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Tag: Indian trademark law

  • DIFEERENCE BETWEEN TM-M AND TM-P

    In today’s competitive marketplace, a trademark serves as the identity of a brand, a visual and legal representation of its reputation, quality, and trust. Registering a trademark is not merely a procedural step but a strategic move to safeguard intellectual property. However, during the filing process or even after registration, applicants sometimes realize there are inadvertent errors or omissions in their application. Indian trademark law provides mechanisms to rectify or modify such details, ensuring accuracy and fairness without compromising the integrity of the registration system. In this article, we will discuss what TM-M and TM-P are, the differences between them, and which changes are permissible and which are not.

    The mechanisms for making changes to trademark applications or registered trademarks are through Forms TM-M and TM-P. These forms allow applicants and registered proprietors to make necessary amendments to their trademark applications or registrations, subject to certain conditions.

    If you are unsure which form to use or how to proceed, TMWala can help you identify the right approach and file the necessary forms accurately to avoid unnecessary rejections or delays.

    UNDERSTANDING FORMS TM-M AND TM-P

    Two of the most versatile forms under the trademark rules are TM-M and TM-P, both of which play crucial roles in correcting or modifying trademark applications.

    FORM TM-M – THE MISCELLANEOUS REQUEST FORM

    Form TM-M, officially titled “Application/Request for Any Miscellaneous Function in Relation to a Trade Mark Application/Opposition/Rectification under the Trade Marks Act,” is used for a variety of purposes. Applicants can submit this form to:

    • Make minor corrections or modifications in a pending trademark application;
    • Request the Registrar’s guidance or reasons for a particular decision;
    • Seek certified copies or extracts from the register;
    • Apply for an extension of time.
    • Request a review of a decision; or
    • Undertake any miscellaneous actions not specifically covered by other prescribed forms.

    Essentially, TM-M is a multipurpose form that allows applicants to address clerical mistakes, seek procedural clarifications, or handle other administrative requirements before registration.

    FORM TM-P – THE POST-REGISTRATION CHANGE FORM

    Once a trademark is successfully registered, any post-registration modifications must be made using Form TM-P. This form covers a broad range of changes, such as:

    • Transfer or assignment of ownership to a new proprietor;
    • Alteration of ownership details or partnership composition;
    • Modification of the registered trademark’s appearance or particulars;
    • Adjustments to the specification of goods and services;
    • Conversion of goods or services classification; or
    • Termination of an association between related trademarks.

    This form ensures that all post-registration modifications are formally recorded, maintaining the accuracy and validity of the trademark register.

    RECTIFICATION AND AMENDMENTS BEFORE REGISTRATION

    Errors are most likely to occur during the filing stage. Fortunately, the law permits applicants to correct such inaccuracies before the trademark is registered. A pre-registration amendment can be requested through Form TM-M, accompanied by the required fee and supporting documents.

    However, it is crucial to understand that only non-substantial modifications that do not alter the fundamental nature of the trademark or its ownership are permitted. For example, correcting typographical errors or updating an address is acceptable, but changing the mark itself or its class of goods and services is not.

    PERMISSIBLE PRE-REGISTRATION MODIFICATIONS

    • Correction of clerical or data entry errors (e.g., “TechWiz” accidentally entered as “TechWiiz”);
    • Updating the applicant’s address or contact information;
    • Deleting or restricting goods or services listed in the application;
    • Dividing a multi-class application into separate filings, or
    • Adjusting the description of goods or services to ensure precision.

    These permissible changes do not affect the mark’s identity or its usage. The Registrar reviews each modification request carefully and decides whether the alteration is minor or material.

    NON-PERMISSIBLE CHANGES

    Certain changes are deemed substantial and therefore cannot be incorporated into an existing application. These include:

    • Altering the word mark, logo, or design;
    • Changing the claimed date of first use;
    • Switching the trademark category (e.g., from a word mark to a device mark);
    • Modifying the class under which the mark was filed; or
    • Significantly revising the mark’s trade description.

    In such cases, a new trademark application must be filed, as allowing these modifications would alter the essence of the mark, potentially affecting third-party rights and public notice.

    REGISTRAR’S ROLE

    PRE-REGISTRATION MODIFICATIONS

    The Registrar of Trademarks holds the discretion to determine whether a proposed amendment is permissible. If the registry identifies errors in a filed application, it may mark the application as “Formalities Check Fail.” The applicant is then notified of the deficiencies and allowed to correct and resubmit the application. This step ensures transparency while preventing fraudulent or misleading alterations.

    POST-REGISTRATION MODIFICATIONS

    After a trademark is registered, changes are governed by a distinct legal framework. Any modification to a registered trademark or its ownership details must be made through Form TM-P. These post-registration amendments typically involve administrative updates rather than design or substantive modifications.

