INTELLECTUAL PROPERTY RIGHTS

PROJECT
ON

‘Registration of Trademarks’

Submitted to:
Ishan Ahmed Sir
Assistant Professor
Faculty of Law
Jamia Hamdard

Prepared by:
Aamir Khan
Enrollment No.2021-342-002
B.A. LL.B
 TABLE OF CONTENTS

1. Acknowledgment................................................................................................................. 3

2. Registration of Trademark.................................................................................................... 4

3. Registrability of the mark as Trademark..............................................................................9

4. Identity or Similarity of Marks............................................................................................22

5. Deceptively Similar............................................................................................................. 24

6. Passing Off.......................................................................................................................... 24

7. Infringement under the Act................................................................................................26

8. Well-known Trademark.................................................................................................... 28

9. Bibliography..................................................................................................................... 19
 ACKNOWLEDGEMENT

The success and final outcome of this project required a lot of guidance and assistance
from many people and I am extremely fortunate to have got that all along the
completion of my project work. Whatever I have done is only due to such guidance
and assistance and I would not forget to thank them.

I owe my profound gratitude to our Intellectual Property Rights teacher Ishan Ahmed
Sir, who took keen interest in my project work, guided me all along, till the
completion of my project by providing all necessary information for the project report.

I am thankful and fortunate enough to get constant encouragement, support and

guidance from all teaching staff of Faculty of Law, Jamia Hamdard which helped me
in successfully completing my project work. Also, I would like to extend my sincere
regards to all the non-teaching staff of Faculty of Law, Jamia Hamdard

I would also not forget to remember my friends for their unlisted encouragement and
more over for their timely support and guidance till the completion of my project
work.

Aamir Khan
2021-342-002
 REGISTRATION OF TRADEMARK

PROCEDURE FOR REGISTRATION

1. Application for Registration

Section 18 of the Trade Marks Act 1999 says that any person, claiming to be the
proprietor of a trademark used or proposed to be used by him, who is desirous of
registering it shall apply in writing to the registrar in the prescribed manner for the
registration of the mark.

Essential Ingredients for registration:

(i) Any person

Any person includes individual, partnership firm, association of persons, a company

whether incorporated or not, a trust, Central or State Government. It does not allow
the representative of the proprietor to apply in his own name.

(ii) Claiming to be proprietor

A person may obtain proprietorship in a trademark either by use or by registration

under this Act. He may also acquire proprietorship by assignment or by inheritance. In
case of unregistered mark but in use, proprietorship will be the person who first used it
in case of two rival claims whereas in case of proposed use of mark, which comes up
for registration, the designer or the originator will be the proprietor in case of any
controversy. Between two rival claims of user of the mark and designer of the mark
the former will be preferred. At this stage of making application, the proprietor has to
show his bona-fide claim. If the mark is not mistaken on the face of application and
also there is not objection to the claim, the registrar is entitled to accept the
application.

In case of manufacturer having a trademark abroad has made goods and imported
them into this country with foreign mark on them, the foreign mark may acquire
distinctive character and in such circumstances, the same or colourably similar mark
cannot be registered not because it is registered abroad but because it lacks
distinctiveness.

(iii) Used or proposed to be used

The law permits registration of a mark, which has been or is being used or is proposed
to be used. In case of proposer of the mark, he must have definite and present
intention to use the mark as on the date of the application. Definite and present
intention is different from the general intention to use the mark sometime in future to
something, which he may think desirable later on. Definite and present intention
means a real intention to use the mark for resolved and settled purpose. In case of used
mark, the use in itself is not sufficient but is to be accompanied with real intention
continue with the use.

The ‘proposed use’ of the trademark must be normal and fair, which, however, may
include variations in presentation or colour difference but such variation should not
stretched to far so that the used form will be totally different from the one sought to be
registered. If proprietor does not have the real and present intention to use the mark,
and try to register is for some mala-fide intention, such as to block the mark, it would
amount to registration in bad faith, which is a serious form of commercial fraud.

