1.

Lack of distinctiveness (Section 9(1))

A trademark must be able to distinguish your goods/services from someone else’s.

So, trademarks that are:

 Too generic (e.g., trying to trademark the word “Milk” for selling milk),

 Just describing the product (e.g., “Sweet” for chocolates, “Fast” for courier services),

 Common trade terms (words that everyone uses in that business, like “Super” or
“Best Quality”),

cannot be registered.

Exception: If over time, the mark has become strongly associated with your goods/services
(called acquired distinctiveness), then it can still be registered. Also, if it’s a well-known
trademark, it won’t be refused.

2. Marks that can mislead, offend, or are prohibited (Section 9(2))

A trademark cannot be registered if:

 It can deceive or confuse the public (e.g., calling your soap “Medical Doctor Soap”
might mislead people into thinking it has medical approval).

 It can hurt religious sentiments (e.g., using sacred symbols inappropriately).

 It is obscene or scandalous (anything vulgar, offensive).

 It uses things prohibited by law (like national emblems or names protected under
the Emblems and Names (Prevention of Improper Use) Act, 1950 — e.g., you can’t
trademark “Mahatma Gandhi” or the Indian National Flag).

3. Marks based only on the shape of goods (Section 9(3))

You cannot trademark a mark if it is just the:

 Natural shape of the goods (e.g., a banana-shaped banana).

 Shape needed for technical results (e.g., the shape of a LEGO brick, which is
functional).

 Shape that adds value to the goods (e.g., a unique artistic sculpture design on a lamp
that people buy because of its shape).

4. Important Clarification (Explanation)

The fact that your goods/services are of a particular type is not a reason for refusal. The
focus is always on the mark itself, not the goods/services

Section 12 – Honest Concurrent Use

This section is like an exception to Section 11.

Normally, identical or similar trademarks for the same/similar goods can’t coexist. But in
special cases, the Registrar may allow registration for more than one proprietor if:

 There has been honest concurrent use (both parties used similar/identical marks in
good faith, without trying to copy each other).

 Or there are special circumstances that justify it.

Section 11 – Relative Grounds for Refusal

A trademark cannot be registered if:

1. Likelihood of confusion (Section 11(1)):

o If your trademark is identical to an earlier one and relates to similar

goods/services.

o If your trademark is similar to an earlier one and relates to identical or similar

goods/services.

o In both cases, the public may be confused or think the two brands are
connected.
Example: Trying to register “Pepsi+” for soft drinks — clearly confuses with
Pepsi.

2. Well-known trademarks (Section 11(2)):

o Even if your goods/services are different, if your mark is identical/similar to a

well-known trademark, it will be refused.
Example: Registering “Google” for clothing — still not allowed because
“Google” is a well-known mark, and it would unfairly benefit from or harm its
reputation.

3. Conflict with existing rights (Section 11(3)):

o If use of your mark would be stopped under other laws like:

 Passing off (protects unregistered trademarks used in trade).

 Copyright law (you can’t trademark something that infringes

copyright).
 4. Consent exception (Section 11(4)):

o If the owner of the earlier trademark gives consent, the Registrar may allow
registration (under special circumstances – Section 12).

Section 11(5) — Objections under 11(2) & 11(3) need opposition

What it says: A trademark won’t be refused on the grounds in 11(2) (well-known mark
protection across dissimilar goods/services) and 11(3) (passing off/copyright) unless the
proprietor of the earlier right raises an opposition.

Section 11(6) — Factors to decide if a mark is “well-known”

What it says: The Registrar can consider any relevant fact, including:

Recognition of the mark among the relevant public in India (even if via promotion),

Duration, extent, and geographic use,

Duration, extent, and geographic promotion/advertising (incl. fairs/exhibitions),

Duration and geographic registrations/applications reflecting use/recognition,

Enforcement record—how often courts/Registrar have recognized it as well-known.

Section 11(7) — Who is the “relevant section of the public”?

What it says: Consider:

1. Number of actual/potential consumers,

2. Number of persons in distribution channels,

3. Business circles dealing with the goods/services.

Section 11(8) — Once well-known, treat it as well-known

What it says: If any court or the Registrar has determined a mark is well-known in at least
one relevant section of the Indian public, the Registrar shall treat it as well-known for
registration decisions.

Section 11(9) — What is not required to prove “well-known”

What it says: The Registrar must not insist on:

 Use in India,

 Registration in India,

 Filing an Indian application,

 Being well-known/registered/applied abroad, or

 Being known to the public at large in India.

Section 11(10) — Registrar’s duties during examination/opposition

What it says: The Registrar shall:

1. Protect well-known marks against identical/similar marks, and

2. Consider bad faith by either party (applicant/opponent).

Section 11(11) — Good-faith “grandfathering”

What it says: If a mark was registered in good faith (with material facts disclosed) or the right
was acquired through use in good faith before the Act commenced, its validity won’t be
prejudiced merely because it is identical/similar to a well-known mark.

