UNIT-4 INTELLECTUAL PROPERTY LAW

UNIT-4

Table of Contents

QUESTION – Discuss the grounds and procedure of rectification and correction of Register of Trademark.

Rectification and Correction of Register of Trademark – Detailed Explanation

Under The Trade Marks Act, 1999

🔹 What is Rectification of Trademark Register?

Rectification means correcting an error or removing an entry wrongly made or wrongly remaining in the Register of Trademarks. The Trade Marks Act, 1999, provides a mechanism to maintain the integrity and accuracy of the Register.

The Register of Trademarks contains details of all registered trademarks including names, addresses, class, conditions, and more.

🔹 Statutory Provisions:

The provisions for rectification and correction are given under:

  • Section 57 – Power to cancel or vary registration and to rectify the register
  • Section 58 – Correction of register
  • Section 125 – Jurisdiction of High Court in rectification matters

🔸 Grounds for Rectification of Trademark [Section 57]

Any person aggrieved may file an application for rectification on the following grounds:

  1. Error or Defect in Registration:
  • Entry was made without sufficient cause or is wrong.
  • Example: Similar trademark registered wrongly despite existing trademark.
  1. No Bona Fide Use:
  • Trademark has not been used for a continuous period of five years from registration (as per Section 47(1)(b)).
  • It can be removed for non-use.
  1. Trademark Registered with Misrepresentation:
  • Registration obtained by fraud or misstatement of facts.
  1. Trademark is Liable for Removal:
  • The mark has become generic or misleading.
  • It may also be contrary to public policy or morality.

🔸 Grounds for Correction of Register [Section 58]

  • Clerical or administrative errors in the register.
  • Change in name or address of the registered proprietor.
  • Alteration of details in accordance with prescribed conditions.

This can be done voluntarily by the proprietor or on order of the Registrar.

🔹 Procedure for Rectification / Correction

1. Who can file?

  • Any aggrieved person (including the trademark owner, licensee, or a third party).

2. Where to file?

  • Application can be made to:
  • The Registrar of Trademarks
  • Or the High Court (in cases of infringement + rectification) [Section 125].

3. Filing Form:

  • Form TM-O (Application for rectification of register).
  • Accompanied with prescribed fee.

4. Notice and Hearing:

  • The opposite party is given a chance to file a counter-statement.
  • Evidence may be filed by both parties.
  • Hearing is held before Registrar/Tribunal passes the final order.

🔸 Case Laws on Rectification

1. Bata India Ltd. v. Pyare Lal & Co. [AIR 1985 All 242]

  • The court restrained the use of a deceptively similar trademark and rectified the Register.

2. Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. [(2003) 11 SCC 92]

  • Supreme Court held that non-use of trademark for over five years entitled the aggrieved party to seek rectification and removal.

🔹 Important Notes:

  • Rectification is not merely a technical correction; it may involve cancellation or alteration of rights.
  • High Courts have the power of judicial review over the Registrar’s decision.

✅ Conclusion

Rectification and correction of the trademark register ensure the accuracy, legitimacy, and transparency of the trademark system. It helps remove unused, fraudulently registered, or erroneous entries and protect the interests of genuine trademark owners and the public.

QUESTION-What is Trademark? Examine the procedure of Assignment and Transmission of Trademark.

✅ What is a Trademark?

A Trademark is a visual symbol in the form of a word, name, label, logo, device, signature, numerals, or combination of colours used by a business to distinguish its goods or services from those of others.

📘 Definition under the Trade Marks Act, 1999

Section 2(1)(zb) defines “trademark” as:

“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 colours.”

🔍 Essential Characteristics of a Trademark:

  • Distinctiveness: Must distinguish the goods/services of the proprietor.
  • Graphical Representation: Capable of being graphically represented.
  • Used in the course of trade: Must be used or intended to be used in commerce.
  • Legally registered or acquired through use.

🔄 Assignment and Transmission of Trademark

Assignment and Transmission refer to the transfer of ownership or rights in a trademark.

