UNIT- II

Trade Mark
 Trade Marks: Introduction and overview of trade mark
• Evolution of trade mark law; Meaning and definition of Trade Mark
• Object of Trade Mark, Features of good Trade Mark
• Different forms of Trade Mark
• Trademarks registry and register of trademarks;
• Property in a Trade Mark
• Registrable and non-registrable marks, Basic principles of registration of Trade Mark;
• Deceptive similarity;
• Assignment and transmission;
• Rectification of register;
• Infringement of Trade Mark
• Passing off
• Domain name protection and registration;
• Offences and penalties.
 Evolution and Development of Trade Mark law
• In India proprietary protection for marks is ancient. Around 10th century, “merchants
mark”, appeared, and symbols among traders and merchants increased significantly. The
marks, which can be considered “proprietary mark,” were used to prove ownership rights
of goods like marking cattle, potteries, trading emblems on currencies, etc.
• In the Middle Ages, craftsmen and merchants affixed marks to goods to distinguish their
work from the makers of low-quality goods and to maintain trust in the guilds. These
marks, as “production marks,” served to maintain monopolies. These marks helped
consumers to identify and assign responsibility for inferior products, such as goods short in
weight, goods comprised of poor quality materials, and goods made with inferior
craftsmanship.
• The Anglo-Indian Trade Marks law had its origin dating back to 1266. It was also called as
the Bakers Marking Law. Here the law required bakers to place a mark on the bread that they
made and sold, identifying the baker.
• In the 20th century prior to 1940, there was no official Trade Marks Law in India. Numerous
problems aroused on infringement, passing-off, etc., and these were solved by the application
of the Specific Relief Act 1877 and the registration was adjudicated by obtaining a
declaration for the ownership of a Trade Mark under the Indian Registration Act 1908.
• To overcome the above difficulties the Indian Trade Marks Act was passed in 1940, this
corresponded with the English Trademarks Act. After this, as Trade and commerce
continuously grew, there was an increasing need for more protection of Trademarks.
• The replacement for this Act was the Trademark and Merchandise Act, 1958.
• India became a party to the WTO and TRIPS. The modernisation of Trade and Merchandise
Marks Act, 1958 had been taken up keeping in view the current developments in trading and
commercial practices, increasing globalisation of trade and industry, the need to encourage
investment owes and transfer of technology, need for simplification of the trademark
management system and to give effect to important judicial decisions.
• The Trademarks Bill was introduced in 1994 it pointed towards the changes that the
Government of India contemplated and was considering, but it lapsed in 1994.
• The Trade Marks Bill of 1999 was passed on 30 December 1999 as Trade Marks Act, 1999
replacing the Trade and Merchandise Mark Act of 1958.
 Function / Purpose of Trade Mark (TM)

• To Identify and distinguish the goods from other- Identify and distinguish one
trader and his goods from others

• To Signify the source- as all products bearing a TM must come from single
source.

• To Signify the quality- that all goods must be of same quality

• Primary instrument for advertisement and sale -
 The objective of the Trade Marks Act 1999

• The Act is to confer protection to the user of the Trade Mark on his goods and prescribe
conditions on the acquisition, and legal remedies for enforcement of trademark rights.
• It provided protection for service marks and gave provision of registration for collective
marks, it also differentiated between well-known trademarks and trademarks in general,
and special treatment and rights are envisaged for well-known trademarks.
• It provided definitions of terms, enhanced punishment for offenders, and increased the
period of registration, and registration of non-traditional trademarks.
• The Trademark Act 1999 and Trademark Rules 2002 presently govern Indian Trademark
Laws in India.
 Salient Features of the Trade Marks Act, 1999

• This Act includes the combinations of colors under the definition of a “mark”.
• The Act has broadened the scope of “permitted use” that includes the usage of the
registered trademark by a third party by obtaining the consent of the original owner in
writing, without record with the Trademark Registry.
• Registration of Service marks is permitted.
• A single application for filing under the different class of goods.
• Imitation of well-known trademarks cannot be registered.
• Punishment for infringement has been enhanced.
• The period of registration and renewal has also been increased from 7 years to 10 years.
• The Trade Marks (Amendment) Act of 2010 The Act allows for the international
registration of Indian trademarks, in line with the Madrid Protocol. It transform
trademark registration and makes it a less cumbersome process by helping applicants to
submit a single application with WIPO granting them protection in several countries after
the first step of basic registration in the national country is completed.
Marks -Sec 2(1)(m) – “a mark which includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging, or combination of colors or any
such combinations”.
Laxmikant V Patel v. Chetanbhat Shah, 2001, SC, held that marks include names or work,
also in abbreviation of a name.
 Meaning and Definition of TM
Trade Mark - could be -Name, Logo, Domain name, Slogan, Color, Shape, Action, Sound, or
anything that is capable of distinguishing goods and services from one another.
‘Trade Marks’ as Sec. 2 (1)(zb) of the Trade Marks Act, 1999 – “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 shape of goods, their packaging,
and combination of colors.”
Trade Mark = Mark + Capable of distinguishing + Capable of being represented graphically
™ - is a symbol to indicate an unregistered trademark, and ®- to indicate a trademark
registered under the Act.
 Meaning of Different Kinds of Marks

