Registering a brand name or logo, the grounds on which registration is refused, and what counts as infringement or passing off. A curated selection; not the complete text.
Provided for study purposes. Cross-check against the official source (India Code / the relevant government gazette) before citing or relying on this text — amendments and corrections may not be reflected here.
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. In relation to a registered trade mark it means a mark used or proposed to be used in relation to goods or services for the purpose of indicating a connection in the course of trade between the goods or services and some person having the right as proprietor to use the mark.
Trade marks which are devoid of any distinctive character, which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service, and which 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 shall not be registered, unless before the date of application the mark has in fact acquired a distinctive character as a result of the use made of it or is a well-known trade mark. A mark shall also not be registered if it deceives the public or causes confusion, contains matter likely to hurt religious susceptibilities, comprises scandalous or obscene matter, or its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
A trade mark shall not be registered if, because of its identity with an earlier trade mark and the similarity of the goods or services, or because of its similarity to an earlier trade mark and the identity or similarity of the goods or services, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. A trade mark which is identical with or similar to an earlier trade mark shall not be registered in respect of dissimilar goods or services if the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.
Any person claiming to be the proprietor of a trade mark used or proposed to be used by them, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner. A single application may be made for registration of a trade mark for different classes of goods and services, and the fee payable shall be in respect of each such class.
The registration of a trade mark shall be for a period of ten years, and may be renewed from time to time for further periods of ten years each on an application made in the prescribed manner and within the prescribed period, accompanied by the prescribed fee. Where a registered trade mark is removed from the register for failure to pay the renewal fee, the Registrar may, on application made in the prescribed form within one year from the expiration of the last registration, restore the trade mark to the register.
Subject to the other provisions of this Act, the registration of a trade mark, if valid, gives to the registered proprietor the exclusive right to the use of the trade mark in relation to the goods or services in respect of which it is registered, and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
A registered trade mark 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, in such manner as to render the use likely to be taken as being used as a trade mark. It is also infringed where the use is likely to cause confusion on the part of the public, where the registered trade mark has a reputation in India and the use without due cause takes unfair advantage of or is detrimental to its distinctive character or repute, and where a person uses the mark as their trade name or as part of it, or in advertising which takes unfair advantage of or is contrary to honest practices.
A registered trade mark is not infringed where the use is in accordance with honest practices in industrial or commercial matters and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark; nor where the use is to indicate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of goods or services; nor where the use of the mark is reasonably necessary to indicate that the goods or services are adapted to form part of or to be accessory to other goods or services in relation to which the trade mark has been used.
Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or resembling it in relation to goods or services in relation to which that person or a predecessor in title has continuously used it from a date prior to the use of the first-mentioned trade mark, or prior to the date of registration of the first-mentioned trade mark, whichever is the earlier.
A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application by any person aggrieved, on the ground that the trade mark was registered without any bona fide intention on the part of the applicant that it should be used and there has in fact been no bona fide use up to a date three months before the date of the application, or on the ground that up to a date three months before the date of the application a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and there was no bona fide use.
On application made in the prescribed manner by any person aggrieved, the Registrar or the High Court may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation to it, and may make such order for making, expunging or varying any entry in the register as it may think fit.
No suit for the infringement of a registered trade mark, or relating to any right in a registered trade mark, or for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit. A District Court having jurisdiction includes a District Court within whose limits the person instituting the suit actually and voluntarily resides or carries on business or personally works for gain.
The relief which a court may grant in any suit for infringement or for passing off includes an injunction, and at the option of the plaintiff either damages or an account of profits, together with or without an order for the delivery up of the infringing labels and marks for destruction or erasure.