Law relating to Trade Marks: formula sheet

Key formulas

Trade mark

Section 2(1)(zb): mark + capable of being represented graphically + capable of distinguishing goods or services of one person from those of others

May include shape of goods, packaging and combination of colours. Includes certification trade mark and collective mark.

Mark

Section 2(1)(m): device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, combination of colours, or any combination

The definition uses the word includes, so it is wide.

Certification trade mark

Section 2(1)(e): distinguishes goods or services certified by the proprietor as to origin, material, mode of manufacture, performance, quality, accuracy or other characteristics

Registered under Chapter IX in the name of the certifying person as proprietor.

Collective mark

Section 2(1)(g): distinguishes goods or services of members of an association of persons (not a partnership under the Indian Partnership Act, 1932) that is the proprietor

The owner is the association; members use it.

Well known trade mark

Section 2(1)(zg): known to the substantial segment of the public using such goods or receiving such services, so use on other goods or services would indicate a connection with the first user

The test is public recognition and likely connection.

Deceptively similar

Section 2(1)(h): so nearly resembles another mark as to be likely to deceive or cause confusion

The test is likelihood, not actual deception.

Registered trade mark and registered proprietor

Section 2(1)(w): a trade mark actually on the register and remaining in force. Section 2(1)(v): person for the time being entered in the register as proprietor

A pending application is not a registered trade mark.

Assignment and transmission

Assignment (Section 2(1)(b)) = assignment in writing by act of the parties. Transmission (Section 2(1)(zc)) = by operation of law, devolution on a personal representative of a deceased person, and any other mode of transfer not being assignment

Assignment needs writing; transmission is not by act of parties.

Contents of the Register (Section 6(1))

Register = registered marks + proprietors' names, addresses, descriptions + assignments and transmissions + registered users + conditions, limitations and other prescribed matter

Kept at the head office of the Registry, under the control and management of the Registrar.

No notice of trust (Section 6(4))

No notice of any trust (express, implied or constructive) is entered in the register or received by the Registrar

Do not say trusts can be noted on the register.

Place of filing (Section 18(3))

Office covering applicant's principal place of business in India; joint applicants: the first-named applicant having a place of business in India; no business in India: office covering address for service in India

Territorial limits are defined by the Central Government under Section 5(3).

Multi-class application (Section 18(2))

One application for many classes; fee for each class

One application, but a fee per class.

Absolute grounds (Section 9(1))

Refuse if the mark is devoid of distinctive character, or consists exclusively of descriptive indications, or of customary terms

Proviso: not refused if it acquired distinctive character through use before the application date, or is a well-known trade mark.

Other absolute bars (Section 9(2) and 9(3))

Deceive or confuse the public; hurt religious susceptibilities; scandalous or obscene matter; use barred by Emblems and Names Act, 1950. Shapes: from nature of goods, needed for a technical result, or giving substantial value

Shape bars apply when the mark consists exclusively of such a shape.

Relative grounds (Section 11(1))

Identical mark + similar goods/services, or similar mark + identical/similar goods/services, with likelihood of confusion including association

Subject to Section 12.

Well-known marks (Section 11(2))

Identical or similar mark for dissimilar goods is refused if the earlier mark is well known in India and use without due cause takes unfair advantage of, or harms, its distinctive character or repute

Under Section 11(5), the grounds in 11(2) and 11(3) apply only if the earlier proprietor objects in opposition proceedings.

Refusal procedure (Section 18(4) and (5))

Registrar may refuse, accept absolutely, or accept with amendments, conditions or limitations; grounds and materials must be recorded in writing

Written reasons are mandatory for refusal or conditional acceptance.

Rights conferred by registration

Valid registration = exclusive right to use + right to sue for infringement

Section 28(1). Subject to conditions and limitations on the register (Section 28(2)).

Term of registration

Initial period = 10 years; each renewal = 10 years from expiry of last registration

Section 25(1) and (2). Renewal is on application by the registered proprietor with the prescribed fee.