In practice: Older, bona fide registrations/uses are protected even if another brand later
becomes well-known.

Example: A local brand honestly using/registered pre-1999 can retain its rights despite a
later-famed global entrant.

Section 15(1) – Registering parts of a trademark

 Sometimes, a trademark has several elements (e.g., a logo with a word + symbol).

 If the owner wants exclusive rights over a particular part of the mark (say, just the
word), they must apply separately for both the whole trademark and the part.

👉 Example: Suppose your trademark is “TIGER KING – with a Tiger Logo”.

 If you also want rights over just “TIGER”, you must file a separate application for it,
besides the whole logo.

This prevents someone from claiming broad rights over “parts” of a trademark without
properly registering them.

🔹 Section 15(2) – Separate marks must qualify independently

 Each part registered as a separate trademark must meet all the legal requirements of
a trademark (distinctiveness, not prohibited under Sec. 9/11, etc.).

 In other words, the part must itself be registrable — you can’t sneak in a weak/non-
distinctive word by hiding it inside a larger mark.

👉 Example: If your logo has the word “BEST”, you cannot claim exclusive rights over “BEST”
by itself (since it’s descriptive), unless you prove acquired distinctiveness.
🔹 Section 15(3) – Series marks (one registration for variations)

 If you own several similar marks for the same/similar goods/services, you can apply
to register them as a series under one registration.

 The marks must be substantially the same but differ only in minor, non-distinctive
elements, such as:
(a) the statement of goods/services,
(b) numbers, prices, quality, place names,
(c) other non-distinctive matter,
(d) colour.

👉 Example:

 “LUX SOAP ₹5”, “LUX SOAP ₹10”, “LUX SOAP ₹20” → all can be registered as a series
because the difference is only in price.

 “PEPSI (Red Logo)” and “PEPSI (Blue Logo)” → can be registered as a series because
the only difference is colour.

This helps brand owners save costs and effort by not filing separate applications for every
minor variation.

Section 27 – No action for infringement of unregistered trademark

🔹 27(1) – No infringement rights without registration

 If your trademark is not registered, you cannot sue anyone for infringement of it.

 Infringement action is a statutory right — you only get it through registration.

👉 Example: If you use “SUNSHINE” for biscuits but don’t register it, and someone else also
starts using “SUNSHINE,” you can’t file an infringement suit.

🔹 27(2) – But “passing off” action is always available

 Even if you don’t register your mark, you still have the common law right to sue for
passing off.

 Passing off protects the goodwill and reputation of your mark — you can stop others
from misrepresenting their goods/services as yours.

Section 28 – Rights conferred by registration

🔹 28(1) – Exclusive rights

 If your mark is registered (and valid), you get:

 1. Exclusive right to use the trademark in relation to the goods/services for
which it’s registered.

2. Right to sue for infringement if someone uses an identical/similar mark.

👉 Example: If you register “AMUL” for dairy products, no one else can legally use “AMUL” (or
something deceptively similar) for dairy goods without your consent.

🔹 28(2) – Subject to conditions/limitations

 Your exclusive rights may be restricted by conditions attached to registration.

 Example: If your mark is registered only in black & white, your rights may not extend
to a colour version. Or if it’s registered only for “clothing,” you can’t stop someone
using it for “software.”

🔹 28(3) – Co-existence of identical/similar marks

 Sometimes, two or more people are registered proprietors of identical/nearly

similar marks (due to honest concurrent use under Section 12 or special
circumstances).

 In such cases, none of them can claim exclusivity against each other — but they all
have rights against third parties.

👉 Example: Suppose “DELTA” for electronics is honestly registered by two different

proprietors (one in South India, one in North India).

 Neither can sue the other for infringement just because of the registration.

 But both can sue an unrelated third party trying to use “DELTA” for electronics.

Trademark registration process

1. Trademark Search & Clearance

 Begin by checking whether your proposed mark (word, logo, or combination) is

already registered, applied for, or deceptively similar to existing marks.

 Use the public search facility on the IP India portal or request a professional
clearance report for deeper analysis

2. Identify Relevant Class(es)

 India follows the Nice Classification, with 45 trademark classes.

 Choose the class(es) relevant to your goods/services

 3. Prepare the Application (Form TM-A)

 File Form TM-A, the official application form, either online (via IP India e-filing portal)
or physically at your regional Trademark Registry

 Required details include:

o Applicant’s name, address, nationality

o Trademark representation (word/device)

o Class(es) and specification of goods/services

o Whether the mark is in use or proposed to be used

o Priority claim (if applicable)

o Power of Attorney (Form TM-48) if filed by an agent

o Identity, address proof, and business documents (e.g., MSME certificate for
reduced fees)

4. Filing Fees

The fees depend on the type of applicant and filing mode:

 Individuals, Start-ups, Small Enterprises:

o Physical filing: ₹5,000 per class

o E-filing: ₹4,500 per class

 Others (Companies, Organizations):

o Physical filing: ₹10,000 per class

o E-filing: ₹9,000 per class

5. Examination by Registrar

 The Registrar examines the application for compliance with the law (novelty,
distinctiveness, prohibited marks, etc.)