The application for registration of the mark must be filed with the Registrar in the
prescribed manner who has been conferred the discretion either to accept or reject or
accept with amendments, modifications, conditions or limitations.2 The Registrar must
communicate his decision in writing with the applicant and is under obligation to give
the reasons in cases of rejection or acceptance on conditions or with modification.3

2. Withdrawal of Acceptance

In case the Registrar decides to accept the mark for registration, but before actual
registration, the Registrar may withdraw his acceptance under certain circumstances
under section 19 of the Trade Marks Act 1999. For example, if the Registrar is
satisfied that the application is being accepted in error or that circumstances are such
2
Section 18 (4)
3
Section 18 (5)
that such registration should not be granted, he has been empowered to withdraw the
acceptance of application.

This power can be exercised subject to certain conditions. Registrar has to issue a
notice, specifying the objections, which has led him to think that the application has
been accepted in error or why the mark should not be registered, to the applicant and
give him an opportunity of being heard by requiring him to show cause why
acceptance should not be withdrawn.4

3. Advertisement of Application

Once the Registrar for registration has accepted the application, he shall get the
application advertised in the prescribed manner after acceptance. However, the
application shall be advertised before acceptance if the application is related to a
trademark to which section 9(1) and 11(1)(2) apply or in any other case as it seems
expedient to the Registrar.5 The purpose of advertisement is give information to the
public at large in respect of the trademark advertised and afford an opportunity to
oppose the registration of the mark on given grounds. So the advertisement must be
complete in all respects and otherwise the very purpose of advertisement will be
frustrated.6 If there is incomplete or incorrect information in the advertisement, it
would amount to misrepresentation, which deprives a prospective opponent of the
opportunity to get full information and of filing an effective opposition.7

4. Opposition to Registration

Section 21 of The Trade Marks Act 1999 allows any person to oppose an application
for registration. “Any person” need not be only a prior registered trademark owner. 8
Even a customer, purchaser or a member of the public likely to use the goods may
object to the registration of a trademark in respect of such goods on the ground of
possible deception or confusion. The period within which opposition to the

4
Tikam Chand and Another v Dy. Registrar of Trade Marks, 1998 PTC 542 (Del)
5
Section 20
6
Virendra Sethi v Kundan Das, 20002 (25) PTC 50 (Del)
7
Ashoka Dresses v Bonn’s Shirts & Another, (2000) RPC 507
8
P. N. Mayor v Registrar of Trademarks, AIR 1960 Cal 80
application for registration can be filed is three month from the date of advertisement,
which can be extended by Registrar not exceeding one month on application made to
him and on payment of the prescribed fee. So the period cannot exceed four months in
Toto.

The grounds of opposition should be based upon the specific provisions of law. The
grounds based on section 9, 11, 12, 13, 18, 24, 33, 35, 36(2) etc. would be suitable to
challenge the application of registration. However, the grounds based on section 11(2)
and (3) are available only to the proprietor of earlier trademark.

On receiving the notice of opposition, the Registrar is under obligation to send a copy
of the same to the applicant for registration. Upon receiving such notice, the applicant
is given two months time, from the date of receipt of the notice, to file counter
statement together with the prescribed fees to the registrar. This copy of counter
statement shall be sent to the person who has filed opposition under section 21 (3).
The applicant and the opponent are given the opportunity to adduce evidence in
support of their claims and may also be given an opportunity to be heard if they so
desire under Section 21 (4).9 However the onus is on the opponent to allege and prove
the existence of facts, which may lead the tribunal to assess the existence of likelihood
of confusion in the minds of the public, which includes likelihood of association with
the earlier mark. But this does not relieve the applicant of his onus to satisfy the
Registrar or the court that there is no reasonable probability of confusion, in respect of
all goods coming within the specification applied for and not only in respect of the
goods on which he is proposing to use it immediately.