• Device mark -is a Logo or specific mode or design of a name.

It is a pictorial representation. It can include any label, sticker,
monogram, logo, or geometric figure other than a wordmark.

• Brand Mark – Symbols that are branded on goods.

• Heading – an Inscription
•Signatures as TM- signature of an individual. Eg. Disney logo is Walt

•Disney’s personal signature.

•Shape of Goods - as TM, included by the TM Act 1999

• Name - name of individual, firm or company, abbreviation

and domain names are used as TM. TATA, BIRLA, GODREJ, BAJAJ

•Shape of Goods- Added by 1999 Act.

•Any combination of different marks – combination of two or more marks.

•Packaging – Sec. 2(1)(q) Packaging means – “case,
• box, container, covering, folder, receptacle,
vessel, casket, bottle, wrapper, label,
band, ticket, reel, frame, capsule, cap,
lid, stopper, and cork;”
Cadbury India Limited and others v. Neeraj Food
Products, (142 (2007) Dlt 724, - The products are
strikingly similar, the product’s color scheme is
entirely identical to the Plaintiffs' label and
packaging. The marks are confusing and
deceptively similar.
Delhi HC issued a permanent injunction restraining
them from using the mark ‘JAMES BOND’ on their
products.
•Combination of Colours- A scheme of colour applied to goods is added as a mark by 1999 Act.
Colgate Palmolive India Ltd. & Anr. v. Anchor Health And Beauty Care Pvt. Ltd., 2003, DH-
Colgate alleged that the red and white color scheme, and the shape of the can, were developed,
protected, and nurtured by them over a long period, across a wide geographical area and the
distinctive red and white trade dress had acquired secondary meaning.
The issue was- Whether the similarity of trade dress is an attribute of
passing off and is actionable per se?
Court held that trade dress means- a trader's goods are recognised by
their general appearance, or "get-up". A trade dress influences the
overall impression that the customer gets as to the source and origin
of the goods. This may be from the visual impression of color
combination, the shape of the container, packaging, etc. similarity of trade dress was an attribute
of passing off and was actionable per se.
 What is protected/ registered under trademark

As per Section 28 (1)- Rights confered by registration - a trademark protects exclusive

rights to the registered proprietor to use the mark about the goods or services and also,
obtain relief in case of infringement.
Trademarks that can be protected are-
1. Word Marks
These marks are usually a distinct text, only name of the company, product, or institution
which are used for branding or marketing. Once the mark gets registered, the proprietor can
use it in any format or font regardless of the style.
•Example: NETFLIX, IBM

2. Device Marks
Under device trademark, a printed or painted design, image,
or character. It can not include any numerals, words, or letters.
Usually, they contain logos for different products or services.
3. Product Marks
These marks are used to identify a particular product of a company. For instance, the name of the
product can be registered as a trademark.
Burger King has different products such as Salsa
whooper Burger, and Flame Grilled Burger. The
company has registered the trademark for both
the name of the product and the associated product logo.

4. Service Marks
In India, there are different classes under which a service mark can be registered.
These classes help to specify the type and category of
service in which to register.
E.g. FedEx is a registered courier delivery service provider
4. Collective Marks
These marks are used by members of an association or organization to identify the quality,
origin, precision, or any other attribute set by them.
They indicate the source of the individual and can be used not only by individuals but,
multiple traders in case they belong to the registered association or organization.

E.g. “CA” used by the Institute of Chartered Accountants (ICA).

5. Certification Marks

These marks define the standards of goods or services of a particular business entity. They
reflect that the manufacturer has met with the set standards of quality through a regular audit for
his/her products.
Certification marks differentiate a brand/company from others and provide an edge in the
market.

E.g. FSSAI certification for the quality of packaged food products.

