Trademarks: formula sheet

Key formulas

Core test of a trademark

Trademark = mark + capable of distinguishing goods or services of one person from another

Section 9(1)(a) refuses marks devoid of distinctive character. Always link your answer to distinctiveness.

Absolute grounds, section 9(1)

Refuse if: (a) no distinctive character; (b) exclusively descriptive of kind, quality, quantity, purpose, value, geographical origin or time of production; (c) customary in language or trade

The proviso saves a mark that acquired distinctive character through use before the application date, or is well-known.

Absolute grounds, section 9(2)

Refuse if the mark: deceives or confuses the public; hurts religious susceptibilities; is scandalous or obscene; is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950

These grounds have no 'acquired distinctiveness' proviso.

Shape marks, section 9(3)

Refuse if the mark consists exclusively of a shape that: results from the nature of the goods; is necessary for a technical result; or gives substantial value to the goods

The word 'exclusively' matters. A shape with other distinctive elements is judged differently.

Relative grounds, section 11(1)

Refuse if identical or similar to an earlier mark, goods or services identical or similar, and there is likelihood of confusion (including association)

Compare marks and goods together. Section 11(1) covers identical or similar goods or services.

Well-known mark, section 11(2)

Earlier mark well-known in India + later mark for dissimilar goods + use without due cause takes unfair advantage of or harms distinctiveness or repute

This is protection across dissimilar goods.

Well-known mark conditions, section 11(9)

Registrar cannot require use in India, registration, application in India, recognition abroad, or being known to the public at large

Section 11(8): if a court or Registrar has found the mark well known in at least one relevant section of the public in India, the Registrar treats it as well known.

Absolute grounds: lack of distinctiveness (s 9(1))

Refuse if the mark is (a) devoid of distinctive character, (b) exclusively descriptive, or (c) customary in language or trade

Subject to the proviso: not refused if it acquired distinctive character through use before the application date, or is well-known.

Absolute grounds: other bars (s 9(2) and 9(3))

Refuse if deceptive or confusing, hurts religious susceptibilities, scandalous or obscene, prohibited under the 1950 Act, or consists exclusively of a barred shape

Barred shapes: from the nature of the goods, necessary for a technical result, or giving substantial value to the goods.

Relative grounds: likelihood of confusion (s 11(1))

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

Both limbs need likelihood of confusion on the part of the public.

Relative grounds: well-known mark (s 11(2))

Identical/similar mark + dissimilar goods + earlier mark well known in India + unfair advantage or detriment without due cause

Section 11(5) says refusal under 11(2) and 11(3) needs objection raised in opposition by the earlier proprietor.

Earlier mark and consent (s 11 Explanation, 11(4))

Earlier mark = a registered trade mark or an s 18 application with an earlier filing date, an international registration under s 36E, or a convention application under s 154 with an earlier application date (taking account of priorities claimed), or a mark entitled to protection as well known on the application date

If the earlier proprietor consents, the Registrar may register the mark under special circumstances under section 12.

Well-known mark conditions (s 11(9))

Registrar cannot require: use, registration or filing in India; that the mark is well known in, registered in or applied for in any jurisdiction other than India; or that it is well known to the public at large in India

Under 11(8), a mark held well known in at least one relevant section of the public in India by a court or Registrar is treated as well known.

Opposition period (Section 21(1))

Notice of opposition: within 4 months from the date of advertisement or re-advertisement

Filed in writing in the prescribed manner with the prescribed fee. Any person may oppose.

Counter-statement (Section 21(2))

Counter-statement: within 2 months from the applicant's receipt of the copy of the opposition notice

If the applicant does not file it, the application is deemed abandoned.

Security for costs (Section 21(6))

Opponent or applicant who neither resides nor carries on business in India: Registrar may require security for costs

On default, the Registrar may treat the opposition or application as abandoned.

Time to register (Section 23(1))

Registration within 18 months of filing of the application, once unopposed (time expired) or opposition decided for applicant

The Central Government may otherwise direct. The mark is registered as of the date of application.

Abandonment for applicant's default (Section 23(3))

Registration not completed within 12 months from application due to applicant's default: Registrar may, after notice, treat the application as abandoned

Applicant gets the time given in the notice to complete.

Term of registration (Section 25(1))

Initial term = 10 years

Renewable from time to time.

Renewal (Section 25(2))

Renewal period = 10 years from the expiration of the last registration

Application by the registered proprietor in the prescribed manner, within the prescribed period, with the prescribed fee.

Grace period (Section 25(3) proviso)

Late renewal: application with prescribed fee and surcharge within 6 months from expiration of last registration

The Registrar shall not remove the mark in that case and renews it for 10 years.

Restoration (Section 25(4))

Restoration window: after 6 months and within 1 year from expiration of last registration

Application in the prescribed form with fee. The Registrar must be satisfied that it is just to restore, and may impose conditions or limitations.

Registrar's powers (Section 127)

Civil court powers + power to award costs + power to review own decision

Applies to all proceedings before the Registrar. Costs orders are executable as a civil court decree.