5. Registration

Subject to Section 19 the Registrar is under obligation to register the Trade Mark
under section 23 if he decides in favour of applicant after listening to the opposition.
However, Central Government may direct otherwise on certain grounds. The mark can
also be registered jointly for two or more persons under section 24 if two or more
persons agree to work jointly. In such cases, the registrar shall require a copy of joint

9
Hemla Embroidery v Hindustan Embroidery, FAO No. 21 of 1968
venture agreement to satisfy himself because none of them is entitled to use the mark
independently. The section in its earlier part specifically precludes the Registrar from
registration of two or more persons who use the trademark independently or propose
to use it independently. The registration shall be made as of the date of the application
and the applicant shall be issued a certificate of registration. However the registrar is
empowered U/S 23 (4) to amend the register or certificate of registration for the
purpose of correcting a clerical error or an obvious mistake. The applicant must
complete all formalities within one-year time period or within such time as may be
given in the notice. If defaulted, the application may be treated as abandoned after the
registrar gives notice in this regard to the applicant.

Section 25 provides that Registration shall be for a period of ten years but may be
renewed from time to time in accordance with the provisions of this act. Renewal can
be made before the expiration of the registration. In case of default in renewal before
expiration, the act provides for the grace period of six months from the date of
expiration for renewal on payment of prescribed fee. However, before expiration of
the last registration of a trademark, the Registrar shall send notice in the prescribed
manner to the registered proprietor of the date of expiration and conditions as to the
renewal. If the proprietor does not file for renewal, the name of the mark will be
removed from the register. However, the Registrar is entitled to restore the mark in
register if it is just to do so after six month but before one year from the expiration of
the last registration, on the receipt of application and on payment of the fee by the
proprietor. Such restoration shall be for another ten years to period.
REGISTRABILITY OF THE MARK AS TRADEMARK:

Any mark, which is not hit by the definition and section 9, qualifies for registration.
However, a mark qualified under section 9 has to meet the positive objections under
section 11 to be finally registered. Section 11 is the qualification of section 9. Mark
having crossed the threshold under section 9 is capable of getting the protection of the
Trademark Act subject to section 11. It deals with prohibition on registration but does
not hit the inherent capability of mark as to its registrability. The marks prohibited
under section 11 may not be desirable based upon public policy considerations.

Under The Trademark Act, 1999, trademark is defined as to mean, inter alia, a mark,
which can be represented graphically and is capable of distinguishing the goods or
services of one person from those of others.

In a way, the definition itself prescribes two features to be present in any mark to be a
trademark:

 Capability of being represented graphically;

 Capability to distinguish the goods or services of one person from those of
others.

Absolute Grounds for Refusal of Registration under Section 9

Whereas Section 9 of The Act lays down the ground for on the basis of which, the
registration of the mark can be denied absolutely. One of the grounds is ‘if the mark is
devoid of distinctive character’.10 The phrase ‘distinctive character’ implies the
‘incapability of the mark to distinguish’ the goods or services of one person from that
of the others. It also implies that the mark in itself should be distinctive in certain
cases. For example, common word of dictionary or the name of the place can not be
registered unless it is shown that the common word or the name has become
distinctive of his goods or services in the mind of the purchasing public, but if he
succeeds, then he will be entitled to protect his mark by registration.

10
Section 9(1)(a)
Another ground11 for refusal to register the mark is that the mark should not indicate
the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of services or other characteristics of the goods
or services. In addition to these, a mark stands disqualified from registration if
represents the shape of goods results from the nature of the goods themselves or shape
of the goods necessary to obtain a technical result or shape which gives substantial
value to the goods.12

Yet another ground13 is that the mark must not be consisted of the marks or
indications, which have become customary in current language or in the bona fide and
established practices of the trade it is not desirable to monopolize such marks.

These are the grounds, which are specific to the mark that means, if the mark is
affected by any of these characteristics, it cannot be registered. But this is not the end.
The mark not affected by any such disqualification, has to pass what can be called as
the effect test. That means, the mark should not deceive the public or cause confusion
or hurt the religious susceptibilities of any class or section of the citizens or be
scandalous or obscene.14 The section 9 lays down the pre-requisites of qualification
for the protection of trademark law.

long enough, may become distinctive of the goods of the proprietor of the mark. The
court in this case, observed that ‘capable of distinguishing’ might perhaps refer to the
future, in the sense that a word may be able to distinguish although at the moment of
time at which the application is made it may not have become fully effective to
distinguish. However, the Court of Appeal observed that the general considerations,
which have to be taken into account in construing the expression ‘capable of
distinguishing’, are the same as in construing ‘adapted to distinguish’