Agmark certification mark employed on agricultural products in India.
6. Shape Marks: The shape of goods is categorised in Trade Dress (appearance of a product).
Other than a logo or label a product can also be distinguished based on its packaging.
For the shape of a product to be registered as a
Trademark, the shape should be distinctive and
should not act as a functional element of the product.

Example: The Coca-Cola bottle has

acquired a trademark for its shape to protect
its distinctiveness and identity.
7. Colour combination- As per Sec. 10 of the Trademarks Act, 1999, a Tradem Mark
can be limited wholly or in a combination of any colors which, will be
decided by the Registrar keeping in mind the
distinctiveness of the mark.
A combination of colors that can be registered
As trademarks.
A single color would create a trade monopoly.
A Color combination that helps differentiate a
brand’s goods and services can be registered as a
color mark.
8. Packaging
Distinctive packaging is recognised as trade dress.
Trade dress refers to the combination of elements
that make up the look, feel, or environment of a
product or business. Trade Dress may include a
few important features like Size, shape, design,
color, etc.
 Capable of being represented graphically

• The TM is required to be presented graphically.

Rule 2 (k) of the TM Rules, 2017 ‘graphical representation’ means the representation of a
trademark for goods or services represented or capable of being represented in paper form
and includes representation in digitized form.
• It allows a trademark to be represented graphically through a set of pictures, moving mark,
and descriptions.
• This rule made it possible to register motion marks in India.
 A mark is Graphically Represented when-
a) Presentation is possible in paper form-
b) Mark could be used without the need for a supporting sample –
c) It represents the mark and no other -
d) It is reasonably practicable to understand what the TM is -

Distinctiveness- the TM must be capable of distinguishing the goods of one person from
another.
Trade dress – includes the overall look and feel of the TM.
 Unconventional Trademarks / Modern Marks -

• Unconventional trademarks include shape marks, packaging, moving logos, color

combinations, taste marks, smell marks, etc.

• Under the Trademark Rules, 2017 sound marks and 3D marks have become easy

to register in India.
i) Sound Marks
• The sound must be relatable to the products or services and can be presented graphically as
notations.
• The logo can have words, sound graphics, and
musical notes.
• The critical aspect is the immediate recall of the
customers for the concerned product or service after
hearing the sound.
Eg. Britannia Industries: The four-note bell sound.
ICICI Bank has a sound registration for its
Corporate Jingle.

• Sound not distinctive if it is - simple pieces of music consisting only of only 1 or 2 notes;
songs commonly used as chimes:, well known popular music in respect of entertainment
services, park services; Children’s nursery rhymes, for goods or services aimed at children;
music strongly associated with particular regions or countries for the type of goods/services
originating from or provided in that area.
ii) Smell Marks: it must be able to represent the smell,
It must be distinct from the product, and district so as not to get confused with other smells.
Eg. Dutch Company tennis ball has the smell of newly mown grass.

iii) Taste Mark-: Industrial Design and Geographical Indications (SCT) explained the
description of a tase mark and what is a taste mark.
Taste must be Distinctive and hard to overcome. Trade mark Trial and Appeal Court, US
found it difficult to define how taste can act as a trademark when consumers only taste
goods after purchase.
•Re. NV Organon, 2006, USPTO rejected the registration of orange flavor pharmaceuticals.
iv. Holograms, Moving images, gestures- It requires the use of a sequence of pictures or
drawings to depict how the trademarks work.
v. Three-Dimensional Trade Marks- The product shape and packaging must qualify for the
registration. For registration it is mandatory to qualify the distinctiveness test.
 Well Known Marks
• Section 2 (1)(zg) “Well Known trade Marks” in relation to any goods or services, means a
mark which has become so to the substantial segment of the public which uses such goods or
receives such services that the use of such mark about 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 about the first-mentioned goods or
services.
• Marks that have become so well known that using them will identify one with the other.
• Misleading to believe that there is a connection between them in the course of trade.

• Carrefour v. Subburaman 2007 (35) PTC 225(Mad.)- French multinational company has
stores worldwide. Registered in India under various products,- not furniture started using
CARREFOUR - for their furniture too.
• The court applied the Principle of Well-known mark. Held that it developed goodwill and
reputation in many countries and secured registrations for various classes; obtained
trademark in India
 Domain Name Trademark
• Domain Name as service is given under Sec 2(1)(z) of TM Act.
• Domain Name - Every business on the internet
has a domain name, a unique address in
cyberspace at which the website is located.

