Unit 3: Registration of trademarks

1. Pre-requisites for Registration

For a mark to be registrable under the Trade Marks Act, 1999, it must first qualify as a "trademark". The fundamental requirements are derived from the definition provided in the Act.

A. Definition of a Trademark (Section 2(1)(zb))

A "trade mark" 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 the shape of goods, their packaging and combination of colours.

This definition breaks down into three core pre-requisites:

1. It must be a "mark".

   • Section 2(1)(m) provides an inclusive definition of a "mark", which includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
   • This list is not exhaustive. Unconventional marks like sound marks (e.g., the Yahoo yodel) or smell marks can also be registered, provided they meet the other criteria.

2. It must be capable of graphical representation.

   • The mark must be capable of being put on the Register in a physical, tangible form. It must be representable on paper.
   • Purpose: This requirement ensures clarity, precision, and accessibility. It defines the exact scope of the protection being granted and allows third parties to easily search the register to see what is protected.
   • Examples:
     • Words/Letters/Numerals: Easily represented.
     • Logos/Devices: Represented by submitting a drawing.
     • Colour Marks: A specific colour combination can be represented by a sample of the colours and a description.
     • Sound Marks: Represented by musical notation (stave).
     • Shape of Goods: Represented by drawings (e.g., isometric views).

3. It must be capable of distinguishing goods/services (Distinctiveness).

   • This is the most crucial function of a trademark. The mark must either be inherently distinctive or have acquired distinctiveness through use.
   • Inherent Distinctiveness: The mark is unique and has no direct reference to the character or quality of the goods/services. Fanciful, arbitrary, or suggestive marks fall in this category.
     • Fanciful Marks: Coined words with no dictionary meaning (e.g., KODAK, XEROX).
     • Arbitrary Marks: Real words used in a way that is unrelated to the goods (e.g., APPLE for computers).
     • Suggestive Marks: Marks that suggest a quality without directly describing it (e.g., AIRBUS for aircraft, NETFLIX for streaming).
   • Acquired Distinctiveness (Secondary Meaning): A mark that is not inherently distinctive (e.g., a descriptive mark) can become registrable if, through extensive use, advertising, and promotion, the public has come to associate that mark exclusively with the applicant's goods or services. This is a key exception provided in the proviso to Section 9(1).

2. Absolute Grounds for Refusal of Registration (Section 9)

These are grounds based on the inherent qualities of the mark itself. If a mark falls under any of these categories, it is barred from registration, irrespective of whether it conflicts with any earlier mark.

A. Section 9(1): Lack of Distinctiveness

• Section 9(1)(a): Marks devoid of any distinctive character.

  • These are marks that are not capable of performing the primary trademark function of distinguishing goods/services.
  • Laudatory epithets like "BEST," "PERFECT," or "SUPER" fall into this category as they are common words used to praise and are not seen as indicators of origin.
  • Example: A registration for the word "GOOD" for soap would be refused.

• Section 9(1)(b): Descriptive Marks.

  • These are marks which consist exclusively of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or rendering of services.
  • The rationale is to prevent a single trader from monopolizing words that other traders may need to use to describe their own products.
  • Case Law: M/s. Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks: The court held that the mark "RASOI" for cooking oil was descriptive of its intended purpose (for the kitchen) and refused registration.

• Section 9(1)(c): Generic Marks / Customary Marks.

  • These are marks that consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.
  • The mark has become the common name for the product itself.
  • Example: "Aspirin" and "Cellophane" were once trademarks but became generic terms for the products and lost their protection in many jurisdictions.

Proviso to Section 9(1): The Acquired Distinctiveness Exception
A mark shall not be refused registration under Section 9(1) if, before the date of application for registration, it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

• This is the concept of "secondary meaning." The applicant must prove with substantial evidence (e.g., sales figures, advertising expenditure, consumer surveys, affidavits) that the public associates the otherwise descriptive/non-distinctive mark exclusively with their business.
• Case Law: Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks: The court discussed that a common English word could acquire distinctiveness through long and extensive use.

B. Section 9(2): Public Interest and Morality Grounds

• Section 9(2)(a): Deceptive or Confusing Marks.