Grace period for renewal

Renewal allowed within 6 months after expiry on fee + surcharge; Registrar shall not remove the mark

Proviso to Section 25(3).

Restoration window

After 6 months and within 1 year from expiry: restore and renew for 10 years, if satisfied it is just

Section 25(4). Applies where the mark was removed for non-payment of the prescribed fee. The Registrar may impose conditions or limitations.

Removed mark still blocks others

For 1 year after removal, deemed to be on the register for new applications

Section 26. Exceptions: no bona fide use in the 2 years before removal, or no likelihood of deception or confusion.

International registration

10 years, renewable for 10 years; 6 months grace on surcharge

Section 36G.

Validity in infringement suits

Validity decided only on rectification application to the High Court

Section 125(1). Suit stayed if rectification is pending (Section 124(1)(i)). If none is pending and the plea is prima facie tenable, an issue is raised and the case adjourned for three months (Section 124(1)(ii)).

Section 38: general rule

Registered trade mark = assignable and transmissible, with or without goodwill, for all or some of the goods or services

Subject to the other provisions of the Chapter.

Section 39: unregistered mark

Unregistered trade mark = assignable or transmissible with or without goodwill

Same freedom as for a registered mark.

Section 40: no multiple exclusive rights

Assignment invalid if it leaves exclusive rights in more than one person in identical or nearly resembling marks for same, same description or associated goods or services, and use is likely to deceive or cause confusion

Not invalid if the rights cannot be exercised by two or more persons in the same market, as in the proviso. The proprietor may seek a Registrar's certificate by statement of case.

Section 41: territorial split

No assignment that creates exclusive rights in different places in India for the same or resembling marks for the same or similar goods or services

Registrar may approve if satisfied it is not contrary to public interest. Apply for registration under Section 45 within six months of approval.

Section 42: assignment without goodwill

Assignee applies to Registrar for advertisement directions within 6 months (extendable by up to 3 months in aggregate) and advertises as directed, otherwise the assignment does not take effect

Applies to registered and unregistered marks. Exceptions: partial assignment with goodwill of those goods or services only, and export-business goodwill only.

Section 43: certification mark

Certification trade mark: assignable or transmissible only with the Registrar's consent

Application in writing in the prescribed manner.

Section 44: associated marks

Associated trade marks: assigned or transmitted only as a whole, not separately

For other purposes they are treated as separate marks.

Section 45: registration of title

Person entitled applies to Registrar; Registrar registers him as proprietor and enters particulars on the register

Until application is filed, the assignment is ineffective against a person who acquires a conflicting interest without knowledge of it (Section 45(4)).

Sections 49 and 54: registered user

Registered user = joint application by proprietor and user with written agreement and affidavit; no assignable or transmissible right

Explanation I to Section 54 protects an individual user who joins a partnership and a firm whose constitution changes, with limits on continued use.

Basic infringement (s. 29(1))

Not owner or permitted user + use in course of trade + identical or deceptively similar mark + goods or services for which mark is registered + use as a trade mark

All elements must be present. The mark must be used in a way likely to be taken as a trade mark.

Likelihood of confusion (s. 29(2))

Identical mark + similar goods, OR similar mark + identical or similar goods, OR identical mark + identical goods → likely confusion or association

In the identical mark and identical goods case, s. 29(3) makes the court presume confusion.

Dissimilar goods (s. 29(4))

Identical or similar mark + dissimilar goods + mark has reputation in India + use without due cause takes unfair advantage of, or harms, distinctive character or repute

Reputation in India is the key extra condition.

Trade name use (s. 29(5))

Using the registered mark as trade name or business name for goods or services in respect of which it is registered = infringement

Applies even where the mark is only part of the name.

