India: Trade Marks: Identity that Demands Protection

Last Updated: 25 July 2005
Article by Rajkumar Dubey

Trademark means a mark adopted by a trader, manufacturer or service provider as a distinctive mark of authenticity. It indicates a connection between the goods or services to which the mark is applied and some persons having the right to use the mark. It offers an assurance to the buyers as to the source of origin of goods that they are buying.

Mark includes a device, brand, heading, label, ticket, name or an abbreviation of a name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof used in relation to goods or services. Provided it must be capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others so as to indicate the source of the origin of goods or services.

The Legislation:

Trademarks are a distinct form of property, which are entitled to protection under the law, irrespective of its value in money so long as it has some business or commercial value. Not merely the interest of the owner but also the interests of the public are the subject concern of trademark legislation. It is statutory and not compulsory to register a trademark. However by Registration ones get the title over the mark and he does not have to prove his title in case someone infringes his mark, on the other hand if the mark is not registered the only way one can protect his right over the mark is by way off passing off action, where have to establish his title on the basis of prior use and his mark’s distinctiveness with respect to his goods or services.

The provisions that govern trademarks laws in India are covered under the Trade Mark Act, 1999 ("Act") and Trade Mark Rules, 2002 ("Rules"). The object of the Act is to provide for registration and better protection of trademark for goods or services and for prevention of the use of fraudulent marks. The Act has been enacted to ensure that the registered proprietor of the mark enjoys its monopoly right over the mark. The cardinal principle behind the trademark law is that no man shall be permitted to represent his goods as those of others by way of indication through a mark in which he has no right. The Act recognizes the following types of marks:

  • Collective mark: means a trademark distinguishing the goods or services of members of an association of persons (not being a partnership within the meaning of the Indian Partnership Act, 1932), which is the proprietor of the mark from those of others.
  • Service Marks: means those marks used in connection with providing services of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, real estate, chit funds, transport, storage, material, treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.
  • Well -known trademark: means a mark used in relation to goods or services and which has become well known to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

Who Can Apply:

Any person or company who claims to be the proprietor of a trademark may apply for registration with the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. Those persons or company who have any business in India but are interested to start a business or enterprise may file the application with the Trademark Registry within whose jurisdiction their address of service of communication falls.

However it is recommended that before moving an application for registration, a trademark search may be conducted in order to ascertain that the mark for which the registration is to be sought is neither identical with nor deceptively similar to any of the registered trademark(s) and/or prior pending trademark(s) application.

Registration Requirements

In order to bring it within the ambit of statutory definition, a trademark should satisfy the following essential requirements:

  1. It must be a mark, that is a device, brand, heading, label, ticket, name or an abbreviation of a name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof;
  2. It must be capable of being represented graphically;
  3. It must be capable of distinguishing the goods or services of one person from those of others;
  4. It must be in use or propose to be used in relation to goods or services;
  5. The use must be for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, and some person having the right to use the mark either as proprietor or by way of permitted user as the case may be.

Grounds For Refusal Of Registration

The Act expressly lays down certain grounds on the basis of which the mark applied for registration may be refused registration, meaning thereby that the mark applied for registration if not hit by any of these grounds would qualify for registration. Theses grounds may be broadly categorized into following two heads:

1. Absolute Ground for Refusal of Registration

The Act expressly stipulates that the mark chosen for registration should not be a mark:

  1. which is devoid of any distinctive character viz. not capable of distinguishing the goods or services of one person from another;
  2. which consists exclusively of marks or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or rendering of the services or other characteristics of the goods or services;
  3. which consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade.
  4. However the registration shall not be refused on the basis any of the grounds mentioned above (i-iii), if the mark has acquired a distinctive character as a result of the use made of it or is a well-known trademark, before moving the registration application.

  5. which is of such a nature that may deceive public or cause confusion.
  6. which contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.
  7. which comprise or contain scandalous or obscene matter.
  8. the use of which is prohibited to be used under the Emblems and Names (prevention of improper use) Act, 1950.
  9. which consist exclusively of the shapes of goods
    • which results from the nature of the goods themselves; or
    • which is necessary to obtain a technical result; or
    • which gives substantial value to the goods.

However the nature of goods or services in relation to which the trademark is used or proposed to be used shall not be a ground for refusal of registration.

2. Relative Grounds for Refusal of Registration

The act lays downs that except in case where honest and concurrent use or any other special circumstance which in the opinion of the Registrar of Trademarks is proper, no trademark shall be granted registration:

  1. if the mark submitted for registration is identical with or deceptively similar to the registered trademark(s) and/or prior pending trademark(s) application and the goods or services covered by the mark are identical or similar to the goods or services of the registered trademark(s) and/or prior pending trademark(s) application, that there exist a likelihood of confusion on the part of public, which includes the likelihood of association of the mark with the registered trademark(s) and/or prior pending trademark(s) application.
  2. If the mark is merely a reproduction or imitation of a well known mark.
  3. Where goods or services covered by the mark are not similar but the mark is identical with or deceptively similar to the registered trademark(s) and/or prior pending trademark(s) application or the use of the mark is without any reasonable cause with a motive to take an unfair advantage of or be detrimental to the distinctive character or repute of the registered trademark(s) and/or Well known mark.
  4. If its use in India is liable to be prevented by laws of passing off or copyright.