  • The mark is of such a nature as to deceive the public or cause confusion.
  • This could relate to the nature, quality, or origin of the goods. For example, using the word "ORGNIC" in a stylized way for a non-organic product.
  • This is a key section where the concept of deceptive similarity is applied in an absolute sense.

• Section 9(2)(b): Marks that hurt religious susceptibilities.

  • The mark contains or comprises matter likely to hurt the religious feelings of any class or section of the citizens of India.
  • Example: Using the name or image of a deity for unrelated commercial products like footwear or alcohol.

• Section 9(2)(c): Scandalous or Obscene Marks.

  • The mark comprises or contains scandalous or obscene matter. What is considered scandalous or obscene is judged by the prevailing standards of public decency and morality.

• Section 9(2)(d): Prohibited Marks.

  • The mark's use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. This act prohibits the use of certain official emblems, names, and symbols (e.g., the Indian National Flag, Ashoka Chakra, name of the United Nations).

C. Section 9(3): Functional Shapes

Registration of shapes as trademarks is restricted to prevent the monopolization of functional features.

• Section 9(3)(a): Shape resulting from the nature of the goods.

  • Basic, inherent shapes cannot be registered (e.g., the shape of a standard egg for selling eggs).

• Section 9(3)(b): Shape necessary for a technical result.

  • If the shape is dictated by its function, it should be protected by a patent, not a trademark. Trademarks have a potentially perpetual life (through renewals), while patents are for a limited term.
  • Example: The specific three-headed shape of a Philips shaver was held to be functional and not registrable as a trademark.

• Section 9(3)(c): Shape which gives substantial value to the goods.

  • This applies to shapes that are primarily aesthetic and are the reason customers buy the product. Such designs are better protected by the Designs Act, 2000.
  • Example: The unique shape of a designer vase, where the aesthetic appeal is the main selling point.

3. Relative Grounds for Refusal of Registration (Section 11)

These grounds are "relative" because they depend on the existence of prior rights belonging to a third party. The mark is refused not because of an inherent flaw, but because it conflicts with an earlier trademark.

A. Section 11(1): Conflict with an Earlier Trademark

• A mark shall not be registered if, because of:

  • (a) its identity with an earlier trade mark and similarity of goods or services covered by the trademark; or
  • (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trademark,
  • there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

• Key Elements:

  1. Earlier Trade Mark: A registered mark or an application with an earlier filing date.
  2. Identity/Similarity of Marks: Assessed visually, phonetically, and conceptually.
  3. Identity/Similarity of Goods/Services: Assessed based on their nature, purpose, users, and channels of trade.
  4. Likelihood of Confusion: The ultimate test. Would an average consumer with imperfect recollection be confused into thinking the goods/services of the later mark come from the same source as the earlier one?

B. Section 11(2): Protection for Well-Known Trademarks

• A trademark which is identical or similar to an earlier trade mark which is a "well-known trade mark" in India shall not be registered, even if the goods or services are not similar to those for which the earlier trademark is registered.
• Conditions:
  1. The later mark is to be used in relation to different goods/services.
  2. The earlier mark is well-known in India.
  3. The use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the well-known trademark.
• Example: Using the mark "ROLEX" for selling soap would be prohibited under this section, as it would take unfair advantage of the reputation of the famous watch brand.

C. Section 11(3): Prior Rights in Passing Off and Copyright

• A trademark shall not be registered if its use in India is liable to be prevented:
  • (a) by virtue of any law of passing off protecting an unregistered trade mark used in the course of trade; or
  • (b) by virtue of law of copyright.
• This provision protects the rights of users of unregistered trademarks who have built up goodwill and reputation in the market. Even if a mark is not registered, its proprietor can prevent others from using a similar mark if it amounts to passing off.

D. Exception: Honest Concurrent Use (Section 12)

The Registrar may permit the registration of a mark by more than one proprietor in the case of honest concurrent use or other special circumstances.

• Factors considered for honest concurrent use:
  • The honesty of the use by the applicant.
  • The quantum of concurrent use in terms of duration, area, and volume of trade.
  • The degree of confusion likely to ensue.
  • Whether any instance of confusion has in fact occurred.
  • The relative inconvenience which would be caused to the parties.