• For a user on the internet the domain name is useful in finding the goods or services of a
particular company on its website with the designated domain name identifying it.
• Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd, 2004, SC- Domain name could be a
word or name that is capable of distinguishing the subject of trade or service made
available to a potential user of the internet. Domain names are legally protected under
Trade Mark law.
 Registrable Marks
• Though the act doesn’t explicitly mention the grounds for trademark registration, it gives the
grounds for refusal of registration of a trademark.
• Registrable marks according to the TRIPS agreement -“any sign, or any combination of
signs, capable of distinguishing the goods or services of one undertaking from those of other
undertakings, shall be capable of constituting a trademark”.
For registration, as a Trademark, the mark must:-
1. Be distinctive and not descriptive with respect of its goods and services.
2. Must not be indistinguishable or similar to a mark previously registered or any pending
prior application for registration.
3. It must not be prohibited by the Trade Marks Act.
 Grounds for Refusal of Trademark Registration under The Trademark Act 1999

The Trademark Act, mentions two grounds for refusal of trademark registration
•Absolute grounds for refusal of registration (Sec. 9)
•Relative Grounds for refusal of registration (Sec. 11)
Absolute grounds for refusal of registration (Section 9) -
Sec. 9- lays down absolute grounds for refusal of registration. These absolute grounds of
refusal are related to the benefit of public and the legitimate interest of the traders.
The grounds are-
1. Marks which are devoid of any distinctive character,
2. Marks that are indications or marks that are used in commerce to define the quantity,
quality, type, values, intended purpose, or geographical origin of goods or services
rendered,
3. Marks or indications which have become customary in the current language or in the bona
fide and established practices of the trade, shall not be registered,
4. The nature of the mark is such that it can deceive the public or cause confusion,
5. The mark it contains or comprises of any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India,
6. If the mark comprises or contains scandalous or obscene matter,
7. If the use of the mark is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950 (12 of 1950),
8. Marks resulting from the nature of the goods themselves,
9. Marks that add significant value to the goods,
10. Marks whose shape adds significant value to the goods.
•However, if a mark has acquired a “distinctive character” over a period of time and has thus
become a “well-known trademark”, the same won’t be refused for registration – given the
fact that the applicant can prove the same.
Relative Grounds for refusal of registration (Section 11) -
Section 11(1) -
•Trademarks that confuse the public as it is identical to an earlier similar trademark of goods or
services.
•Trademarks that confuse the public as it is similar to an earlier identical trademark of goods or
services.
Section 11(2) Trademarks that would take unfair advantage of a similar or identical earlier
well-known trademark in India.
•Trademarks that would be detrimental to the distinctive character or repute of a similar or
identical earlier well-known trademark in India.
Section 11(3)
•The usage of the trademark is bound to be prevented by the law of passing off protecting an
unregistered trademark used in the course of trade.
•The usage of the trademark is bound to be prevented by the law of copyright.
However, if the applicant is able to prove ‘honest concurrent use’ of the proposed mark and an
already registered mark, then the same may not be refused taking the umbrella of Sec. 12.
Sec 11(11)- Registration in the case of honest concurrent use
Where a trade mark has been registered in good faith disclosing the material information to the
Registrar or where right to a trade mark has been acquired through use in good faith before the
commencement of this Act, then, nothing in this Act shall prejudice the validity of the
registration of that trade mark or right to use that trade mark on the ground that such trade mark is
identical with or similar to a well-known trade mark.
Sec 12- Registration in the case of honest concurrent Use etc. -
In the case of honest concurrent use or of other special circumstances which in the
opinion of the Registrar, make it proper so to do, he may permit the registration by more than
one proprietor of the trade marks which are identical or similar (whether any such trade
mark is already registered or not) in respect of the same or similar goods or services, subject
to such conditions and limitations, if any, as the Registrar may think fit to impose.
Other exceptions
· Sec. 13- Prohibition of registration of names of chemical elements or international
non-proprietary names- Chemical substance or preparation, international
non-proprietary names declared by WHO or deceptively similar names shall not be
registered as TM.

