Procedure for protection of trademark

Registration

Sec18-23

Section 18

Section 18 of the Trade Marks Act outlines the process for applying for registration:

1. Any individual claiming ownership of a trademark, whether in current use or intended for
future use, must submit a written application to the Registrar following the prescribed format.

2. A single application can cover multiple classes of goods or services, with fees payable for
each class.

3. Applications must be filed at the Trade Marks Registry office corresponding to the location of
the applicant's principal place of business in India. If there are joint applicants, the application
should be filed where the principal place of business of the first-named applicant in India is
located. If none of the applicants conduct business in India, the application should be filed where
the address for service in India is located.

4. The Registrar has the authority to either accept, refuse, or accept with conditions or
amendments, the application as deemed appropriate under the Act.

5. In the event of refusal or conditional acceptance, the Registrar must document the reasons for
such decisions along with the evidence considered in reaching them.

Section 19

Section 19 addresses the withdrawal of acceptance of a trademark application:

If, after accepting an application but before its registration, the Registrar determines:

(a) That the application was accepted erroneously, or

(b) That, considering the circumstances, the trademark should not be registered, or should be
registered with certain conditions or limitations different from those initially accepted,

The Registrar, after giving the applicant an opportunity to be heard if requested, may withdraw
the acceptance and treat the application as if it had never been accepted.

Section 20

(1) Once an application for trademark registration has been accepted, whether unconditionally or
subject to certain conditions or limitations, the Registrar must promptly arrange for its
advertisement, along with any accompanying conditions or limitations, in the prescribed manner.
However, the Registrar reserves the right to advertise the application before acceptance in certain
circumstances, such as when it pertains to trademarks covered by specific sections of the law or
if exceptional circumstances warrant immediate advertisement.

(2) In cases where:

(a) An application has been advertised before acceptance under subsection (1); or

(b) Following advertisement of an application,

(i) Corrections are made to errors in the application, or

(ii) Amendments are permitted under section 22,

the Registrar may, at his discretion, choose to advertise the application again. Alternatively, in
situations falling under clause (b), the Registrar may opt not to re-advertise the application but
instead, notify the correction or amendment made in the application in the prescribed manner.

Section 21

(1) Within four months from the date of publication or republication of an application for
trademark registration, any individual may, in the prescribed manner and upon payment of the
prescribed fee, provide written notice to the Registrar opposing the registration.

(2) The Registrar must furnish a copy of the opposition notice to the applicant for registration.
Within two months from the receipt of this copy, the applicant must submit, in the prescribed
manner, a counterstatement detailing the grounds supporting their application. Failure to do so
will result in the application being considered abandoned.

(3) If the applicant submits a counterstatement, the Registrar will provide a copy to the
individual who filed the opposition.

(4) Both the opponent and the applicant must submit any evidence they wish to rely on in the
prescribed manner and within the prescribed time to the Registrar. The Registrar will then
provide an opportunity for both parties to be heard if they wish.

(5) After hearing the parties, if requested, and reviewing the evidence, the Registrar will
determine whether to permit registration and under what conditions or limitations, if any. The
Registrar may consider objections not explicitly raised by the opponent.

(6) If the individual opposing the registration or the applicant submitting a counterstatement does
not reside or conduct business in India, the Registrar may request them to provide security for
the costs of the proceedings. Failure to provide such security may result in the opposition or
application being considered abandoned.

(7) Upon request, the Registrar may allow correction of any errors in, or amendments to, the
opposition notice or the counterstatement on terms deemed appropriate.

Section 22

The Registrar has the authority, on terms he deems fair, to allow the correction of any mistake or
to permit an amendment to an application at any time, whether before or after its acceptance
under section 18. However, if an amendment involves splitting a single application referred to in
subsection (2) of section 18 into two or more applications, the date of the original application
will be considered the date of submission for the divided applications resulting from the
amendment.

Section 23

(1) Except as provided in section 19, if an application for trademark registration has been
accepted and either:

(a) There has been no opposition within the stipulated time after acceptance, or

(b) Any opposition raised has been resolved in favor of the applicant,
the Registrar shall, unless directed otherwise by the Central Government, register the trademark
within eighteen months from the filing of the application. The registered trademark shall be
considered as of the date of the original application, which, subject to section 154, will be
deemed as the registration date.