11
Section 9(1)(b)
12
Section 9(3)
13
Section 9(1)(c)
14
Section 9(2)
15
(1970) 3 SCC 665
16
(1927) 44 RPC 412; (1927) 2 Ch 34
In determining the capability to distinguish, the authority must take into consideration
both inherent capability and factual capability to distinguish. Inherent capability may
mean that irrespective of the peculiarities of the trade or the practice of other traders,
the mark is shown to possess the capability of distinguishing the goods to which it is
applied. For example, a mark having direct reference to the character or quality of the
goods is considered as inherently not capable of distinguishing. However Indian
Trademark Registry takes the view that if the reference to the character or quality is
only indirect or suggestive, the mark can be considered. The ‘factual capability to
distinguish’ depends upon the facts and circumstances of each case. In each particular
case, it become a subject of inquiry whether the mark by virtue of its being use or any
other circumstances, it is in fact is capable of distinguishing the goods. The Supreme
Court in National Bell case observed that in determining the distinctiveness, regard
must be had whether it is inherently distinctive or is inherently capable of
distinguishing and by reason of its use or any other circumstances; it is in fact adapted
to distinguish or is capable to distinguishing the goods.

Indicating Nature or Characteristics under Section 9(1)(b)

Section 9(1)(b) lays down the other ground of disqualification of the mark for
registration. It says that the mark consists exclusively of marks or indications, which
may serve in trade to designate the kind, quality, quantity, intended purpose, values,
geographical origin or the time of production of the goods or rendering of services or
other characteristics of the goods or services. In addition to these, a mark stands
Marks common to trade Section 9(1)(c)

Section 9(1)(c) prohibits the registration of marks that consists exclusively of marks of
indications which have become customary in current language or in bona fide and
established practices of the trade. This is to protect the free use of indications or
marks, which are already in use in the trade, from being monopolized as a trademark.
Moreover such marks lack distinctive character. Words or indications common to
trade are open to everybody for use. E.g. generic names notified by the WHO as non-
proprietary names, are open to the trade to use.

Proviso to Section 9(1)

The proviso to Section 9(1) provides that any mark or name, which though is not
distinct, nevertheless may be registrable if it is shown that it has by virtue of use
acquired a distinctive character. That means, as a result of use, the mark has become
distinctive of the goods or services of the proprietor. In an well-know case in
Registrar of Trade Marks v Hamdard National Foundation (India) 21 the Delhi High
Court gave approval of the registration of the mark ‘SAFI’ by holding that words
having direct relation to the character and quality of the goods, sometimes lose their
primary meaning and acquire secondary or good specific meaning of a particular
manufacturer. If it happens then such marks may be registered as trademark.

In English case, Cycling IS…TM Applications 22 the Court laid down the test to
determine the distinctiveness on the basis of use by holding that

“Right view to take of a particular sign may well depend upon the use (if any) that has
been made of it and more generally upon the usage of persons involved in the relevant
field(s) of commercial activity.”

21
AIR 1980 Del 180 (DB)
22
(2002) RPC. 37, 729
Marks deceiving the public or cause confusion: Section 9 (2)(a)

Section 9 (2) (a) seeks to prevent the registration of marks, which are of such nature as
likely to deceive the public or cause confusion.

Generally deception or confusion might arise by reason of similarity between the

proposed mark and another existing mark or might result from the nature of the mark
itself or nature of the use of the mark. For example, Deception in the nature of the
Mark may be in the form of misrepresentation as to the characteristics of the goods or
services or to the effect that they were made in a specified geographical region or
place, when in fact not so made. Deceptive use may involve where mark contains false
or misleading information. E.g. use of word Regd. when the mark is actually not
registered.

Section 9(2)(a) is intended to apply where the deception or confusion arises from the
nature of the mark itself and not to the questions based upon the similarity of the mark
with other existing mark which is a ground of refusal under section 11 which deals
with relative grounds of refusal for registration. Hence, a mark not deceptive or
confusing may qualify for registration even if the mark has resemblance or identity
with other mark but is distinct.