· Sec 14- Use of names and representations of living persons or persons recently
dead- falsely suggesting a connection- required to furnish consent from the person or
his legal representatives.
 Procedure for and duration of registration of a Trade Mark (sec 18- 26)
Sec. 18- Application for registration- by the proprietor of trade
Sec. 19-Withdrawal of acceptance – of the application by the registrar if accepted by
mistake or not registrable
Sec. 20-Advertisement of application – for opposition before or after acceptance of
application
Sec. 21-Opposition to registration- within 4 months of advertisement or
re-advertisement
Sec. 22-Correction and amendment. (Registrar may permit)
Sec. 23-Registration (within 18 months of the application, if apposed and decided in
favor of the applicant)
Sec. 24-Jointly owned Trade Marks- could be registered
Sec. 25-Duration, renewal, removal, and restoration of registration(10 year, renewable)
Sec. 26- Effect of removal from register for failure to pay the fee for renewal
 Steps for TM Registration

Step 1: Trademark Search

A trademark search helps to get to know if any other identical trademark is available. It also helps
in reducing trademark litigation.
Step 2: Filing Trademark Application
If the mark is not identical to any other registered trademark, an application could be filed at
the Trademark Office.
Territorial Jurisdiction

Mumbai Head office for Registry. The States of Maharashtra, Madhya Pradesh, Goa
Delhi The States of Haryana, Himachal Pradesh, Punjab, Uttar Pradesh, Uttarakhand, Delhi & the
Union Territories of Chandigarh, Jammu and Kashmir, & Ladakh.
Chennai Andhra Pradesh, Karnataka, Kerala, Tamil Nadu,Telangana & Pondicherry & Lakshadweep.
Kolkata • Bihar, Jharkhand, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Mizoram,
Tripura, Nagaland, Arunachal Pradesh & Andaman & Nicobar Islands)
Ahmadabad The state of Gujarat and Rajasthan, , the Union Territories of Daman & Diu and Dadra &
Nagar Haveli
Step 3: TM Examination, Acceptance or Refusal of the Application-
• After submission application is examined by the examiner for any discrepancies. If no
discrepancies are found in the application, the examiner might accept the trademark
absolutely or conditionally or he may also object if the application contains some
discrepancies.
• If accepted unconditionally, the trademark gets published in the Trademark Journal.
• If any conditions are required to be fulfilled before accepting the application then those
conditions are required to be fulfilled or the objections will be mentioned in the
examination report and the applicant needs to fulfill those conditions and respond to the
objections raised.
Step 4: TM Publication in Trademark Journal
• After acceptance, it is published in the TM Journal. If the response received is not accepted,
then a hearing can be requested. While hearing, if the examiner feels that the trademark
should be registered then it shall be registered and further proceed for publication in the TM
Journal.
• Opposition to the registration is permitted. If, after 4 months from the date of advertisement or
re-advertisement there is no opposition, the trademark proceeds for registration, but if any
opposition is there then a hearing shall be held before the Registrar and his decision shall be
final.
Step 5: Registration Certificate
After the Trademark is registered and the same has been published in the Trademark Journal, a
Registration Certificate under the seal of the Trademark Office is issued.
 Infringement of registered TM

Deceptive similarity
Section 2(1)(h) Deceptive similarity as of the TM Act is: “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.”
Allied Blenders and Distillers Pvt. Ltd. v. Shree Nath Heritage liquor Pvt. Ltd. (2014) Del.
The court found ‘Officers Choice’ and ‘Collector’s Choice’ prima facie deceptively similar
they conveyed the same meaning.
Intention to deceive is not necessary-
• It makes no difference whether the person intends to deceive the general public or not.
• The deceptive similarity is the ground for TM infringement. The deceptive similarity is a ground
for the rejection of TM registration.
M/S Lakme Ltd. v. M/S Subhash Trading and Others, 1996, DLT
The plaintiff was selling cosmetic products under the trademark name ‘Lakme’ and the defendant
was also selling similar products under the name “Like Me”. The Delhi HC held that the names
were not deceptively similar and were two separate marks with different spelling and appearance.
SM Dyechem Ltd. v. Cadbury (India) Ltd, (2000) 5 SCC 573
plaintiff had a chips and wafers business under the TM “PIKNIK”. Later, the defendant started a
business of chocolates under the name “PICNIC”. The Court held the marks not deceptive similar as
they are different in appearance and composition of words.
 Assignment and Transmission
• Assignment and Transmission of a Trademark is a process in which ownership of the
trademark is passed from one person to another with full or partial rights depending on the
terms and conditions of the agreement.
• Registered and Unregistered TM are assigned and transmitted from one person to another with
or without the goodwill of the business concerned.
• Sec 2(1)(b)Assignment of a TM- there is a change in the ownership of the TM by act of
parties with written documents.
• Sec 2(1)(zc) Transmission of a TM- transmission by law, devolution on the persona
representative of a deceased person and any other mode of transmission not being
assignment.”
Types of Assignment and Transmission of Trademark

