FREQUENTLY ASKED QUESTIONS

The Act permits a person who has already used the trade mark to file such application. Section 18 of the Trade Marks Act, 1999 also permits a person who proposes to use the trade mark in future to also apply for registration of a trade mark. The Hon’ble Division Bench of Delhi High Court in the case titled as Shri Dalip Chand Aggarwal and Others trading as New Era Electric Works, Delhi Vs. M/s Escorts Limited, New Delhi reported as 1981 PTC(1) was pleased to observe (page no. 5)

“——————————————— It is well settled that when a person like the appellant applies for registration of his mark, he bears the burden of satisfying the Register who has to be satisfied, whether having regard to the reputation acquired by use of a mark or a name, the mark at the date of the application for registration if used in a normal and fair manner in connection with any of the goods covered by the proposed registration, will not be reasonable likely to cause deception and confusion amongst a substantial number of persons. ————————————————”

The following flowchart is relevant: Office actions in processing applications for registration of trademarks

Section 19 and Section 20 of Trade Marks Act, 1999 provides for withdrawal of acceptance and even the advertisement. The Hon’ble Delhi High Court in case titled Ashoka Dresses vs. Bonn’S Shirts and Ors. as reported as 2000(56) DRJ 580 was pleased to observe:-

“8. ———————————————It is not in dispute that in the advertisement there was mis- representation and Therefore, the said advertisement had to be cancelled inasmuch as an advertisement of a trade mark is the notice to the world at large which is intended to provide complete information in respect of the mark which has been applied for registration and is likely to proceed for registration. A defective advertisement could create confusion and uncertainties in the mind of the general public and therefore, such an advertisement was not a fair representation to the public at large. Therefore, no fault could be found with the action of the Registrar in cancelling the advertisement, for it was necessary for him to put the record straight and get an advertisement done legally and in the appropriate form. ————————————————”

