It is not a registered trademark. To be registrable, the mark must be distinctive and must not be similar to any other registered trademark for the same or similar products or used by a competitor, whether registered or not. In the case of a similar mark used by a competitor but not registered, registration difficulties will only arise if the owner of the mark chooses to oppose the registration. When choosing a mark, therefore, one has to see whether the mark meets the distinctiveness requirement contained in section 9 of the Trade Marks and Goods Act 1958. This is not very difficult. Subsequently, the applicant must verify, to the extent possible, whether a similar mark has been registered or used by others for similar products. The applicant may perform a search in the indexes maintained for public inspection at the Trademark Office with or without the professional assistance of trademark law professionals. Alternatively, a search report can be requested from the Registrar of Trademarks on the prescribed form. It may be advisable to do both, as it will provide some sort of proof of the applicant’s good faith in adopting the mark, which is very important. When choosing a trademark, it is dangerous to start with an existing trademark and then make modifications. However, after independently adopting the mark, it must be determined whether a similar mark has been registered or used or whether registration has already been applied for. If investigations reveal the existence of a similar brand, it is best to discard the chosen brand and start the whole process over. It is not always easy to decide if two brands are similar. The best way to determine the question is to consider one’s reaction and apply common sense.

Basic Principles of Trademark Registration

The purpose of the Law on Trademarks and Merchandise is to provide for the registration and better protection of trademarks and to prevent the use of fraudulent marks on merchandise. In line with this objective, the following fundamental principles of trademark law are enshrined in the different provisions of the Law:

(i) Since the registration confers on the holder a kind of monopoly right over the use of the mark which may consist of a word or symbol legitimately required by other merchants for commercial or bona fide commercial purposes, certain restrictions are necessary on the class of words or symbols over which such a monopoly right may be granted. Therefore, descriptive words, surnames and geographical names are not considered prima facie registrable (see Section 9 of the Trade Marks and Merchandise Act 1958).

(ii) The registration of a trademark must not interfere with any person’s bona fide use of his own name or that of his place of business, or the use of any bona fide description of the character or quality of the goods. . (See Section 34 of the Act)

(iii) Property rights in a trademark acquired by use are superior to similar rights obtained by registration under the Law. It therefore follows that prior users of trademarks should be protected against any rights of monopoly granted under the Charter (see Section 33 of the Act)

(iv) Obviously, there are two main interests that must be protected when a trademark is filed for registration. First is the interest of the public. A trademark should not be registered if its use could mislead the public as to the origin of the products it is purchasing. There are also the interests of other merchants who have the right to object if the use of the trademark proposed for registration will be calculated to allow the applicant’s products to be passed off to the public as such products of other merchants. Therefore, the registration of a trademark that is similar to a trademark already registered or used for similar products will not be allowed. (See Section 11 and 12 of the Law)

(v) It may happen that a trader has honestly used a mark for several years even though another identical or similar mark has been registered or used by another. Obviously, it will cause hardship for such a trader if it is deprived of the benefits of registration. Therefore, there is a provision for the registration of such marks subject to appropriate conditions and limitations. (See Section 12(3) of the Act).

(vi) In general terms, the life of a trademark depends on its use; and continued lack of use can lead to your eventual death. Therefore, there is no equitable or logical basis for the continuation of the protection granted by the registration when the mark is no longer in use for a sufficiently long period. The principle is recognized in the Law by providing for the removal of a trademark from the registry for lack of use. (See Section 46 of the Act)

(vii) A trademark is recognized as a form of ownership. The term “trademark owner” is used in the definition of a trademark and also in various other provisions of the Act. It must therefore be assignable and transferable as in the case of other forms of ownership. Taking into account the peculiar nature of this property, the Law has taken care to impose various restrictions and conditions for the assignment or transfer of property rights over a registered or unregistered trademark. (See Section 36-44 of the Law)

(viii) The granting of the benefits of registration under the Statute is not only a matter of interest to the registrant, it is a matter of interest to the public as well. Therefore, it is necessary that any member of the public who wishes to oppose the registration be allowed to do so. Consequently, the Law provides for the publicity of the application and the opposition to it by any interested party. (See Section 20 and 21 of the Law).

Non-registrable trademarks

The following brands are not registrable:

(i) a mark the use of which could be misleading or confusing; (Section 11(a) of the Act.)

(ii) a mark the use of which would be contrary to any law in force at the time (See Section 11(b) of the Act)

(iii) a mark that includes or contains scandalous or absent material; (See Section 11(c) of the Act)

(iv) a mark comprising or containing any material likely to harm the religious sensibilities of any class or section of the citizens of India; (See Section 11(d) of the Act)

(v) a trademark that would lose the right to protection in a court of law; [Section 11(e) of the Act.]

(vi) a mark that is identical or deceptively similar to a trademark already registered with respect to the same products or products of the same description; [Section 12(1) of the Act.]

(vii) a word that is in the accepted name of any individual chemical name or chemical compound in respect of chemical substances; [Section 13 of the Act.]

(viii) trademarks prohibited by the Emblems and Names Law.

If a trademark proceeds, within the prohibition of any of the previous categories, it arises for consideration at the time of the examination of the application by the Registrar, the opposition and rectification procedures and the actions of infringement and usurpation.