• Complete Assignment and Transmission:It means the transfer of all rights including
rights to further transfer, rights to royalties, etc from one individual to another.
• Partial Assignment: It means the transfer of ownership specified or restricted to certain
services or products.
• Assignment with goodwill: It means to transfer and assignment of the trademark with all
the rights and values associated with the trademark from one person to another.
 Assignment and Transmission of Trademark (Sec. 37- Sec 45)
Sec 37- Right of registered proprietor to assign & give receipts –the registered proprietor
have right to assign TM & give receipts for consideration.
Section-38 Assignability & Transmission of a Registered TM - “Notwithstanding anything in
any other law to the contrary, a registered trademark shall, subject to the provisions of this
Chapter, be assignable and transmissible, whether with or without the goodwill of the business
concerned and in respect either of all the goods or services in respect of which the trademark is
registered or of some only of those goods or services”.
Sec. 39 Assignability and Transmission of Unregistered Trademark - “An unregistered
trademark may be assigned or transmitted with or without the goodwill of the business
concerned.”
Sec. 40- Restrictions on assignment or transmission when multiple exclusive rights would be
created- A TM shall not be assignable or transmissible if it results in exclusive rights in more than
one persons concerned to the use, to -
(a) Same goods or services;
(b) The same description of goods or services;
(c) goods or services or description of goods or services which are associated with each other,
•An assignment or transmission shall not be deemed to be invalid under this sub-section if the
exclusive rights subsisting in the persons concerned respectively are, having limitations imposed
thereon, such as not to be exercisable by two or more of those persons concerning goods to be sold, or
otherwise traded in, within India otherwise than for export therefrom, or about goods to be exported to
the same market outside India or concerning services for use at any place in India or any place
outside India to services available for acceptance in India.(Restrictions on Assignment of Trademark).
Sec. 41- Restriction on assignment or transmission where exclusive rights would be created in
different parts of India- To prevent the split of rights of TM & creating rights for different
persons in different parts (Restrictions on Assignment of Trademark)
Section 42- Conditions for assignment otherwise than in connection with the goodwill of a
business- The section outlines the conditions for assigning a trademark that is not associated
with a business's goodwill.
•The assignee must apply to the Registrar for directions on how to advertise the assignment
within 6 months of the assignment date.
•The assignee must advertise the assignment as directed by the Registrar.
•The Registrar may allow an extension of up to 3 months for the advertising period.
❑ The assignment of a TM is not considered to be without goodwill if it is accompanied by the
transfer of the goodwill of the business for specific goods and services.
❑ It is also permissible to assign a trademark along with the goodwill of the business for goods
exported or services used outside India.
Sec.43. Assignability and transmissibility of certification trade mark- A certification
trade mark shall not be assignable or transmissible otherwise than with the consent of the
Registrar, for which application shall be made in writing in the prescribed manner.