In the previous Trade and Merchandise Act 1958, there was a Section12(2) which provided as under: Section 12 in the trade And Merchandise Marks Act, 1958 “12. Prohibition of registration of identical or deceptively similar trade marks. 12 (1)———————————————– (2) Where separate applications are made by different persons to be registered as proprietors respectively of Trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any. ———————————————– The said section is not available in the new Act but Section 11(2) of the Act which provides for relative grounds of refusal provides: “————————————————2. A trade mark which— (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due course would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. ———————————————–” The Hon’ble Delhi High Court in case titled as The Narang Industries Limited vs. Mohan Gold Water Breweries Ltd. and Anr. reported as 1998 PTC (18) 755 was pleased to observe:- “———————————————-Both the applications indicated proposed user and not the actual user on different dates in their advertisement. In such circumstances, u/s. 12(2), the Assistant Registrar should have deferred the application of the respondent until after determination of the proceedings in respect of the application of the petitioner. Subsequently filed application of the respondent should have been disposed of in the light of the evidence rendered in relation to the earlier application moved by the petitioner and the opposition thereto. However, it is said that no opposition was filed to the application moved by the petitioner/appellant. Even then it would appear that the application of the applicant being filed earlier subsequent application of the respondent should have been deferred till the disposal of earlier application with or without opposition by the Assistant Registrar.” ———————————————–”
The life of a trade mark is ten years from the date of application. A trade mark application first must be granted registration but once registered, the calculation of time for 10 years has to be calculated from date of application. In the case titled as Gopal Ji Gupta vs. Union of India and Ors. reported as 259 (2019) DLT 74, the Hon’ble Court followed earlier judgments of the Hon’ble Court and observed as under: “———————————————–12. This position arises from the judgment of a Coordinate Bench of this Court in the case of Malhotra Book Depot vs. Union of India and Ors., W.P. (C) 7882/2010, decided on November 29, 2011. The said decision was taken in appeal before the Division Bench being LPA 564/2012 Union of India and Ors. v. Malhotra Book Depot, decided on February 27, 2013 wherein it was noticed that the learned Single Judge had inter alia held as under: “(a). that the Registrar in its counter affidavit, in response to the unequivocal plea in the writ petition, that the Notice in Form O3 was not received by the respondent, had merely stated that removal of the mark could not have been done without following the due process as per the provisions of law and had thus made only a presumptive statement; further, the Registrar in para 7 of the counter affidavit had admitted that in various cases O-3 Notices had not been issued; the learned Single Judge thus concluded that in the respondent’s case 0-3 Notice had not been issued as provided for in Rule 67; (b). that under Section 25 of The Trade and Merchandise Marks Act, 1958 (the Act) (which was applicable in the year 1984 when the Registration of the mark of the respondent expired), the application for renewal of the registration could be made upon receipt of the Notice in Form O-3; (c). that the Registrar could remove the Trademark from the Register and advertise the factum of removal in the Journal only after a Notice in Form O3 had been issued; (d). that the removal of the registered Trademark from the Register entails civil consequences for the registered proprietor of the mark; (e). the said removal of the registered Trademark cannot be done without prior notice to the registered proprietor in the prescribed form; (f). mere expiration of the registration by lapse of time and the failure of the registered proprietor of the Trademark to get the same renewed, by itself, does not lead to the conclusion that the same can be removed from the Register by the Registrar of Trade Marks without complying with the mandatory procedure prescribed in Section 25(3) of the Act r/w Rule 67 of the Rules; (g). removal of the registered Trademark from the Register without complying with the mandatory requirements of Section 25(3) would itself be laconic and illegal; (h). that the plea of the Registrar that the application for restoration and renewal of the mark was beyond the time prescribed in Section 25(4) and Rule 69 could not be accepted because the removal of the mark from the Register was not in terms of Section 25(3) r/w Rules 67 & 68; (i). that under the Act and the Rules, mere lapse of the time does not result in its removal and for which Notice in Form O-3 is required to be given; (j). that in the facts of the present case, since the mandatory Notice in Form O-3 had not been given prior to the removal of the mark, the application seeking its restoration and renewal could not be said to be barred by time. ———————————————- 14. In view of the position of law, it is clear that the mark cannot be removed from the Register of Trademarks without compliance with the provisions of Section 25 and Rule 67 of the Rules of 1959 which is akin to Rule 64 of the Trademarks Rules, 2002, which were in vogue when the impugned action was taken and there is no dispute that such a procedure was not followed.”
It was decided in the case titled as Visakha Chemicals vs. Mala Ram and Sons reported as 2006 (32) PTC 441 as under: “———————————————–21. The aforesaid defense raises a question as to what rights are conferred on account of registration of copyrights and what exactly the nature of copyright is. The relevant provisions regarding the registration of copyrights are Sections 44 and 45 of the Copyright Act. Section 44 says that there shall be kept at the copyright Office register in the prescribed form to be called register of copyright. Section 45 reads as under: 45(1) The author or publisher of, or the owner of or other person interested in the copyright in any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of the Copyrights for entering particulars of the work in the Register of Copyrights. (2) On receipt of an application in respect of any work under sub section (1), the Registrar of Copyrights may, after holding such inquiry as he may deem fit, enter the particulars of the work in the Register of Copyrights. It is apparent from a plain reading of Section 45 that it is discretionary with any author of any work to apply for the registration of copyrights and that registration as such does not confer any rights. There is no other provision at all in the Copyright Act which confers rights on account of registration of copyright. Therefore, copyrights exist whether the registration is done or not an the registration is merely apiece of evidence as to when a certain author started claiming copyrights in some artistic or some other work. 22. When the registration does not confer any rights it is to be seen as to how copyrights in favor of a person come into existence. Section 13 of the Copyright Act gives a clue as to how a copyright is acquired. It say that copyright shall subsist throughout India, inter alia, in case of original literary, dramatic, musical and artistic works. Therefore, emphasis is on the originality. It is, Therefore, that artistic work which is original in which copyrights can vest. ————————————————”