📌 A. Assignment of Trademark

Assignment means voluntary transfer of trademark rights by the trademark owner to another person, with or without the goodwill of the business.

  • Section 37 – Power of registered proprietor to assign
  • Section 38 – Assignability and transmissibility of registered trademarks
  • Section 39 – Assignability of unregistered trademarks
  • Section 40–41 – Restrictions on assignment creating multiple exclusive rights or confusion

✅ Types of Assignment:

TypeDescription
1. With goodwillTransfer of trademark along with the business reputation
2. Without goodwillTransfer only of the trademark, not the business
3. Complete AssignmentFull rights are transferred
4. Partial AssignmentRights are transferred for specific goods/services or area only

📌 B. Transmission of Trademark

Transmission means involuntary transfer due to operation of law such as:

  • Death of the trademark owner
  • Insolvency
  • Succession
  • Merger or amalgamation of companies

Governing provision: Section 2(1)(zc) – defines “transmission”.

📝 Procedure for Assignment & Transmission

1. Drafting an Assignment Deed

  • Must be in writing
  • Contains terms: type of assignment, consideration, territorial scope, goodwill (if any)

2. Application to the Registrar

  • Form TM-P (for assignment or transmission)
  • Submit along with:
  • Assignment deed
  • Affidavit
  • Power of attorney
  • Proof of title

3. Registrar’s Discretion [Section 45]

  • Registrar examines the application.
  • If deemed fit, enters the assignee as the new registered proprietor in the Register of Trademarks.

4. Time Limit

  • Application must be filed within 6 months from the date of assignment.
  • Can be extended up to 12 months with the Registrar’s approval.

📚 Case Law:

Tech Plus Media Pvt. Ltd. v. Jyoti Janda (2014)
Held that rights in trademarks can be assigned either with or without goodwill and such assignment must be properly registered to enforce rights.

✅ Conclusion:

Assignment and transmission are vital for commercializing trademarks and ensuring that the rights can be passed on, either voluntarily or legally. The law provides for a structured and regulated procedure to protect the interests of both assignors and assignees, as well as the public.

QESTION-Explain the objects for enacting Trademark Act.

✅ Objects for Enacting the Trade Marks Act, 1999 – In Detail (with Case Laws)

The Trade Marks Act, 1999 was enacted to consolidate, amend, and modernize the previous trademark laws in India. It aligns Indian trademark law with global intellectual property standards, particularly the TRIPS Agreement (1995) under the WTO.

🎯 Key Objectives of the Trade Marks Act, 1999

  • The Act provides statutory rights to trademark owners and protects them from unauthorized use by others.
  • It recognizes trademarks as intellectual property and ensures proprietors have exclusive rights.

🔹 Case Law:
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73
The Supreme Court held that protection of trademarks is necessary to avoid confusion or deception in the minds of the public and to safeguard the interests of the trademark owner.

2. To Prevent Unfair Competition and Consumer Confusion

  • Prevents passing off and infringement that may cause the public to confuse one product or service for another.
  • Protects consumers by ensuring source identification.

🔹 Case Law:
Bajaj Electricals Ltd. v. Metals & Allied Products (1992)
Held that trademark protection also safeguards the reputation of the brand and the expectation of the consumer.

3. To Facilitate Registration and Administration of Trademarks

  • Provides a systematic process for registration.
  • Establishes the Trademark Registry and Register of Trademarks.
  • Allows for evidence of ownership in disputes.

🔹 Relevant Sections:
Section 3–8: Administration, appointment of Registrar, and maintenance of Register.

4. To Comply with International Agreements (TRIPS/WTO)

  • Brings Indian law in conformity with global IP frameworks.
  • Enables reciprocal protection of trademarks between India and other countries.

🔹 Example:
India became TRIPS compliant by protecting service marks, recognizing well-known marks, and extending protection to foreign trademarks even if they are not registered in India.