Sec. 44. Assignability and transmissibility of associated trade marks- Associated trade
marks shall be assignable and transmissible only as a whole and not separately, but, subject
to the provisions of this Act, they shall, for all other purpose, be deemed to have been
registered as separate trade mark.
Sec. 45 Registration of assignments and transmissions-The Sec. gives Process for
assignment and transmission of Trademark -
1. Application to the Registrar of Trademark in the prescribed manner with certified original
documents.
2. Review- The Registrar will review the application and provide a decision within 3 months.
He informs the applicant about the assignment or Calls to furnish proof if he has some
doubts.
3. Registration- If the assignment is approved, the Registrar will register the assignee as the
proprietor of the trademark and enter details of the assignment in the register.
4. Dispute- If the validity of the assignment is disputed, the Registrar will not register it until
a competent court determines the rights of the parties.
• The Registrar may request additional evidence if there are doubts about the application
 Rectification and correction of Register (Sec. 57 to 60)
Trademark Rectification or trademark Correction refers to the process through which a person
applies for the Alteration, Amended or Removal of a registered TM from the Register.
Section 57: Gives the Registrar or HC the power to rectify the register, cancel or vary the
registration of a TM, and decide any questions related to the rectification of the register. A party
aggrieved by an entry in the register can apply to the Registrar or the HC for
rectification. Grounds for rectification include-
• The register is missing an entry, such as a condition, limitation, or disclaimer
• The entry was made without sufficient cause, such as fraud or misrepresentation
• The entry is in error or defective.
Sec. 58 The correction of the register - by the registrar of name, address, or description of
registered use
Sec. 59 Alteration of registered TM- if applied by the registered proprietor (not substantially
affecting the identity of TM)
Sec. 60 The adaptation of entries in the register to amended or substituted classification of goods
or services - The Registrar cannot amend the register to add goods or services to those already
registered, or to antedate the registration of a TM.
• However, the Registrar can make an exception if they are satisfied that the addition or
antedating would not -involve undue complexity, affect a substantial quantity of goods or
services, or substantially prejudice the rights of any person.
• Before amending the register, the Registrar must notify the registered proprietor of the TM and
advertise the proposal in the prescribed manner
• Any person aggrieved by the proposed amendment can oppose it before the Registrar
 Infringement of Trademark
•Trademark infringement is the unauthorised usage of a mark that is identical or deceptively
similar to a registered trademark.
Deceptively - means when an average consumer looks at the mark, it is likely to confuse
consumer with the other goods or services.
Sec. 27. No action for infringement of unregistered trademark.-
(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for,
the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing
off goods or services as the goods of another person or as services provided by another person,
or the remedies in respect thereof.
Sec . 29. Infringement of registered trade marks.-
(1) A registered TM is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which is identical
with, or deceptively similar to, the trade mark in relation to goods or services in respect of
which the trade mark is registered and, in such manner, as to render the use of the mark likely
to be taken as being used as a trade mark.(Use of deceptively similar to registered TM.)
(2) A registered TM is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) it identify with the registered trade mark and the similarly of the goods or services
covered by such registered trade mark or,
(b) its similarly to the registered trade mark and the identity or similarly of the goods or
services covered by such registered trade mark, or
(c) its identity with the registered trade mark and the identity of the goods or services covered
by such registered trade mark, is likely to cause confusion on the part of the public, or which
is likely to have an association with the registered trade mark.
(4) A registered TM is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which-(infringement of TM
in case of dissimilar goods that have reputation in India))
(a) is identical with or similar to the registered trade mark, and
(b) is used for goods or services which are not similar to the registered TM, and
(c) the registered TM has a reputation in India and the use of the mark without due cause takes
unfair advantage of or is detrimental to, the distinctive character or repute of the registered
TM .
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his
trade name or part of his trade name, or name is his business concern or part of the name, of his
business concern dealing in goods or services in respect of which the TM is registered.(Use of
registered TM as Trade name).
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof,
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes
under the registered trade mark, or offers or supplies services under the registered trade mark.
(c) imports or exports goods under the mark, or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered TM is infringed by a person who applies such registered TM to a material intended
to be used for labeling or packaging goods, as a business paper, or for advertising goods or services,
provided such person, when he applied the mark, knew or had reason to believe that the proprietor or
a licensee did not duly authorise the application of the mark.
(8) A registered TM is infringed by any advertising of that TM if such advertising-(Infringement of
TM by advertisement)-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters,
(b) is detrimental (harmful) to its distinctive character, or
(c) is against the reputation of the TM
(9) Where the distinctive elements of a registered TM consists of or include words, the TM may be
infringed by the spoken words as well as by their visual representation and reference in this section
to the use of a mark shall be construed accordingly.(Infringement of TM by spoken words visual
representation )
 What does not amount to Infringement of TM in India
Sec. 30 of the TM Act, 1999 lays down certain conditions wherein a TM cannot be said to have
been infringed. Such conditions can be used by the alleged infringer as limits and defences in
suits for infringement of TM and hence escape his liability.