Section 9 (2) (b) forbids registration if the mark contains or comprises of any matter
likely to hurt the religious susceptibilities of any class or section of the citizens of
India. But this does not forbid the use of name or pictures of God or Goddess or
religious heads as trademarks that are not offending. Examples of offending use may
be use of Hindu Gods in respect of beef or meat or Muslim Saints for port products
etc. however, the perception and the practice is that usually symbols relating to
religion, gods or goddesses, place of worship should not be registered even if it is not
hurting but because these are part common heritage and should not allow any
monoplization.

Section 9 (2) (c) prohibits the registration of mark if it is scandalous or obscene.

Whether the mark is scandalous or obscene or not depends upon the current religious,
social and family values.
In addition to all these ground for refusal of registration of a mark under section 9(3)
on the ground of shape will not be entertained for registration. The shape of the goods
resulting from its nature23 or giving substantial value to goods or shape of goods
necessary to obtain technical results would disqualify the mark for registration.
Whereas the definition of the mark itself provides that mark includes shape of goods
or packaging. However generally the shapes would not be allowed registration unless
it is shown that the shape is distinctive of the goods or services.

Relative Grounds for Refusal of Registration under Section 11

While Section 9 provides for absolute grounds for refusal of an application for
registration of trademark, section 11 provides for relative grounds for refusal to
register any trademark. Subsection (1) of section 11 provides that a mark shall be
refused registration if it is identical with an earlier trademark covering similar goods
or services as are covered by earlier trademark. Also refusal can come if the mark is
similar to the earlier trademark covering identical goods or services as are covered by
the earlier mark. The register is under obligation to refuse the registration on the
ground of ‘likelihood of confusion’ on the part of the public. Earlier trademark need
not necessarily be registered. If the trademark is having earlier priority date or is
entitled to protection by virtue of being well-known trademark, it would sufficiently
be an earlier mark for the purposes of this section.

So the Registrar before refusing the register a mark that has come up for registration
has to function at three levels. One, he must find out the identity or similarity of mark.
Two he must look for identity or similarity of goods or services to which the mark is
going to be applied. And three, he must check out whether there is any likelihood of
confusion on the part of the public.

23
Philips Electronics v Remington, [1999] RPC 809
Identity or Similarity of Marks

Test for determining Identity or similarity of Marks

For determining the identity or similarity, the rules of comparison are developed over
the years and which J. Parkar aptly explains in Pianotist Company Ltd.’s Application24
case.

According to him one must judge the two marks both by the look and by the sound;
consider the goods to which the mark is to going to be applied; consider the nature and
kind of customers who are likely to buy the goods; consider as to what would happen
if both the marks are used in the normal way as a trademark for goods of the
respective owners of the mark. After considering all these circumstances, if one comes
to the conclusion that there will be confusion, registration must be refused.

While comparing, one must not take a part of the word rather consider the whole and
compare it. Supreme Court25 while recognizing it further observed that the approach
to comparison should be from the point of view of a man of average intelligence and
of imperfect recollection. Whether to such a man, the overall structure and phonetic
similarity or similarity of the idea in the two marks is reasonably likely to cause a
confusion between them, is the test.

Search Procedure

To determine the identity or similarity with the earlier mark, the Registrar needs to go
through the search procedure before registration. Search is confined to a particular
class in which registration is applied for. However, search should be carried on
amongst the marks not only for identical goods but also for similar goods.

[Schedule IV to the Trade Marks Rules provides for classification of the goods and
services in 45 classes – goods being classified in classes 1 to 34 and services included
in classes 35 to 45. For international classification of goods and services published by
WIPO, one can visit www.wipo.org earlier trademark is one that is already registered

24
(1906) 23 R.P.C. 774
25
Corn Products v Shangrila Food Products Ltd., AIR 1960 SC 142
or subject of a convention application of an earlier priority date or is one which is
entitled to protection as a well known trade mark.