5. To Recognize and Protect Well-Known Trademarks

  • Protects globally reputed trademarks from misuse even in unrelated classes.

🔹 Case Law:
Daimler Benz v. Hybo Hindustan (1994 PTC 287)
Delhi High Court restrained a defendant from using the “Benz” mark for undergarments, recognizing the international repute of the original.

6. To Allow Assignment and Licensing of Trademarks

  • Legalizes and regulates transfer and use of trademarks through assignment or licensing.
  • Encourages franchising, brand expansion, and business development.

🔹 Sections 37 to 45 – Cover assignment and transmission of trademarks.

7. To Provide Effective Remedies Against Infringement

  • Allows for civil and criminal remedies in cases of trademark infringement.
  • Provides for damages, injunctions, and account of profits.

🔹 Section 135 – Relief in suits for infringement or passing off.

8. To Promote Trade and Economic Development

  • Trademarks serve as a tool for marketing and brand-building.
  • A strong trademark system helps enhance foreign investment, exports, and consumer trust.

🔹 Economic Rationale:
Recognizing trademarks helps SMEs and startups to grow their brand equity, ensuring economic competitiveness.

✅ Conclusion:

The Trade Marks Act, 1999 is a progressive statute aimed at protecting brand identity, promoting fair competition, safeguarding consumer interest, and aligning Indian IP law with international standards. Its objectives reflect a balance between the rights of trademark owners and public interest.

QUESTION- How to obtain trademark? Explain effects of registration.

✅ How to Obtain a Trademark & Effects of Registration (with Sections & Case Laws)

🔷 I. Procedure to Obtain a Trademark under the Trade Marks Act, 1999

The registration of a trademark in India is governed by the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. Registration provides statutory protection and exclusive rights over the mark.

📝 Step-by-Step Procedure for Trademark Registration

  • Before applying, conduct a trademark search (online at IP India’s website) to ensure the mark is unique.

2. Filing of Application

📜 Section 18

  • The applicant must file Form TM-A with details like:
  • Trademark,
  • Class of goods/services (based on Nice Classification),
  • Proprietor’s information.

🏛️ Filed at the Trademark Registry Office (depending on jurisdiction).

3. Examination by Registrar

📜 Section 19 & 20

  • Registrar examines whether the application:
  • Is distinctive,
  • Does not conflict with existing marks,
  • Complies with Sections 9 (absolute grounds) & 11 (relative grounds) of the Act.

4. Publication in the Trademark Journal

📜 Section 20

  • If accepted, the trademark is published in the Trademark Journal to allow objections from the public.

5. Opposition by Third Party (If any)

📜 Section 21

  • Within 4 months of publication, any person may file a notice of opposition.
  • If opposed, the applicant must file a counterstatement, leading to a hearing.

6. Registration of Trademark

📜 Section 23

  • If there is no opposition or it is decided in favor of the applicant:
  • The trademark is registered.
  • A Certificate of Registration is issued with the seal of the Trademark Registry.

7. Duration and Renewal

📜 Section 25

  • Trademark is registered for 10 years.
  • Can be renewed indefinitely for further 10-year periods.

🔶 II. Effects of Registration of Trademark

1. ✅ Exclusive Right to Use the Trademark

📜 Section 28(1)

  • The registered proprietor gets exclusive rights over the trademark in relation to goods/services.

📌 Case Law:
Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145
SC held that domain names can be protected as trademarks if they distinguish goods/services.

2. ✅ Right to Take Infringement Action

📜 Section 29

  • The owner can sue for infringement when another uses an identical or deceptively similar mark.
  • Civil and criminal remedies available.

3. ✅ Right to Assign and License the Trademark

📜 Section 37–42

  • Owner can assign (sell) or license (authorize use) to third parties, monetizing the mark.

4. ✅ Right to Use ® Symbol

  • Only registered trademarks can use the ® symbol.
  • Unregistered marks can only use ™.

5. ✅ Better Brand Protection in International Markets

  • Trademark registration facilitates international filing under Madrid Protocol via WIPO.