Exceptions (s. 30)

Honest practices use to identify proprietor's goods; descriptive use; limitations on registration; consent use; accessory goods; use of one of two registered similar marks; exhaustion

Section 30(3) exhaustion does not apply if the proprietor has legitimate reasons, such as goods changed or impaired (s. 30(4)).

Reliefs (s. 135(1))

Injunction + (damages OR account of profits, at plaintiff's option) + delivery-up of infringing labels and marks for destruction or erasure

Ex parte injunction, discovery, preservation of evidence and asset-freezing orders are available under s. 135(2).

Court (s. 134)

Not lower than a District Court having jurisdiction

Plaintiff may sue where he resides, carries on business or personally works for gain (s. 134(2)).

Punishment under Sections 103 and 104

Imprisonment: 6 months to 3 years; Fine: ₹50,000 to ₹2,00,000

Court may impose less only for adequate and special reasons stated in the judgment.

False trade mark (Section 102)

Falsified mark or falsely applied mark = false trade mark

Both require absence of the proprietor's assent; the accused must prove assent.

Section 103 defence

Acted without intent to defraud

The accused must prove it.

Section 104 defences

(a) reasonable precautions and no reason to suspect; or (b) gave all information on supplier on demand; or (c) otherwise acted innocently

Any one, proved by the seller, is enough.

Section 140(1) notice

Proprietor or licensee of registered mark → written notice to Collector of Customs → prohibit import

Applies where import infringes under Section 29(6)(c).

Section 140(2)-(3) information

Commissioner may require documents and names and addresses of consignor and consignee; compliance within 14 days; penalty ₹10,000 for failure

Penalty is levied by the authority under the Customs Act, 1962; the 14-day period and penalty come from the 2023 amendment effective 1-8-2024.

Section 140(4)

Commissioner may pass the information to the registered proprietor or registered user

Allows the owner to act against the supplier.

Section 116

Port of shipment (goods brought by sea) = prima facie evidence of place or country of production

Applies in prosecutions under the Act and certain Customs Act proceedings.

Amendment in s. 71(3)

"tribunal" replaced by "Registrar or the High Court, as the case may be" (Act 33 of 2021, w.e.f. 4-4-2021)

This is only a substitution of words in section 71(3). It is not an appeal provision, so do not use it to name the appeal forum.

Collective mark (s. 61)

Mark of an association of persons; distinguishes goods or services of its members from others

The rest of the Act applies subject to this Chapter.

Certification mark application (s. 71)

Application to Registrar + draft regulations; ss. 18, 19, 22 apply with "acceptance" read as "authorisation to proceed"

Applicant is the person proposed to be registered as proprietor.

Regulations of certification mark (s. 74)

File regulations at Registry; alteration by Registrar on proprietor's application; opposition heard if notice given

Regulations are open to inspection as the register is, under section 148.

Rights in certification mark (s. 78)

Valid registration = exclusive right to use, subject to ss. 34, 35, 76 and registration conditions

Rights are subject to conditions and limitations of the registration.

India designated: refusal time (s. 36E(2))

Refusal must be communicated to the International Bureau within 18 months of receiving the advice

Registrar may hear the applicant if he so desires. This 18-month limit is for refusal.

Deemed extension of protection (ss. 36E(3), 36E(5))

Registration advertised (36E(3)) + no opposition + opposition time expired + no notice of acceptance to the International Bureau within 18 months of receipt of advice → protection deemed extended

All four conditions must be met. The 18 months run from receipt of the advice. Deemed extension is not refusal.

Five-year dependency: Indian base (s. 36D(5))

Indian application (s. 18) or registration (s. 23) withdrawn, cancelled, expired or finally refused within 5 years of the international registration → international protection ceases to that extent

Proviso, found only in 36D(5): if an appeal, withdrawal action or opposition began within the five years, a later final decision is deemed to have occurred within the five years.