    PROCEDURE FOR FILING A MODIFICATION

    Whether pre- or post-registration, the process for requesting a modification is fairly systematic:

    The process starts by visiting the trademark portal:

    1. Choose the Form: Choose the correct form (TM-M or TM-P) based on the nature and stage of the modification.
    2. Fill the information: Fill in all the information asked in Form TM-M or TM-P.
    3. E-signature: Provide the E-signature and complete the form.
    4. Pay the Prescribed Fee: Fees vary depending on the modification type and mode of filing (online or physical).
    5. Submit to the Registry: Applications can be filed online via the official IP India portal or physically at the relevant office.
    6. Decision and Record Update: Once satisfied, the Registrar records the amendment in the official register and issues an acknowledgment.

    CONCLUSION

    Understanding the difference between Form TM-M and Form TM-P is essential for anyone involved in the trademark process. While Form TM-M is used for making corrections or miscellaneous requests before registration, Form TM-P is exclusively meant for post-registration changes to ensure the trademark record remains accurate and updated. Using the correct form at the right stage not only ensures procedural compliance but also helps maintain the integrity of the trademark register. By following the prescribed procedures and respecting the limits of permissible modifications, applicants and proprietors can safeguard their brand identity, avoid legal complications, and uphold the credibility of their intellectual property.

    With expert guidance from TMWala, applicants and proprietors can file these forms accurately, manage trademark modifications efficiently, and safeguard their brand identity with complete legal assurance.

    FAQs

    1. What is Form TM-M?

    It’s a Form used for corrections or miscellaneous requests before trademark registration.

    1. What is Form TM-P?

    It’s a Form used for making post-registration changes to a registered trademark.

    1. Can I change my logo or word mark using these forms?

    No, major changes like logos or names need a new trademark application.

    1. When should I use TM-M?

    Use TM-M for minor errors, address updates, or extension requests.

    1. How can TMWala help?

    TMWala guides you in choosing the right form and filing it correctly.

  • McDonald Vs McPatel

    INTRODUCTION

    McPatel filed a trademark application (TMA No. 6354343) under Class 30, which McDonald’s Corporation opposed. This case can potentially become a landmark in Indian intellectual property law. Currently being heard in Ahmedabad, it pits one of the world’s most iconic fast-food chains against a regional Indian food company in a dispute over the use of the common linguistic prefix “Mc.” The case raises critical questions about brand identity, trademark exclusivity, and the extent to which international trademarks can be enforced within local markets.

    McPatel Foods Private Limited, an Ahmedabad-based MSME specializing in frozen snacks like French fries under the brand ‘Ohh! Potato’, has filed a civil suit under Section 142 of the Trade Marks Act, 1999. The suit, currently pending before the Ahmedabad District Court, seeks a permanent injunction against McDonald’s Corporation, claiming the American multinational has made groundless threats over the Indian company’s use of the prefix “Mc” in its corporate name and branding.

    This unfolding ‘Mc’ trademark issue goes beyond a routine corporate dispute; it serves as a critical test for how Indian courts may interpret trademark law amid the growing intersection of global commerce and domestic entrepreneurship.

    For businesses caught in such brand-name trademark conflict, professional guidance from an expert team like TMWala can be your business saver.

    BACKGROUND OF THE CASE

    The case began when McDonald’s issued a legal notice to McPatel Foods, alleging trademark infringement and brand dilution. The notice accused McPatel of attempting to benefit unfairly from McDonald’s reputation and goodwill by using the “Mc” prefix, which the global fast-food chain claims as a distinctive and well-known part of its trademark family. McDonald’s argued that “McPatel” could confuse consumers familiar with trademarks like McDonald’s, McChicken, McCafe, and others in its expansive brand portfolio.

    In response, McPatel Foods initiated proceedings under Section 142 of the Trade Marks Act, which allows parties to seek relief from groundless threats related to trademark infringement. The Indian company maintains that the use of “Mc” in its name has no connection to McDonald’s and was derived entirely from its registered business name, “McPatel Foods Private Limited.”

    LEGAL GROUNDS AND TRADEMARK DISPUTE

    The McDonald’s trademark dispute rests on some fundamental principles of Indian trademark law. Under the Trade Marks Act, a valid trademark must be:

    • Distinctive, either inherently or through acquired reputation.
    • Non-deceptive, with no likelihood of confusion with existing trademarks.
    • Non-generic or descriptive, unless proven to have acquired distinctiveness through use.

    McDonald’s contends that its “Mc” family of marks has gained distinctiveness and well-known status under Section 2(zg) of the Act. The brand claims that the prefix “Mc” has been used extensively across various products and services worldwide since the 1970s and in India since 1996. Their argument includes references to advertising campaigns, store presence, celebrity endorsements, and legal enforcement across multiple jurisdictions.

    McDonald’s opposition to McPatel’s trademark applicationfiled in Class 30 for products like noodles, snacks, sauces, bakery goods, and frozen foodsrelies on the assumption that “Mc” is the dominant and source-identifying feature of the mark, and that its adoption by McPatel is in bad faith.

    CASE WENT FROM DELHI TO AHMEDABAD

    As part of the legal procedure, McDonald’s initiated mediation proceedings in the Delhi High Court prerequisite step before launching commercial litigation. However, the mediation process failed, as McDonald’s reportedly insisted that McPatel abandon the use of the “Mc” prefix entirely. After the mediation collapsed, McPatel turned to the Ahmedabad District Court, which has now issued a notice to McDonald’s and scheduled the next hearing for July 28, 2025.

