar or the High Court may cancel, vary, make or remove the trademark. The application must be filed in the prescribed manner and should be accompanied by a statement of case, in triplicate, setting out the nature of the applicant's interest, the facts upon which the case is based, and the relief sought.
A decision of the Registrar of trademarks may be requested for review before the Trademarks Office. Alternatively, an appeal may be filed before the appropriate High Court.
In order to avoid ambiguity, a licence agreement must be well drafted so as to provide details of the exact rights being granted to, and the restrictions being imposed on, the licensee.
A trademark licensing agreement has certain integral parts, including:
It is not compulsory for a licence to be recorded at the Trademarks Registry. However, it is advisable to do so as, registration of the licence affords statutory rights of action to the licensee in cases of infringement.
The licensor must exercise proper quality control over the use of the licensed trademark as per the contract. However, under Section 50(1)(d) of the Trade Marks Act, 1999, if the licensor fails to do so, the Registrar – either on his own initiative or upon application by any party – may cancel the registration of the licence. Therefore, the Registrar has the authority to cancel the registration of a licence if the licensor has not exercised quality control as required.
Additionally, Section 50 of the Trade Marks Act, 1999, outlines other grounds for variation or cancellation of the registration of a licence, including:
Based on these factors, the proprietary rights of the trademark remain vested in the licensor, even if the registration of the licence is cancelled. However, the Registrar will provide notice to each party and an opportunity to be heard before taking any adverse action.
As trademarks rights are jurisdictional in nature, Indian trademark law offers protection to trademarks used or registered in India. However, Indian courts have taken into consideration factors such as transborder reputation and goodwill in protecting a trademark that is used or registered in foreign countries.
Indian courts have consistently objected to the unlawful gain or profit from the reputation built by third parties around the world. Further, Indian courts have also objected to passing off, which is a tort actionable under common law and is mainly used to protect the goodwill attached to unregistered trademarks, including foreign trademarks.
India is a signatory to the Madrid Protocol, which is a system administered by the World Intellectual Property Organization that allows an applicant to obtain a bundle of single jurisdiction trademark registrations based on an international registration.
In addition to the Madrid Protocol, a trademark applicant may file an application under the Paris Convention. The Paris Convention provides rights to member countries for the purpose of grant and protection of industrial property in a given member country. Through a convention trademark application, a party can seek to register a trademark claiming priority from a convention member country. If the trademark is registered, it shall be registered as of the date on which the application was made in the convention country.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