4. Concept of Deceptive Similarity and its Applicability

Deceptive similarity is a cornerstone concept in trademark law. It is the standard used to determine if one mark is confusingly similar to another. It is relevant to both absolute grounds (Sec 9(2)(a)) and relative grounds (Sec 11(1)).

• Definition (Section 2(1)(h)): A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

A. Key Principles and Tests for Determining Deceptive Similarity

1. Imperfect Recollection: The comparison is made from the perspective of a person of average intelligence and imperfect recollection. The consumer is not expected to have both marks side-by-side.
2. Overall Impression: The marks must be compared as a whole. It is not correct to dissect the marks and compare their individual components (Anti-dissection rule). However, identifying the dominant part of a composite mark is permissible.
   • Case Law: M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc.: The Supreme Court clarified that while the anti-dissection rule is the norm, focusing on the dominant feature of a mark for comparison is also a valid approach.
3. Nature of the Mark: The type of mark (word, device, label) influences the comparison.
   • Phonetic Similarity: Is often the most crucial test for word marks, as many goods are ordered verbally.
   • Visual Similarity: Applies to logos, devices, and label designs.
   • Conceptual Similarity: The ideas conveyed by the marks are compared.
4. Nature of Goods and Class of Purchasers: The likelihood of confusion is higher for inexpensive, everyday items purchased with less care (e.g., FMCG products). For specialised or expensive goods, the consumer is expected to be more discerning. For pharmaceutical products, the standard is stricter due to public health risks.

B. Landmark Judicial Tests

• The Pianotist Test (In re Pianotist Co.'s Application)

  "You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks."

• The Wonder Test (Amritdhara Pharmacy v. Satya Deo Gupta)

  • Facts: The marks in question were "Amritdhara" and "Lakshmandhara."
  • Held: The Supreme Court held them to be deceptively similar. It laid down the test from the viewpoint of an "unwary purchaser of average intelligence and imperfect recollection." The overall structural and phonetic similarity was found to be the decisive factor.

• The Cadila Test (Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.)

  • Facts: The marks were "FALCITAB" and "FALCIGO," both for treating the same type of malaria.
  • Held: This is a landmark Supreme Court judgment, especially for pharmaceutical trademarks. It laid down a comprehensive set of factors to be considered when deciding deceptive similarity:
    1. The nature of the marks (word, label, composite).
    2. The degree of resemblances between the marks, phonetically, visually as well as in idea.
    3. The nature of the goods.
    4. The similarity in the nature, character, and performance of the goods.
    5. The class of purchasers who are likely to buy the goods, considering their education, intelligence, and degree of care.
    6. The mode of purchasing the goods or placing the order.
    7. Any other surrounding circumstances.
  • The court emphasized that in the case of medicinal products, a stricter approach is necessary as confusion can have disastrous consequences on public health.

5. Procedure for Registration (Sections 18-25)

The registration of a trademark in India follows a structured, multi-stage process.

graph TD
    A[Trademark Search (Optional)] --> B[Filing of Application (Form TM-A)];
    B --> C{Examination by Registrar};
    C -->|Objections Raised (Sec 9/11)| D[Examination Report Issued];
    D --> E[Applicant files Reply];
    E --> F{Hearing};
    F -->|Objections Waived| G[Advertisement in TM Journal];
    F -->|Objections Maintained| H[Application Refused];
    C -->|No Objections| G;
    G -->|Within 4 Months| I{Opposition Filed?};
    I -->|No| J[Registration Certificate Issued];
    I -->|Yes| K[Opposition Proceedings];
    K -->|Opposition Dismissed| J;
    K -->|Opposition Allowed| H;
    J --> L[Use of ® Symbol];
    L -->|After 10 years| M[Renewal];

Step-by-Step Breakdown:

1. Trademark Search: An optional but highly recommended preliminary step to check if the proposed mark or a similar mark is already registered or pending. This is done via the official online database of the Trademark Registry.

2. Filing of Application (Section 18):

   • Application is filed in Form TM-A with the prescribed fee.
   • Contents: The application must contain the mark, name and address of the applicant, a statement of the goods/services for which it is to be registered, the relevant class(es) under the NICE Classification, and a statement of use (either "proposed to be used" or the date of first use).