📜 Section 31

  • Registration acts as prima facie evidence of ownership, simplifying burden of proof in disputes.

📌 Case Law:
Bajaj Electricals Ltd. v. Metals & Allied Products (1992)
The Court emphasized that registration gives a presumption in favor of the registered proprietor.

7. ❌ Incontestability Not Absolute

  • Even a registered trademark can be challenged on various grounds (e.g., bad faith, non-use, misrepresentation).

📌 Case Law:
N.R. Dongre v. Whirlpool Corporation AIR 1996 Delhi 367
Court restrained the use of a famous unregistered trademark based on trans-border reputation, showing that registration isn’t always necessary for protection.

🟨 Summary Table

StepSection(s)Description
Filing of applicationSec 18Form TM-A, with goods/service classification
Examination by RegistrarSec 19, 20For compliance with legal grounds
Publication in journalSec 20Open for public objection
Opposition processSec 214-month window for opposition
RegistrationSec 23Trademark entered into register
Duration & RenewalSec 25Valid for 10 years, renewable
Rights of Registered OwnerSec 28–29Exclusive use, legal remedies

QUESTION-What is Trademark? What types of marks are notregistrable?

✅ What is a Trademark? What Types of Marks Are Not Registrable?

(With Sections of Trade Marks Act, 1999 and Relevant Case Laws)

🔷 What is a Trademark?

📜 Definition: Section 2(1)(zb) – Trade Marks Act, 1999

“Trademark” means a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods, packaging, and combination of colours.

✅ It includes:

  • Word
  • Name
  • Symbol
  • Number
  • Design
  • Shape of goods
  • Packaging
  • Sound (e.g., ICICI bank jingle)

🔹 Purpose of a Trademark

  • To indicate origin of goods/services.
  • To protect the reputation and goodwill of a brand.
  • To avoid confusion in the minds of consumers.

🔶 Marks Not Registrable Under the Trade Marks Act, 1999

Trademarks must meet both absolute and relative criteria. If not, they can be rejected or later removed.

🟥 1. Absolute Grounds for Refusal

📜 Section 9 – Trade Marks Act, 1999

These are inherent defects in the mark itself.

a) Lack of Distinctiveness – Section 9(1)(a)

  • If the mark cannot distinguish the applicant’s goods/services.

⚖️ Example: A company trying to register “Water” for bottled water.

b) Descriptive Marks – Section 9(1)(b)

  • Marks that indicate quality, quantity, value, intended purpose, etc.

⚖️ Case Law:
Marico Ltd. v. Agro Tech Foods Ltd. (2008)
The term “Losorb” was held to be descriptive and not inherently distinctive.

c) Customary or Generic Terms – Section 9(1)(c)

  • Common words used in trade practices, like “Best”, “Fresh Milk”.

d) Marks Deceptive or Confusing – Section 9(2)(a)

  • Marks likely to deceive the public or cause confusion.

⚖️ Case Law:
Imperial Tobacco Co. v. Registrar of Trademarks AIR 1968 Cal 582
Deceptively similar mark “Scissors” refused as it misled buyers.

e) Hurt Religious Sentiments or Immoral – Section 9(2)(b) & (c)

  • Marks that offend religious sensibilities or are obscene.

⚖️ Case Law:
Registrar of Trademarks v. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558
Emblems of deity or nation cannot be registered.

🟧 2. Relative Grounds for Refusal

📜 Section 11 – Trade Marks Act, 1999

Relative grounds involve conflict with existing trademarks.

a) Similar/Identical Marks Already Registered – Section 11(1)

  • If a similar mark exists for same goods/services.

⚖️ Case Law:
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73
The SC laid down guidelines for deceptive similarity.

b) Well-Known Trademarks – Section 11(2)

  • Use of well-known marks even in unrelated goods can be refused to protect the mark’s reputation.

⚖️ Case Law:
Daimler Benz v. Hybo Hindustan AIR 1994 Del 239
“BENZ” used for undergarments was disallowed; mark had international reputation.