Steps Involved In Registration:

1. An application in a prescribed form is required to be filed with the Trade Marks Registry along with the requisite statutory fee.

Following information is required to be furnished in the application:

  • Full name & Address of the Applicant;
  • Class under which the registration is to be sought;
  • Description of Goods or Services in relation to which registration is sought;
  • Whether the mark is already in use in India or is it proposed to be used; if the mark is already in use, the date since when and the person by whom the mark has continuously been used;

2. Application must be accompanied with necessary representation of the mark.

3. If the application is to be moved through a trademark agent then in that case the Power of Attorney shall be required to be executed in agent’s favor.

4. Once the application is filed, the application for registration is allotted a serial number also known as reference number.

5. The Registrar upon the receipt of the application conduct the Examination with respect to mark’s registrability whether it satisfies the requirements of the Act and Rules.

6. If the application satisfies the requirement of the Act and Rules then it shall be allowed to be advertised in the trademark journal before acceptance.

7. If upon the examination it turns out that the application doesn’t meet the requirement of the Act and Rules in that case the Registrar by way of issuance of Examination Report may raise objections and/or seek clarifications from the applicant.

8. The Registrar may also require the applicant to agree to follow such terms and condition /association as deemed fit and proper.

9. The replies to the Examination report is required to be filed, in writing, within one month from the date of the communication of the Examination report.

10. If any of the objections still persist the applicant may request a hearing to discuss and resolve the matter, which the Registrar may grant.

11. Upon the filing of replies to the examination report and/or making submission during the hearing the registrar shall reconsider the registrability of the mark in the light of replies filed and submission made.

12. If satisfied the Registrar shall pass order for advertisement of the mark in the trademark journal before acceptance.

13. The mark accepted for advertisement in the trademarks journal shall be published in Trademarks journal in due course of time.

14. Once advertised in the trademarks Journal, the mark shall remain open for objection for a period of 3 months, which is extendable by 1 month upon request in order to give an opportunity to any person who may have an objection to the registration of the mark, to move an opposition against registration of the mark.

15. If no objection is raised during this period the mark shall be granted registration and accordingly the registration certificate shall be issued.

Duration Of A Trademark:

A trademark has a perpetual time period subject to its renewal from time to time. Under the Act the initial term of registration of a trademark is ten (10) years, after which it is to be renewed for further periods of ten (10) years upon the payment of prescribed renewal fee.

Rights Of The Registered Proprietor:

1. Rights Conferred By Registration Application:

Following rights are vested upon the applicant once the application is moved for registration of a trademark:

  • Bonafide evidence of adoption and selection of a trade mark for selected goods or services;
  • Priority against identical or similar marks, pending registration for the same or filed after the date of application.
  • Preservation of filing date within six months of priority period in all other convention countries.

2. Rights Conferred By Registration

Registration confers upon the proprietor of the trademark the following rights / benefits:

  1. Exclusive right to use the mark in relation to the goods or services in respect of which the mark is registered.
  2. To stop others from using the identical or deceptively similar marks with respect to same or similar goods or services and where the mark is a well known mark one can stop the use of identical or deceptively similar marks not only with respect to same or similar goods or services but also in case of dissimilar goods or service where the use of which would take unfair advantage or be detrimental to the distinctive character or reputation of the earlier trademark.
  3. The owner of the registered mark is not required to prove the title, reputation of the mark or damages like in passing off action.
  4. Except the registered or unregistered permitted user, no other person could use or obtain the registration of same or deceptively similar mark in relation to the same or similar goods or services in relation to which the trademark is granted registered.
  5. Restrain such advertisements which may:
    • take an undue advantage of the registered mark

    • which is contrary to honest practices in industrial or commercial matters and,

    • which is detrimental to the distinctive character or reputation of the registered mark.

  6. Retrain import of such goods or services having mark, which is identical or deceptively similar to a registered mark.
  7. Restrain use of the mark as trade name or part of a trade name or name of business concern dealing in the same goods or services.
  8. Seek registration of any person as a permitted/registered user.
  9. To avail Civil, Criminal and Administrative Remedies in case of infringement.

a. Civil

  • Injunction;
  • Claim for damage;
  • Cost;
  • Any other relief that the court may think fit.

b. Criminal

  • Imprisonment;
  • Fine

c. Administrative

  • Opposing the registration.
  • Removal of deceptive mark from the register.

The progressing economy of India, while accommodating a prolific foundation for those wanting to explore emerging markets, deals with multifarious challenges faced by trademark owners. With wide spread brand proliferation and numerous individuals/entities manufacturing or trading in similar products or services, it obviates the proprietors to reap the benefits of the time and money spent on the tedious brand building process. It is paramount to secure trademark protection to the achieve success in any venture. Once you secure such rights you may be in a strong negotiating position to take advantage of profit sharing or earning royalties. Indian trademark laws are in complete harmony with the international norms, which on one hand give simplified procedure and on the other hand levy hefty fines and punishments to infringers.


Actual resolution of legal issues depends upon many factors, including variations of fact and laws of the land. Though the firm has taken utmost care in the preparation of this article, the information contained herein is not intended to constitute any legal advice and the firm cannot accept any responsibility towards those who rely solely on the contents of this article without taking further specialist advice. The reader should always consult with legal counsel before taking action on matters covered by this article.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.