Rights of registered proprietor

Exclusive right to use for registered goods/services + right to relief for infringement, subject to conditions and limitations on the register

Section 28(1) and (2). Valid registration is required.

Same or similar registered marks

Registration alone gives no exclusive right against the other proprietor; each has full rights against third parties

Section 28(3). Subject to conditions or limitations on the register.

Registering title

New owner by assignment or transmission must apply to the Registrar to register title

Section 45(1). Until the application is filed, the transfer is ineffective against a person acquiring a conflicting interest without knowledge (Section 45(4)).

Bar on multiple exclusive rights

No assignment or transmission if it creates exclusive rights in more than one person for same, same description or associated goods/services, with identical or nearly resembling marks, likely to deceive or cause confusion

Section 40(1). Proviso: valid if the rights cannot be exercised by two or more persons in the same market (India other than for export, same export market, services).

Statement of case

Proprietor may submit a statement of case; Registrar may certify whether the proposed assignment is valid under Section 40(1)

Section 40(2). Conclusive, subject to appeal and fraud or misrepresentation. For a favourable certificate, title application must be made within six months of the certificate.

Territorial split bar

No assignment or transmission creating exclusive rights in different parts of India for the same or similar goods/services under identical or nearly resembling marks

Section 41. Registrar may approve if not contrary to public interest; title application within six months of approval.

Registered user

Joint application by proprietor and proposed user, with written agreement and affidavit

Sections 48 and 49. Affidavit covers relationship, degree of control, goods or services, conditions and duration.

Registered user limits

No assignable or transmissible right; permitted use is deemed use by the proprietor

Sections 54 and 48(2).

Suing by registered user

Registered user may sue in own name, joining proprietor as defendant, subject to agreement

Section 52. Proprietor not liable for costs unless he appears and takes part.

Infringement vs passing off

Infringement = registered mark + Section 29 use; Passing off = goodwill + misrepresentation + damage

Section 27(1) bars infringement action on unregistered marks; Section 27(2) preserves passing off.

Section 29(1)

Identical or deceptively similar mark + goods/services for which registered + use as a trademark

Used by a person who is not the registered proprietor or permitted user, in the course of trade.

Section 29(2) and (3)

Likelihood of confusion or association; presumed if mark and goods/services both identical

The presumption in 29(3) applies only to clause (c) of 29(2).

Section 29(4)

Identical/similar mark + dissimilar goods + reputation in India + unfair advantage or detriment without due cause

All conditions must be met. This protects well-known marks.

Jurisdiction, Section 134

Suit before a District Court or higher; plaintiff may sue where he resides, carries on business or personally works for gain

The plaintiff-location rule in 134(2) applies to infringement suits, not to passing off under 134(1)(c).

Reliefs, Section 135(1)

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

Delivery-up may be ordered with or without the other reliefs.

Interlocutory orders, Section 135(2)

Ex parte injunction; discovery of documents; preserving infringing goods or evidence; restraining disposal of assets

Asset restraint protects the plaintiff's ability to recover damages and costs.

No damages, Section 135(3)

Only nominal damages if: certification or collective mark; or innocent infringer who ceased forthwith

Innocence requires both lack of awareness at the start and prompt cessation on becoming aware.

Penalty under section 103

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

Court may go below the minimum only for adequate and special reasons recorded in the judgment. The accused is not liable if he proves he acted without intent to defraud.

Falsifying a mark (s. 102(1))

Make the mark or a deceptively similar mark without assent, or alter, add to or efface a genuine mark

Burden of proving the proprietor's assent lies on the accused (s. 102(4)).

Falsely applying a mark (s. 102(2))

Apply the mark or a deceptively similar mark to goods, services or a package without assent; or reuse a marked package for other goods

Includes packing non-genuine goods in the proprietor's package.

Appeal to High Court (s. 91)

Within 3 months from the date the order is communicated

Delay can be condoned on sufficient cause. The appeal is in prescribed form, verified, with a copy of the order and fees.

Invalidity plea in prosecution (s. 113)

Prima facie tenable plea: adjourn 3 months to file a rectification application in the High Court

If the application is filed, the prosecution is stayed until it is disposed of. If not filed, the court proceeds as if the registration were valid.

Appeal against adjudicating officer (s. 112B)

To the appellate authority within 60 days of receipt; disposal within 60 days of filing

Non-compliance within 90 days attracts a fine of ₹1,00,000 or imprisonment up to one year, or both, in addition to the penalty.

Section 26 deemed-register rule

A mark removed for non-renewal is deemed on the register for 1 year after removal

Applies to applications for another mark, unless there was no bona fide use in the 2 years before removal or no confusion is likely.

Scope of Chapter

Section 36A: Chapter applies to international applications and international registrations under the Madrid Protocol

Inserted by Act 40 of 2010, in force from 8 July 2013.

Originating application

Section 36D(1): applicant of a section 18 application, or registered proprietor under section 23, may file an international application

The home mark can be pending or registered. Form is as per the Common Regulations.

Extension by holder

Section 36D(2): holder of an international registration may apply to extend protection to any other Contracting Party

This is a subsequent designation. Section 36D(3) requires the Contracting Parties to be designated.