🟥 3. Other Prohibited Marks

a) Prohibited by Emblems and Names Act, 1950 – Section 13

  • Cannot register:
  • National Flag
  • Names of Government departments
  • Mahatma Gandhi, Jawaharlal Nehru, etc.

b) Marks Resembling Government Symbols or Seals

📜 Section 4 of the Trade Marks Act – Registrar can reject marks resembling official insignia.

📌 Key Case Laws Summary

Case NameHeld
Cadila Healthcare v. Cadila Pharma (2001)Deceptively similar marks cause confusion even in different classes.
Daimler Benz v. Hybo Hindustan (1994)Famous marks enjoy wider protection (BENZ not allowed for underwear).
Imperial Tobacco Co. v. Registrar (1968)“Scissors” rejected – misleading and confusing.
Marico Ltd. v. Agro Tech (2008)Descriptive words like “Losorb” not registrable.
Ashok Chandra Rakhit Ltd. (1955)Marks using religious or national symbols prohibited.

🟩 Conclusion

Trademark registration ensures exclusive legal rights, but the mark must be distinctive, non-deceptive, and not conflict with existing marks. Marks that are generic, offensive, or similar to others are barred under Sections 9 and 11 of the Trade Marks Act, 1999.

QUESTION-What is Trademark? Explain consitions for registration of a Trademark.

✅ What is a Trademark?

With Conditions for Registration under the Trade Marks Act, 1999

🔷 Definition of Trademark

📜 Section 2(1)(zb) of the Trade Marks Act, 1999 defines a trademark as:

“A mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others.”

✔ The “mark” includes:

  • Words
  • Names
  • Symbols
  • Logos
  • Numerals
  • Devices
  • Shapes of goods
  • Packaging
  • Combinations of colours
  • Even sound and smell (in some cases)

🔶 Purpose of a Trademark

  • To indicate source or origin of goods/services.
  • To ensure brand identity and consumer trust.
  • To prevent unfair competition and consumer confusion.

🔷 Conditions for Registration of a Trademark

For a mark to be registered, it must satisfy the following legal conditions under the Trade Marks Act, 1999:

✅ 1. Capability to Distinguish Goods/Services

📜 Section 9(1)(a)
The mark must be distinctive and capable of identifying the goods or services of the applicant.

❌ Generic or common terms like “MILK” or “SOAP” alone are not registrable.

✅ 2. Non-Descriptive Nature

📜 Section 9(1)(b)
The mark should not describe the quality, quantity, intended purpose, value, geographical origin of goods/services.

❌ E.g., “Cold & Sweet” for an ice cream brand may be rejected as it merely describes the product.

✅ 3. No Deception or Confusion

📜 Section 9(2)(a) and Section 11
The mark must not be deceptive, misleading, or cause confusion about the nature, quality, or origin of the goods/services.

⚖️ Case Law:
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001)
Similarity in trademarks can cause medical confusion and is not allowed.

✅ 4. Not Similar or Identical to Existing Trademarks

📜 Section 11(1)
If a mark is identical or deceptively similar to an existing registered trademark in the same or similar class, it may be rejected.

✅ 5. Not Contrary to Public Morality or Religious Sensibility

📜 Section 9(2)(b) and (c)
Marks that hurt religious sentiments, contain obscene matter, or offend public morality are not registrable.

❌ Religious symbols or derogatory content.

✅ 6. Not Prohibited Under Other Laws

📜 Section 13 of the Emblems and Names (Prevention of Improper Use) Act, 1950
Marks containing national emblems, names of government departments, or protected personalities like Mahatma Gandhi, etc., are not allowed.