Yes, a trade mark whether registered or unregistered can be assigned or transmitted. Assignment is an act of man i.e. sale of trade mark etc. But transmission is by operation of law. Case law that has been developed whereby it is settled law and procedure that the Registrar of Trade Marks when dealing with any such case of assignment or transmission must issue prior notice to the person who is on the register as proprietor before accepting the request of assignment/ transmission. Hon’ble Delhi High Court in case titled as Akal Mechanical Works Vs. Paras Special Machine Co. and Ors. reported as 65 (1997) DLT 945 observed as follows: “————————————————In my opinion, the point raised by the learned Counsel is no longer rest integra as it has been held by this Court in R. Kishan v. Assistant Registrar Trade Marks, MANU/DE/0059/1969 : AIR1969Delhi324 that it is implicit in the Rules framed under the Act that when an application of assignment or transmission is made by some persons in respect of a trade mark in which the names of certain other persons are shown as registered proprietors, before any action is taken on that application, the persons whose names are already on the register must have notice of that application. It has to be borne in mind that the alteration in the certificate of registration was not merely in the nature of correction of a typographical error or mistake in the recording of entry. The alteration consists in removing the name of respondent No. 2 from the certificate of registration as one of the proprietors of the trade mark and, Therefore, seriously affects the proprietary rights of the respondent No. 2. An order involving such serious consequences could not be passed without complying with the elementary requirements of rules of natural justice. It is well settled that an order made without regard to the principles of natural justice is void. ————————————————” Similarly in case titled as Vetsfarma Limited vs. Vest Pharma Pvt. Ltd. and Ors. reported as 2008 (37) PTC 296. the Hon’ble Intellectual Property Appellate Board was pleased to observe: “————————————————18. A bare perusal of the impugned order would show that the objection raised to the recordal of assignment has been rejected. The documentary evidence filed by the Appellant was “found not “satisfactory”. The reasons for coming to such a conclusion have not been stated in the impugned order nor even a reference has been made to the material based on which the Registrar has come to such conclusion. An omnibus reference in the impugned order to “documentary evidence filed” cannot constitute reference to the materials on record” The impugned order is benefit of any reasons. It is a case of ‘no hearing’ and ‘no reasons’. Undoubtedly the decision affects the Appellant’s proprietary rights adversely as held in Radha Kishen Khandelwal case (supra) 19. For the reasons aforestated I am of the view that when objection to the recordal of assignment was raised by the assignor it was for the Registrar to have heard both the parties on merits after affording them an opportunity of hearing and thereafter disposed of the matter by a reasoned speaking order. This the Registrar failed to do. It must, therefore, be held that the impugned order cannot be sustained and must be set aside. ————————————————”
The Hon’ble Division Bench of Delhi High Court (in a case where the owner of P.P. Jewellers was challenging the use of trademark by a company P.P. Buildwell Pvt. Ltd. who was involved in construction business) was pleased to observe: “————————————————23. As far as the case on hand is concerned, PPJPL has been using for its jewellery trade the mark “PP Jewellers” or “PPJ” and not merely the letters PP. The brochure produced by the plaintiff in respect of the commercial complex at Pitampura shows the use of the mark “PP Towers” as a composite mark and the logo PPT. The word PP is not separately used even in the logo. The application forms issued by LR Builders for allotment of shops/office in PP Towers also reflects the same mark. Even the advertisements show that the mark was written as PP Towers and the logo as PPT. Therefore, what was being used by the plaintiffs as far as the construction activities were concerned was the composite mark PP Towers. The Defendants on the other hand uses PP as part of their corporate names PP Buildwell and PP Prime Properties. PP Prime Properties have shown that they use their corporate name on the letter head by writing their full name as Prime Properties and Promoters Pvt. Limited and it is the only in the pentagonal shaped ring that the logo with the words “PP” is used. Even this is presented very differently from the way PPJPL uses the logo PPJ or PPT. Also, PPJPL applied for registration of the mark “PP” under Class 37 only on 27th August 2004 and it stated therein that it only “proposed to use” the mark even as of that date. It is stated by learned Counsel for the plaintiffs that since then PPJPL has filed an application for amending the date of user as from 1998. Nevertheless, the plaintiffs have not shown that they used the letters PP per se from that date. Consequently it is not possible to agree with the contention of learned Counsel for the plaintiffs that “PP” by itself is a distinctive letter mark and is entitled to protection against passing off. ———————————————— 25. The profile of customers going in to purchase or book commercial spaces in malls has to be kept in mind while deciding whether there is likelihood of deception or confusion. In Harrods Limited v. Harrodian School Limited [1996] R.P.C. 697 the question was whether the proposal by the Defendant to use the name “The Harrodian School” was with the deliberate intention of deceiving the public and trading on the reputation of Harrods. a world famous departmental store in London. The Court of Appeal thought not. Lord Justice Millet said (at page 718): I am also satisfied that, even if there is scope for some limited confusion to linger in the public mind, the plaintiffs have not discharged the heavy burden of establishing a real likelihood of more than minimal damage to the plaintiffs. goodwill. I ask myself what would happen if the defendants. school were to go bankrupt or suffer a drug or sex scandal. The attendant publicity might temporarily tarnish Harrods. good name; but I cannot see any real danger that a material number of Harrods. customers would withdraw their custom. Anyone who was under the mistaken impression that Harrods was responsible for the school would surely say to myself: “They obviously have no idea how to run a school. I always thought they were foolish to try; a cobbler should stick to his last. But they run an excellent store. This wont stop me shopping there.” Damage to goodwill is not confined to loss of custom, but damage to reputation without damage to goodwill is not sufficient to support an action for passing off. The question of customers seeking commercial spaces in shopping malls named North ex Mall or West End Mall mistaking PP Buildwell or PP Prime Properties to be PPJPL or the spaces being offered there to be in PP Towers or by PPJPL is highly unlikely. ————————————————”
In the case of Mex Switchgears Pvt. Ltd. Vs. Max Switchgears Pvt. Ltd. reported as 2014 (58) PTC 136 it was observed by the Hon’ble Court: “————————————————41. It appears that the said provision of sub-section (2) of Section 20 was incorporated in order to avoid the civil litigation before the Court and duty was cast upon the Registrar of Companies to apply its mind at the time of granting the registration of the name of the company. In the present case, it is undisputed fact that when the defendant company was incorporated in the year 2007, the plaintiff was registered proprietor of two trade marks. The trade marks and trade names used by both the parties are almost identical, thus, it is evident that the Registrar of Companies granted the registration contrary to Section 20 of the Indian Companies Act. The Registrar of Company by complying the provisions of Section 20(2) (ii) obtained the search report from the office was Trade Marks Registrations, the registration of the name of the company of defendant No. 1 would not have been issued under the mandatory provision and litigation could have been avoided however, it did not happened despite of direction issued by the Apex Court and in various other cases and mandatory provisions of various Acts. Thus it appears to Court that use of corporate name which formed part of a similar registered trademark of the plaintiff amounts to infringement and passing off the registered trademark of the plaintiff. ————————————————”