Registrar's role

Section 36D(4): certify particulars, then forward to the International Bureau within the prescribed period

The Registrar certifies and forwards the application to the International Bureau for registration (section 36D(4)).

Dependency period

Section 36D(5): basic mark withdrawn, cancelled, expired or finally refused within 5 years of international registration → international protection ceases, wholly or to that extent

Applies even if the registration was transferred to another person.

Pending proceedings proviso

If appeal, withdrawal action or opposition began within 5 years, a later final decision is deemed to have occurred within the 5 years

Closes the gap where litigation runs past year five.

Registrar's reporting duty

Section 36D(6) and (7): report relevant events during the 5 years and notify cancellation to the International Bureau

Cancellation is notified keeping in view the current status of the basic mark.

Well-known mark bar

Section 11(2): identical or similar mark, for non-similar goods, refused if the earlier mark is well-known in India and use would take unfair advantage of, or harm, its distinctive character or repute

Under section 11(5) this ground is raised only in opposition by the earlier proprietor.

Quick revision

• Section 27(1): no proceeding for infringement of an unregistered trade mark.
• Section 27(2): rights of action for passing off are not affected.
• Section 28(1): a valid registration gives the registered proprietor the exclusive right to use the mark for the registered goods or services and to obtain relief for infringement.
• Section 28(3): where two registered marks are identical or nearly resemble each other, registration alone does not give one proprietor exclusive rights against the other.
• Section 11(1): refusal where identity or similarity with an earlier mark and similar goods or services creates a likelihood of confusion, including association.
• Section 11(2): protects a well-known mark in India against later marks on dissimilar goods if use takes unfair advantage or harms its distinctive character or repute.
• Section 11(5): a trade mark shall not be refused registration on the grounds in sub-sections (2) and (3) unless objection is raised in opposition proceedings by the proprietor of the earlier trade mark.
• Section 11(9): the Registrar cannot require, as a condition for well-known status, use, registration or application in India, nor that the mark is well known, registered or applied for in any other jurisdiction, nor that it is well known to the public at large in India.
• Section 134(1): no suit for infringement, relating to a right in a registered mark, or for passing off may be instituted in a court inferior to a District Court.
• Section 134(2): the District Court having jurisdiction includes the court where the plaintiff resides, carries on business or personally works for gain. This applies only to suits for infringement of, or relating to rights in, a registered trade mark (clauses (a) and (b)), not to passing off under clause (c).
• Section 135: reliefs include an injunction, damages or an account of profits at the plaintiff's option, and delivery-up.
• Section 135(2): the injunction may include ex parte orders for discovery, preservation of evidence and restraint on dealing with assets.
• Madrid system: an international application is based on a basic application or basic registration, and Chapter IVA applies under section 36A.

Common mistakes

• Treating a trademark as only a name or logo. Fix: Include shape of goods, packaging and combinations of colours. Say that the test is distinctiveness and graphical representation.
• Confusing a certification mark with a collective mark. Fix: Collective mark: used by members of an association to show membership. Certification mark: shows goods or services meet a defined standard, and the certifier is not the one trading in them.
• Saying a descriptive mark can never be registered. Fix: Always check for use before the application date that gave distinctive character, or well-known status.
• Applying the acquired distinctiveness proviso to every absolute ground. Fix: The proviso saves marks under 9(1)(a) to (c). Deceptive, obscene, religiously offensive and barred-shape marks under 9(2) and 9(3) are not saved by it.
• Counting the four-month opposition period from the date of filing or acceptance. Fix: Remember that the period runs from the date of advertisement or re-advertisement of the application.
• Saying only a person with a competing mark can oppose. Fix: Section 21(1) says any person may oppose within the time limit, by written notice with the prescribed fee.
• Treating a licensee as an owner who can assign the mark. Fix: Quote Section 54: a registered user has no assignable or transmissible right to use the mark.
• Saying any assignment of a mark for a limited territory is void. Fix: Add that the Registrar may approve if use would not be contrary to public interest, and title must be applied for within six months of approval.
• Saying an unregistered mark owner can sue for infringement. Fix: Quote Section 27(1) and 27(2). Unregistered means passing off only.
• Applying the presumption of confusion to every Section 29 case. Fix: The presumption applies only where mark and goods or services are both identical, under 29(2)(c).

Exam tips

• Open every answer with the statutory idea of a mark that distinguishes goods or services. Examiners look for it.
• In case questions, label the ground as absolute (section 9) or relative (section 11) before applying it.
• When a question lists types of marks, define each in one line and note what separates it from its nearest neighbour, such as collective versus certification.
• Write the proviso to section 9(1) whenever you discuss a descriptive or non-distinctive mark. It often decides the conclusion.
• Close with a clear conclusion on registrability. Use international instruments such as TRIPS and the Paris Convention only as short background lines.
• Write the section number first, then apply it to the facts, then conclude. This matches the provision, analysis, conclusion pattern.
• Keep a clear split: section 9 is absolute, section 11 is relative. Use these labels as sub-headings in your answer.
• In any descriptive-mark question, mention the proviso to section 9(1) and section 32 for post-registration distinctiveness.