✅ 7. Proper Application Format

The mark must be:

  • Represented graphically
  • Assigned to a proper class of goods/services (as per NICE Classification)
  • Accompanied by appropriate fees and documents

🔷 Important Case Laws

Case NameKey Takeaway
Cadila Health Care v. Cadila Pharma (2001)Emphasized the risk of public confusion in similar sounding trademarks.
Daimler Benz v. Hybo Hindustan (1994)Well-known marks have wider protection across all classes.
Marico Ltd. v. Agro Tech Foods Ltd. (2008)Descriptive words are not inherently distinctive and not registrable.
Imperial Tobacco Co. v. Registrar of Trademarks (1968)Deceptively similar marks like “Scissors” were disallowed.

🟩 Conclusion

To register a trademark in India, the mark must be distinctive, non-deceptive, morally acceptable, and not conflict with existing rights. The Trade Marks Act, 1999 ensures that trademarks protect both commercial identity and consumer interest.

QUESTIONExplain remedial measures in case of infringement of Trademark.

✅ Remedial Measures in Case of Infringement of Trademark

Under the Trade Marks Act, 1999

When a registered trademark is infringed, the law provides both civil and criminal remedies to the trademark owner. These remedies aim to protect the proprietary rights of the owner and prevent the unauthorized use of a trademark that may cause confusion or deception.

🔷 What is Infringement of Trademark?

📜 Section 29 of the Trade Marks Act, 1999 defines infringement as the unauthorized use of a registered trademark or a mark deceptively similar to it, in a manner likely to confuse or deceive the public.

🔶 Civil Remedies for Trademark Infringement

🧑‍⚖️ Available under Section 134 and Civil Procedure Code

1. Injunction (Temporary or Permanent)

📌 A court can issue an order to restrain the infringer from continuing the use of the infringing mark.

  • Types of Injunctions:
  • Interim injunction (temporary)
  • Permanent injunction (granted after trial)
  • Anton Piller Order: Allows search and seizure without prior notice.

⚖️ Case Law: S. Syed Mohideen v. P. Sulochana Bai (2016)
Supreme Court held that even in the absence of registration, a party with prior use can seek injunction.

2. Damages or Account of Profits

The court may award:

  • Damages to compensate for losses; or
  • Account of profits, which allows the owner to claim profits made by the infringer.

⚖️ Caterpillar Inc. v. Mehtab Ahmed (2002)
Court awarded damages and a permanent injunction in favor of the international brand.

3. Delivery/Destruction of Infringing Goods

The infringer may be ordered to:

  • Deliver up all goods, packaging, and labels bearing the infringing mark.
  • Destroy or erase the infringing material to prevent future misuse.

The court may direct the infringer to pay litigation costs to the trademark owner.

🔶 Criminal Remedies for Trademark Infringement

📜 Under Sections 103–109 of the Trade Marks Act, 1999

1. Imprisonment

  • A person found guilty of falsifying or falsely applying a trademark may be punished with:
    ✅ Imprisonment up to 3 years (minimum 6 months)

2. Fine

  • Fine of up to ₹2 lakh (not less than ₹50,000)

3. Search and Seizure

📜 Section 115
Police officers (not below the rank of DSP) can search and seize infringing goods without warrant, with prior opinion of the Registrar.

⚖️ Case Law: Sony Kabushiki Kaisha v. Mahalaxmi Textiles
The court upheld seizure of counterfeit goods using police powers under Section 115.

🔶 Administrative Remedies

1. Opposition Proceedings

📜 Section 21
Allows the trademark owner to file an opposition during registration of a conflicting mark.

2. Rectification of Register

📜 Section 57
Trademark owner can seek removal or correction of a wrongly registered trademark.

🟩 Summary Table

RemedyTypeSection/Provision
InjunctionCivilSection 134 of TM Act + CPC
Damages or Account ProfitsCivilSection 135
Destruction of GoodsCivilSection 135
ImprisonmentCriminalSection 103
FineCriminalSection 103
Search & SeizureCriminalSection 115
RectificationAdminSection 57

🔷 Conclusion

Trademark infringement is strictly punishable under Indian law, offering robust remedies including injunctions, damages, and criminal penalties. The aim is to deter violators and protect commercial reputation and consumer trust in genuine brands.

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