 If acceptable, the application proceeds; otherwise, the Registrar issues an

Examination Report (Office Action) for your reply.

6. Publication in Trademark Journal & Opposition

 If the Registrar is satisfied, the mark is published in the Trademark Journal.

 There is a 4-month window within which third parties can file opposition.

o Fee: Physical – ₹3,000; E-filing – ₹2,700 per class.

  If opposition is filed, you must submit a counter-statement, and case proceedings
may follow.

7. Registration & Certificate

 If no opposition or if you successfully defend it, the mark is registered and a

Registration Certificate is issued.

 Trademark is valid for 10 years from the filing date.

8. Renewal

 To keep your trademark active beyond 10 years, file for renewal:

o Physical: ₹10,000 per class

o E-filing: ₹9,000 per class

o Late renewal surcharge: Additional ₹5,000 (physical) or ₹4,500 (e-filing)

1. Notice of Opposition

 Rule: 42 (Read with Sec. 21, TM Act)

 Timeline: Within 4 months from the date of publication in the Trade Marks Journal.

 Form & Fee: TM-O (₹2,700 e-filing / ₹3,000 physical)

📄 Draft Specification

The Notice of Opposition must include:

1. Grounds of opposition (absolute grounds – Sec. 9, relative grounds – Sec. 11, prior
rights, bad faith, etc.).

2. Details of Opponent: name, address, legal status.

3. Details of opposed mark: application number, class, applicant’s name.

4. Facts relied upon (use of earlier mark, goodwill, reputation, confusion, similarity,
etc.).

5. Relief sought: refusal of application.

⚖️If not filed in time → applicant’s mark proceeds to registration.

2. Counter-Statement

 Rule: 44

 Timeline: Within 2 months of receiving notice of opposition.

  Form & Fee: TM-O (no additional fee if filed in opposition proceeding).

📄 Draft Specification

The Counter-Statement must include:

1. Admission or denial of each allegation in the opposition.

2. Grounds of defence (distinctiveness, honest adoption, prior use, no likelihood of

confusion, etc.).

3. Applicant’s details: name, business, and reasons for entitlement to registration.

4. Supporting documents may be mentioned but evidence is filed later.

⚖️If not filed → application deemed abandoned.

3. Evidence in Support of Opposition

 Rule: 45

 Timeline: Within 2 months of receiving counter-statement.

 Form & Fee: No separate form; affidavit + exhibits filed.

📄 Draft Specification

Opponent files an affidavit with evidence showing:

1. Use of earlier mark: invoices, advertisements, sales figures, promotional materials.

2. Extent of reputation and goodwill.

3. Instances of confusion or misrepresentation.

4. Legal grounds for refusal (e.g., well-known mark, bad faith).

Opponent may also file a statement of “no evidence, relying only on pleadings.”

4. Evidence in Support of Application

 Rule: 46

 Timeline: Within 2 months from opponent’s evidence.

 Form & Fee: Affidavit + documents (no specific form).

📄 Draft Specification

Applicant files evidence to prove:

 1. Honest adoption and continuous use of the mark.

2. Documents of business use: invoices, sales, advertisements, registration certificates.

3. Absence of confusion or distinctiveness acquired.

4. Counter to opponent’s claims (e.g., opponent has weak reputation, descriptive use,
etc.).

Applicant may also waive evidence and rely only on pleadings.

5. Opponent’s Reply Evidence

 Rule: 47

 Timeline: Within 1 month from applicant’s evidence.

 Form & Fee: Affidavit (limited to rebuttal).

📄 Draft Specification

Opponent can only file evidence in reply to applicant’s evidence (no fresh grounds).
Typical content:

1. Countering applicant’s invoices or sales claims.

2. Highlighting discrepancies in applicant’s adoption story.

3. Additional clarifications about earlier reputation.

6. Hearing

 Rule: 50

 Timeline: After completion of evidence. Registrar issues hearing notice.

 Form & Fee: TM-M (to request adjournment / intention to appear) – ₹900 e-filing.

📄 Draft Specification

At hearing, parties must present:

1. Written submissions (case summary, legal grounds, citations).

2. Oral arguments on similarity, confusion, reputation, or distinctiveness.

⚖️If opponent absent → opposition dismissed.

⚖️If applicant absent → application deemed abandoned.
7. Registrar’s Decision

 Registrar decides based on pleadings, evidence, and hearing.

 If opposition succeeds → application refused.

 If opposition fails → application proceeds to registration.

8. Appeal

 Rule: 109 (read with Sec. 91, TM Act).

 Timeline: Within 3 months of Registrar’s decision.

 Forum: Earlier IPAB; now High Courts (after Tribunals Reforms Act, 2021).