(2) Upon registration of a trademark, the Registrar will issue a certificate of registration to the
applicant in the prescribed format, sealed with the Trade Marks Registry seal.

(3) If trademark registration is not completed within twelve months from the application date due
to the applicant's default, the Registrar may, after notifying the applicant in the prescribed
manner, consider the application abandoned unless completed within the specified timeframe
mentioned in the notice.

(4) The Registrar may make amendments to the register or a registration certificate to rectify
clerical errors or obvious mistakes.

In "Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd.," the

Supreme Court of India addressed trademark registration. Nandhini Deluxe opposed KMF's
registration of "Nandini" for dairy products, citing potential confusion with its own trademark.
The court assessed visual and phonetic similarities, ruling in favor of KMF due to insufficient
visual resemblance. It emphasized considering overall consumer perception and the nature of
goods. The case set a precedent for trademark registration, highlighting the need for a
comprehensive analysis of similarities and consumer confusion. It remains significant in Indian
trademark law, influencing decisions on trademark registrations and disputes.

In the landmark case "Yahoo! Inc. v. Akash Arora," the Delhi High Court addressed trademark
registration issues. Yahoo! Inc. filed a suit against Akash Arora for using the domain name
"yahooindia.org" for his website. The court ruled in favor of Yahoo! Inc., stating that Arora's use
of the domain name infringed upon Yahoo!'s trademark rights. The case underscored the
importance of protecting well-known trademarks in the digital domain and established
precedents for addressing trademark infringement in the context of domain names.

Remedies

There are three types of remedies under trade mark:-

1. Civil remedies
2. Criminal remedies
3. Administrative remedies

Civil remedies

The Trade Marks Act of 1999 outlines civil remedies available to those whose trademarks are
infringed, including:

1. Injunctions, which may be perpetual or temporary, granted by the court. Perpetual injunctions
are permanent and issued based on the merits of the case, while temporary injunctions are
granted until final orders are issued. These can be requested under Order 39 Rule 1 and 2 of the
Code of Civil Procedure, but may allow the defendant to continue using the mark until the court's
final decision.

2. The aggrieved party can ask for compensation for the losses they faced because someone used
their trademark without permission, which led to losing their exclusive rights.
3. The profits earned may be looked into, and instructions may be given to either hand over or
take away the products that are infringing on the rights.

4. Section 135 of the Trade Marks Act allows for an Anton Piller Order, which stops the
defendant from taking assets out of the court's control. The court may appoint a local
commissioner to seal goods or materials that are infringing trademarks as part of legal actions.

In civil remedy cases, the court may ground the defendant's goods or services causing consumer
confusion or order compensation for damages incurred by the plaintiff. If civil remedies fail to
adequately compensate the plaintiff for their losses, further civil action may be pursued.

Criminal remedies

The Trade Marks Act of 1999 includes provisions for criminal remedies to address trademark
infringement, as outlined below:

1. Section 103 provides for criminal penalties for trademark contraventions, including
imprisonment for up to six months, extendable to three years for severe infringement.

2. Section 104 specifies penalties for infringement, imposing fines ranging from fifty thousand
rupees to two lakhs.

3. Section 105 introduces escalated punishment for severe violations.

4. As a criminal remedy, authorities may seize assets from the individual responsible for
infringement, conducted by the police based on reasonable grounds of proving the infringement.

Administrative remedies

It is widely recognized that criminal remedies hold greater significance compared to civil
remedies. In addition to civil and criminal avenues, administrative remedies serve as another
recourse for addressing trademark infringement. The administrative remedies available are as
follows:

1) Challenging a mark that looks like the original can be done under Sections 9(1) or 11 of the
Trade Marks Act, 1999. This happens when the examiner investigates during the trademark
registration process. Usually, a third party opposes a trademark that's already registered once the
registration process finishes.

2) Another way to handle this administratively is by correcting trademarks that are already
registered, which helps to avoid confusion among trademarks.

3) This administrative solution involves keeping an eye on trade activities involving goods with
fake trademarks. It stops the import and export of goods labeled with fake trademarks to prevent
tricking consumers. These administrative actions are effective in stopping trademark
infringement.