Five-year dependency: foreign base (s. 36E(8))

Basic application or registration in a Contracting Party other than India withdrawn, cancelled, expired or finally refused within 5 years → protection in India ceases to have effect

Applies to all or some of the goods or services. Section 36E(8) has no pending appeal or opposition proviso.

Quick revision

• Registration of a trade mark lasts ten years and can be renewed for ten years at a time (section 25).
• If renewal is missed, the Registrar must not remove the mark if the form, fee and surcharge come within six months of expiry.
• A mark removed for non-payment can be restored after six months and within one year from expiry, if the Registrar is satisfied it is just.
• No infringement action lies for an unregistered trade mark, but passing off remains available (section 27).
• Suits for infringement or passing off go to a court not inferior to a District Court (section 134).
• For infringement suits, the plaintiff can sue where he actually and voluntarily resides, carries on business or personally works for gain.
• Reliefs under section 135 include injunction, damages or account of profits, and delivery-up of infringing labels and marks.
• Courts can grant ex parte or interlocutory orders for discovery, preserving evidence and restraining dealing with assets.
• Damages other than nominal are barred for certification or collective marks and for innocent defendants who stop at once.
• An assignment is barred where it would create exclusive rights in more than one person over confusingly similar marks (section 40).
• Until a person applies to register title under section 45, the assignment is ineffective against one who acquires a conflicting interest without knowledge of it.
• Under section 140(3), an importer must comply with a customs information requirement within fourteen days or face a penalty of ten thousand rupees.

Common mistakes

• Treating mark and trade mark as the same thing Fix: Mark is the wide category in Section 2(1)(m). A trade mark in Section 2(1)(zb) is a mark that can be represented graphically and distinguishes goods or services.
• Saying a collective mark is owned by a partnership firm Fix: The proprietor is an association of persons, and Section 2(1)(g) excludes a partnership within the meaning of the Indian Partnership Act, 1932.
• Saying the Register records trusts or beneficial interests. Fix: Remember Section 6(4): no notice of any trust, express, implied or constructive, is entered or received.
• Mixing up absolute and relative grounds. Fix: Absolute grounds (Section 9) concern the mark's own nature. Relative grounds (Section 11) concern conflict with earlier marks or rights.
• Saying registration lasts seven years or is permanent. Fix: Remember ten years for a trade mark, renewable for ten years each time, with the section: Section 25.
• Counting the renewal period from the date of the renewal application. Fix: Renewal runs for ten years from the expiry of the last registration, even if the application is filed in the grace period.
• Saying a trade mark can be assigned only with goodwill. Fix: Section 38 allows assignment with or without goodwill. Without goodwill, Section 42 adds the advertisement condition.
• Saying a non-goodwill assignment is void. Fix: It takes effect only if the assignee applies to the Registrar within six months (extendable by up to three months in aggregate) and advertises as directed.
• Suing for infringement of an unregistered mark. Fix: Remember section 27(1) bars infringement actions on unregistered marks. Only passing off is available, as saved by section 27(2).
• Ignoring the presumption of confusion. Fix: Under section 29(3), where mark and goods or services are identical (s. 29(2)(c)), the court presumes likely confusion.

Exam tips

• Always quote the section and clause number for definitions you are sure of, such as 2(1)(zb), 2(1)(e), 2(1)(g), 2(1)(zg).
• For distinction questions, use a two-column layout in prose or bullets: proprietor, purpose, user, example.
• In problem questions, state the provision, apply each element to the facts, then conclude clearly.
• Memorise the words graphically, distinguishing, substantial segment and likely to deceive or cause confusion.
• Cover related definitions briefly in short notes: deceptively similar, permitted use, registered user, assignment, transmission.
• Write Section 6 answers in three parts: where the Register is kept, what it contains, and Section 6(4) on trusts. Add electronic form under Section 6(2) and (3).
• For a problem question, state the ground (absolute or relative), cite the section, apply the facts, then conclude.
• Always mention the Section 9(1) proviso and the Section 11(4) consent exception. These show full understanding.