3. Examination (Section 19):

   • The Examiner of Trademarks scrutinizes the application to ensure it complies with the Act and Rules.
   • The examination focuses on whether the mark is barred from registration under the absolute grounds (Section 9) and relative grounds (Section 11).
   • If there are objections, an Examination Report is issued to the applicant.

4. Response and Hearing:

   • The applicant must file a response to the Examination Report within one month.
   • If the Examiner is not satisfied with the written response, a hearing may be scheduled.
   • If the objections are waived, the application proceeds to the next stage. If they are maintained, the application is refused.

5. Advertisement in the Trademark Journal (Section 20):

   • Once the application is accepted by the Registrar, it is advertised in the official Trademarks Journal, which is published weekly.
   • The purpose is to invite opposition from the public.

6. Opposition Proceedings (Section 21):

   • "Any person" can file a notice of opposition within four months from the date of advertisement.
   • Procedure:
     • Notice of Opposition: Filed by the opponent.
     • Counter-Statement: Filed by the applicant in response.
     • Evidence: Both parties file evidence by way of affidavit.
     • Hearing: A hearing is conducted by the Registrar.
     • Decision: The Registrar decides whether the opposition succeeds or fails.

7. Registration (Section 23):

   • If no opposition is filed within the prescribed period, or if an opposition is filed and dismissed, the Registrar enters the trademark in the Register.
   • A Registration Certificate is issued.
   • Crucially, the registration is deemed effective from the date of the application.

8. Duration and Renewal (Section 25):

   • The registration is valid for a period of 10 years.
   • It can be renewed for subsequent periods of 10 years indefinitely by paying the renewal fee.

6. National and International Registration

A. National Registration

The procedure detailed above pertains to the national registration system in India, governed by the Trade Marks Act, 1999. An application filed with the Indian Trademark Registry provides protection only within the territory of India. To get protection in other countries, an applicant must either file separate applications in each country or use an international system.

B. International Registration (The Madrid System)

The Madrid System is a centralized, convenient, and cost-effective solution for registering and managing trademarks worldwide. It is governed by two treaties: the Madrid Agreement and the Madrid Protocol. India is a member of the Madrid Protocol.

How it Works:

1. Basic Mark (Home Application/Registration):

   • An applicant must first have a pending application ("basic application") or an existing registration ("basic registration") for a mark in their home country's IP office, known as the Office of Origin. For an Indian applicant, this would be the Indian Trademark Registry.

2. Filing the International Application:

   • The applicant files a single international application with their Office of Origin (e.g., Indian TMO).
   • The application is in one language (English, French, or Spanish).
   • A single set of fees is paid.
   • The applicant must designate the member countries of the Madrid Protocol where they want protection.

3. Certification and Transmission to WIPO:

   • The Office of Origin certifies that the mark in the international application is the same as the one in the basic application/registration and forwards it to the World Intellectual Property Organization (WIPO) in Geneva.

4. WIPO's Formal Examination:

   • WIPO conducts a formal examination to check for compliance with its requirements. If everything is in order, WIPO records the mark in the International Register and publishes it in the WIPO Gazette of International Marks.
   • WIPO then notifies the trademark offices in all the designated countries.

5. Substantive Examination by Designated Offices:

   • The application is then treated as a national application in each designated country.
   • Each country's national trademark office (e.g., the USPTO in the USA, EUIPO in the European Union) examines the mark according to its own domestic trademark laws.
   • They have a strict deadline (typically 12 or 18 months) to grant protection or issue a provisional refusal.

6. Grant of Protection or Refusal:

   • If an office finds no grounds for refusal, it grants protection, and the mark is protected in that country as if it had been registered directly.
   • If an office issues a provisional refusal, the applicant must respond directly to that office, often by hiring a local attorney. The outcome in one designated country does not affect the decisions in others.

Key Advantages:

• Simplicity: One application, one language, one fee.
• Cost-Effectiveness: Cheaper than filing separate national applications in multiple countries.
• Convenience: Post-registration management (renewals, change of ownership) can be done centrally through WIPO.

Key Disadvantage: "Central Attack"

• For the first five years, the international registration is dependent on the basic mark in the Office of Origin. If the basic application is refused or the basic registration is cancelled during this five-year period, the entire international registration will also be cancelled. This is known as a "central attack". After five years, the international registration becomes independent of the basic mark.