Case laws

One such case is DM Entertainment v. Baby Gift House and others. In this instance, a dispute
arose concerning publicity rights and character merchandising. The plaintiff, renowned singer
Daler Mehndi, who owned a company bearing his name and possessing all associated rights,
alleged that the defendant's creation of miniature toys depicting the public figure amounted to
unauthorized activity. This, in turn, was believed to have a detrimental impact on the reputation
of both the company and the singer. Since there was no specific provision regarding passing off,
the court, relying on precedents, awarded the plaintiff a compensatory sum of Rs. 1 Lakh from
the defendant.

In the notable case of The Coca-Cola Company v. Bisleri International Pvt. Ltd, the Delhi
High Court emphasized that any level of infringement could invoke the court's jurisdiction to
address the matter. The case centered on the misappropriation of the brand name MAAZA from
the plaintiff's company to the defendant's. The defendant had been using the trademark both
domestically and internationally. The plaintiff sought a permanent injunction, alleging losses
incurred by the company. The court determined the defendant's liability for infringement due to
the unauthorized use of the trademark beyond permissible limits and consequently issued an
interim injunction against the defendant.

INFRINGEMENT ACTION: [Section 29]

• The infringement action is a ‘statutory remedy’ available to the registered proprietor or to

the registered user [Section 29], based on statutory rights conferred by registration of a
trade mark [Section 28], subject to the limitations or restrictions. [Sections 30, 34, 35]

• When a registered trade mark is used by a person who is not entitled to use such a trade
mark under the law, it constitutes infringement of registered trade mark. ‘Section 29’
dealing with infringement of trademark explicitly enumerates “nine grounds” which
constitute infringement of a registered trade mark.

• If someone uses a logo that looks just like another one, or really close to it, for similar
things, or uses the same logo for exactly the same things, and it might make people
confused or think it's connected to the original logo, that's when a registered trademark is
violated. [Section 29(1-3)]

• If someone uses a logo that's exactly the same or really similar to another one, but for
different things, and the original logo is well-known in India, and using the new logo
without a good reason would either benefit from its reputation unfairly or harm its
uniqueness or fame, then that's when a registered trademark is violated. [Section 29(4)]

• A person is prohibited from using someone else’s trade mark, as his trade name or name
of his business concern or part of the name of his business concern dealing with goods or
services in respect of which trade mark is registered. [Section 29(5)]

• When someone puts a logo on things, displays items for sale, brings items into or out of a
country, or uses the logo in business documents or ads, they're considered to have used
that logo. [Section 29(6)]

• If someone puts a trademark on labels, packages, or ads without permission from the
owner or someone allowed using it, they're also breaking the rules on trademark
infringement. [Section 29(7)]

• Using a trademark in advertising to get an unfair advantage, or in a way that goes against
fair business practices, or harms its uniqueness or reputation, is considered breaking the
rules on trademark infringement. [Section 29(8)]

• If a trademark mainly relies on words, using those words when speaking or showing them
visually to promote goods or services would also be considered trademark infringement.
[Section 29(9)]
 • If someone has officially registered a trademark or is allowed to use it, they can take legal
action to protect their exclusive rights over that trademark for the specific goods it's
registered for.

ACTION OF PASSING OFF: [Section 27]

• If a trademark isn't officially registered, nobody can start a legal action to stop others
from using it or claim compensation for its unauthorized use. However, this law doesn't
stop anyone from taking legal action if someone tries to sell goods or services as if
they're from someone else, or from seeking remedies for unregistered trademarks.
[Section 27]

• Passing off is when someone sells their goods as if they're from someone else to benefit
from that other person's good reputation. It's a wrongful act under tort law, mainly
decided by judges. The Trademark Act mainly focuses on the procedures and solutions
for passing off cases.

For a valid claim of passing off, certain key elements need to be met: (1) There must be false
representation; (2) made by someone while doing business; (3) to potential buyers of their
products or services; (4) aiming to harm another trader's business or reputation; and (5) which
actually harms or likely will harm the business or reputation of the trader filing the claim.

However, the person being accused (defendant) can present valid defenses in a passing off case,
such as: (1) if the mark or name they're using isn't unique; (2) if their use of the mark or name
isn't likely to confuse customers into thinking they're buying the plaintiff's goods; (3) if their
goods or business are completely different from the plaintiff's; (4) if they haven't misled anyone
or harmed the plaintiff's reputation; and (5) if the plaintiff shouldn't get relief because of delay,
estoppel, or agreement to the defendant's actions over time.