In the case of Mex Switchgears Pvt. Ltd. Vs. Omex Cables Industries and Ors. reported as 2018 (76) PTC 209 it was observed:

“———————————————–22. So far as the name is concerned, the plaintiff has pointed out that ‘MEX’ is an essential and important component of its corporate name M/s. Mex Switchgears Pvt. Ltd. The addition of the letter ‘O’ to the trademark ‘MEX’ by the defendants in their trade name makes no difference at all; that the use of the word OMEX in the trade name by the defendant No. 1 would cause grave deception and confusion to the public; that the trademark OMEX has been used on identical goods being sold through the same trade channel is bound to cause tremendous confusion and deception. The triple identity test of identical goods, identical trade marks and identical trade channels are fully satisfied in the present case and that the defendants have sought to adopt the trademark OMEX with the sole object to seek illegal profits by passing off its inferior goods as the goods of the plaintiff. As such, the plaintiff has brought, against the defendant, the present action, alleging infringement as well as passing off. ————————————————–

33. In order to test a case of infringement of a trademark, only trademarks are to be compared by the court and in case registration stands granted in favour of the plaintiff, he acquires valuable rights by reason of the registration. While judging the question as to whether the defendant has infringed the trademark by colourable imitation of the mark or not, the court has to consider the overall impression of the mark in the minds of general public and not by merely apportioning dissimilarities.

34. In the present matter, it is not disputed that the defendant is using the trademark OMEX for the same goods as those of the plaintiff as a registration of trademark ‘MEX’. There is therefore, a statutory protection so far as the use of the trademark ‘MEX’ in respect of the goods are concerned. So far as the plaintiffs claim of infringement of the trademark is concerned, the question which has to be considered is as to whether the mark of ‘OMEX’ is deceptively similar to the registered trademark ‘MEX’ of the plaintiff which he is entitled to protect by a granting of an injunction in his favour.” ———————————————-”

In the case titled as Lowenbrau AG and Ors. vs. Jagpin Breweries Ltd. and Ors. reported as 2009 39 PTC 627 DEL., it has observed: “———————————————-11. Section 28 of the Act while referring to rights conferred on registration begins with the words ‘registration of trade- marks shall, if valid,… ‘Rights under Section 28 flow when the registration of the mark is valid. Registration is only prima facie evidence of its validity Refer, P.M. Diesels Pvt. Ltd. v. Thukral Mechanical Works reported in MANU/DE/0238/1988 : AIR1988Delhi282. 13. A defendant can set up a defence challenging validity of registration as provided in Section 124 of the Act but the civil court trying the suit is mandated to stay the suit when in defence plea of invalidity of registration is raised, to await outcome of the rectification proceedings and if no proceeding is pending and the court is satisfied that the plea of invalidity is prima facie tenable, adjourn the case for a period of three months from the date of framing of the issues to enable the defendant to approach the authorities for rectification of the registration. Thereafter on filing of an application for rectification trial in the suit is to be stayed till disposal of the rectification proceeding (see, Section 124(2) of the Act). Sub-section 4 of Section 124 states that the suit will be disposed of on the basis of the order passed by the authorities and the question of validity of registration will be binding on the court. Sub-section (5) to Section 124, however, stipulates that the civil court will be competent to pass an interlocutory order even when procedure under Sub-sections 1 to 4 is to be followed and order of the Registrar/authorities is awaited and the suit is stayed. ————————————————”

The Hon’ble Supreme Court in case of Vishnudas Trading as Vishnudas Kishandas vs. Vazir Sultan Tobacco Co. Ltd., Hyderabad and Ors. reported as (1997) 4 SCC 201 was pleased to observe:

“————————————————Looking to the Scheme of the registration of trade mark as envisaged in the Trade Marks Act and the Rules framed there under, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances. ————————————————”

Further, the Hon’ble Supreme Court in Patel Field Marshal Agencies and Another vs. P.M. Diesel Limited and Others reported as (2018) 2 SCC 112 was pleased to observe:

“————————————————34. The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Section 46 and 56 provide and independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the civil court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the civil court is satisfied that an issue with regard to invalidity ought to be framed in the suit. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the civil court. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive. ————————————————”

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