Identity or similarity of goods or services

To determine the identity or similarity, the Registrar needs to go through the search
process before registration. Search is to be done in the specific classes of goods and
services in which the proposed mark falls is going to fall. However, search would
include not only amongst the identical goods but cover similar goods.

For this purpose, it is advisable that applicant should be precise in stating the
specification of goods or services for which the mark is sought to be registered.
However, the specification, if indefinite, may be a bar to the registration. If the
applicant gives unnecessarily wide specification, there are greater chances that he may
found a prior registration in same or similar mark in that class which may result in an
objection to his registration. Moreover, even registrar may object to wide specification
of goods under rule 25(15) of Trademarks Rules.

One thing is to be made clear here that classification of goods and services is not the
criterion for determining whether two sets of goods or services are of the same
description. Indeed, goods comprised in same class may include goods of a different
description and different description of goods may fall in the same class. [Schedule IV
to the Trade Marks Rules provides for classification of the goods and services in 45
classes. For international classification of goods and services published by WIPO, one
can visit www.wipo.org

Likelihood of confusion [Section 11(1)]

Section 11(1) of the Trade Marks Act 1999 says that if because of the identity or
similarity of marks or goods or services, there exists a likelihood of confusion on the
part of the public, which includes the likelihood of association with the earlier
trademark, the mark shall not be registered save as otherwise provided in section 12.
Laying down the test in Amritdhara Pharmacy case 26 the Supreme Court observed:
“for deceptive resemblance two important questions are: (1) who are the persons
whom the resemblance must be likely to deceive or confuse, an (2) what rules of
comparison are to be adopted in judging whether such resemblance exists. As to
confusion, it is perhaps an appropriate description of the state of mind of a customer
who, on seeing a mark thinks that it differs from the mark on goods, which he has
previously bought, but is doubtful whether that impression is not due to imperfect
recollection… the question has to be approached from the point of view of a man of
average intelligence and imperfect recollection.”

The risk of likelihood of confusion is considered as the most in cases where both the
mark and goods and services are identical of the existing mark and lesser where either
of them is identical. Whereas in the instance of similarity of mark and good or
services risk is considered lesser than in case of identical marks. The provision in
section 11(1) is mandatory on the Registrar and therefore when this section hits an
application, the Registrar is bound to refuse registration. The issue under this section
can be raised by the Registrar, prior to acceptance of the application, and by any
person after the mark is advertised. In the absence of any attack on the registration of
the earlier trademark, it is to be assumed that there has been notional use of the earlier
trademark. The reason for this is that unless one assumes notional use of the earlier
trademark, the question whether later on the trademark, proposed to be registered, will
be give rise to a likelihood of confusion on the part of the public will become difficult
to answer. At the same time, ordinary practical business probabilities having regard to
circumstances of the case should be considered rather than constructing imaginary and
unlikely cases.

In Dalip chand case27 an application to register Escorts for electric iron, etc was
opposed by Escorts Ltd. The Assistant Registrar dismissed the objections on the
ground that applicant had established prior use and honest concurrent use. On appeal,
Delhi High Court set aside the orders of the AR and held in this particular case that it

26
Amritdhara Pharmacy v Satyadeo Gupta, AIR 1963 SC 449
27
Dalip Chand Aggarwal v Escorts Ltd., AIR 1981 Del 150
should be considered whether the mark has come to be known and associated with the
name of the opponent, not necessarily with the particular goods of the same
description but generally with its goods. In this case, it could be shown that the mark
escorts has been quite extensively used in the market by the respondent with the result
that any goods which may be marketed under this mark will be associated with the
name of the respondent, so that people buying may feel that it is product of the
respondent. This is sufficient justification for refusing the application of a similar
trademark.
 BIBLIOGRAPHY

 P. Narayanan, Intellectual Property Law, 8th Edition, 2009

 W.R. Cornish, Intellectual Property: Patents, Copyright, Trademarks and
Allied Rights, 4th Edn, 2004
 S. Venkateswaran, The Law of Trade Marks and Passing-Off, 21st Edition,
2012
 B.L. Wadhera, Law Relating to Patents, Trade Marks, Copyright, Designs &
Geographical Indications, 11th Edition, 2012