1. When any person makes use of a trademark under honest practices in industrial or
commercial matters &
When such use is not in pursuit of taking undue advantage or proves to be detrimental to the
distinctive character or repute of the trademark.
2. Use of a mark for the indication- Whenever any TM is used to indicate the kind, quality,
quantity, intended purpose, value, geographical origin, the time of production of goods or of
rendering of services or any other characteristics of goods or services.(not as a TM)
3. Use of mark which is outside the scope of registration- When trademarks are
registered, there are certain cases where they are subjected to certain conditions and
limitations. Whenever the alleged infringement is under the ambit of those
limitations, then it does not constitute to be a case of infringement of trademarks.
4. Implied consent – Whenever the infringed use of a trademark is in the continuance of
the permitted use by the original proprietor who has subsequently not removed or
impliedly consented to its use.
5. Use of the trademark in relation to parts and accessories to other goods & use is
necessary & not likely to deceive.
6. Use of registered trademarks being one of two or more registered TM, identical or
similar to each other.
 Passing Off
Passing off is an actionable wrong in which a person passes off his goods as the goods of another.
Like the protection of trademarks, Passing off also prevents a person from misrepresenting its
goods and services from that of the other.
Passing off is recognised as a common law that is used to protect and enforce unregistered TM.
There are 3 elements of passing off popularly known as the classical trinity-
1. Damage to goodwill & Reputation- To injure the business or goodwill of the other person
2. Misrepresentation- has resulted in causing confusion in the minds of people
3. The suffering of the plaintiff- causing loss to the plaintiff
❑ Registration is no defence to passing off action
❑ Intention is immaterial in infringement or passing off.
Cadila Health Care Ltd v. Cadila Pharmaceutical Ltd, 2001,SCC held the criteria for the
determination of the deceptive similarity of marks and set out specific rules for deciding the nature
of similar or misleading marks. In an action of paasing off for unregistered TM to decide deceptive
similarity it must be considered that-
1. The nature of the marks, whether it is words, labels, or composite marks.
2. The degree of resemblance between the marks, phonetic or visual, or similarity in the idea.
3. The nature of goods or services in respect of which they are used as trademarks.
4. The similarity in the nature, character, & performance of goods/services of the rival
traders/service providers.
5. The class of customers, on their education, and the degree of care they are likely to exercise in
purchasing and/or using the goods.
6. The mode of purchasing, it traverse in course of business or placing an order.
Ingelheim Pharma GMBH & Co. KG V. Prechand Godha , 2014, Del
Held that MUCOSOLVAN of the plaintiff and MUCOSOLVIN of the defendant were
composite marks and used for cough syrup having the same composition. There is a
close degree of resemblance as only one letter is different for each mark. The nature of
the marks, degree of resemblance, character, & performance of goods/services, and
class of customers are almost similar. There is the likelihood of deception and
confusion.
Timken Company v. Timken Services Private Ltd.2013, Del – the court held that for
passing off not necessary to prove actual damage it is sufficient to be the presence of
Misrepresentationhas resulted in confusing the minds of people.
 Domain Name Protection and Registration
•A domain name is identity of an online business, it performs the same functions as that of a TM.
• Any unique internet name that is capable of identifying and distinguishing goods or services of a
company from that of other companies, and can also act as a reliable source identifier for the
concerned goods and services on the internet.
•A domain name can be registered as a trademark, provided that the domain names do satisfy all
conditions under the Trade Marks Act, 1999, and the Trade Marks Rules, 2002.
•Domain names may considered as service under sec. 2(z) of TM Act 1999.
•The registered domain name owner will have all rights and authorities that the registered TM
owners including the right to sue for infringement or passing off.
• When there is a misrepresentation of the unregistered mark and it is likely to deceive the
relevant public, the unregistered trademark owner can sue for passing off.
• Thus, registered domain names can obtain the protection of TM infringement, and
unregistered domain names can get the protection of passing off.
Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd.2004, SCC- The court held that internet
domain names are recognisable as TM. The domain name not only serves as an address for
internet communication but also identifies the specific internet site, and distinguishes specific
businesses or services of different companies. A domain name as an address must, of necessity,
be peculiar and unique. As more and more commercial enterprises trade or advertise their
presence on the web, domain names have become more and more valuable. Its involvement in
trade and commerce provides it the status of TM.
Info Edge (India) Pvt. Ltd. vs. Shailesh Gupta and another,
the website using the domain name, ‘Naukari.com’ was held to be confusingly similar to that of the
plaintiff, ‘naukri.com’, with a different spelling variant establishing prima facie inference of bad
faith.
Rediff Communications Ltd. v. Cybertooth & another, - the Bombay High Court while granting an
injunction restraining the defendants from using the domain name ‘RADIFF’ or any other similar
name, held “When both domain names are considered there is every possibility of internet users
being confused and deceived into believing that both domain names belong to one common source
and connection although the two belong to two different persons.”
 Penalties for Trademark Infringement
• The infringer of TM may face criminal charges along with civil charges.
• The proceeding could be initiated under the TM Act for registered TM as well as for passing
off in case of an unregistered TM.
In the case of trademark infringement or passing off, the court may award (Sec. 135) -
• Temporary injunction
• Permanent injunction
• Damages
• Account of profits (damages in the amount of the profits gained from the infringement)
• Destruction of goods using the infringing mark
• Sections 101 and 102 of the Act prescribe the nature of the offenses.
• In the case of a criminal proceeding, the court dictates the following punishment:
• Imprisonment for a period not less than six months that may extend to three years
• A fine that is not less than Rs 50,000 that may extend to Rs 2 lakh.