    This case marks a significant development in McDonald’s legal news, as the company is often seen aggressively defending its brand across jurisdictions. However, it also opens larger questions about the limits of trademark protection, especially when it comes to intellectual property conflict in the food industry.

    MCPATEL’S STAND

    In its counterstatement, McPatel strongly refutes all of McDonald’s claims. The company asserts that:

    • Its name was adopted from its registered corporate identity.
    • The mark “McPatel” is visually, phonetically, and conceptually different from McDonald’s trademarks.
    • The ‘Mc’ prefix legal battle should not grant McDonald’s a monopoly over a linguistic construct that has Gaelic roots and means “SON OF”
    • No evidence of actual consumer confusion exists.
    • Its application was accepted after examination by the Registrar without objections.

    According to McPatel’s legal counsel, senior advocate H.S. Tolia, McDonald’s stance is a case of brand name trademark conflict driven by “business jealousy.” He contends that the global chain is using its financial clout to stifle a domestic player trying to carve out a space in India’s rapidly growing processed food market.

    SIMILAR CASES

    The ‘Mc’ trademark issue isn’t the first time Indian courts have dealt with branding conflicts involving prefixes or similar-sounding names. Past decisions help frame the legal debate:

    • Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001): The Supreme Court emphasized the need to prevent consumer confusion, even where trade channels or product categories differ.
    • Starbucks Corporation v. Sardarbuksh Coffee & Co. (2018): While the Delhi High Court acknowledged similarities between “Starbucks” and “Sardarbuksh,” it ultimately allowed the latter to operate with minor changes to the name.
    • Infosys Technologies Ltd. v. Jupiter Infosys Ltd. (2006): The court ruled that trademark comparisons must consider the overall impression of the mark, not just isolated elements.

    These cases show that prefix-based similarities are not automatically disallowed but must be evaluated contextually. The focus remains on consumer perception, intent of the alleged infringer, and the likelihood of confusion.

    WIDER IMPLICATIONS FOR INDIAN BUSINESS AND TRADEMARK LAW

    For Local Businesses

    A favourable ruling for McPatel could embolden small and medium enterprises (SMEs) to push back against what they perceive as overbroad enforcement of global IP rights. It may create stronger protections against legal intimidation by larger corporations and highlight the importance of preserving cultural naming practices.

    For Multinational Corporations

    A win for McDonald’s could reinforce the strength of series marks and affirm their legal enforceability in India, especially when supported by consumer recognition and marketing history. However, it may also prompt global brands to reassess their approach to Indian IP enforcement, avoiding the perception of bullying local competitors.

    For Legal Practitioners

    The outcome of McDonald’s vs McPatel will provide clearer judicial guidance on how courts interpret prefix trademarks and “well-known” status under Indian law. It may encourage lawyers to give more nuanced advice on trademark portfolio strategy and brand architecture.

    Businesses navigating such trademark conflicts can greatly benefit from consulting with TMWala, whose specialized services in trademark filing, enforcement, and litigation support provide robust protection tailored to the Indian legal landscape.

    CONCLUSION

    The ongoing McDonald’s vs McPatel case is much more than a simple dispute; it is a critical test of how Indian courts will navigate complex issues around global brand protection and local business rights.

    At the core lies the ‘Mc’ trademark issue, raising fundamental questions about whether a common linguistic prefix can be monopolized. This ‘Mc’ prefix legal battle highlights the challenges faced by businesses trying to establish their identity in a competitive market.

    The McDonald’s trademark dispute brings attention to important aspects of trademark law, including consumer confusion, intent, and the extent of protection granted to well-known marks. Meanwhile, the brand name trademark conflict underscores the real-world business name legal issues confronting Indian MSMEs amid global corporate pressures.

    As a significant entry in McDonald’s legal news, this case reflects wider intellectual property conflict in the food industry, where branding boundaries often blur.

    Ultimately, the decision in McDonald’s vs McPatel will shape the future balance between protecting international trademarks and supporting local entrepreneurship in India.

    For businesses aiming to protect their brand, partnering with experts like TMWala ensures smooth navigation of legal complexities and strong trademark ownership.

  • CAN YOU REGISTER YOUR OWN NAME AS A TRADE MARK?

    INTRODUCTION

    The famous Writer Mr. William Shakespeare once said, “What’s in a name?” While poetic in literature, in business and branding, the answer is quite a lot. A name, especially when associated with quality, innovation, or heritage, can become one of a business’s most valuable assets. Think of names like Tata, Mahindra, Raymond, or even Calvin Klein. These aren’t just names, they’re powerful brands.

    But can you legally use your own name as a trademark? Can you protect your first name or surname under trademark law? And what if someone else already did? Does that mean you’re prohibited from using your own name in your own business? Let’s explore how Indian trademark law addresses these questions.

    YES, YOU CAN TRADEMARK YOUR OWN NAME IN INDIA

    As per the Trademarks Act, 1999, names are recognized as valid trademarks provided they meet certain conditions. Earlier, under the Trade and Merchandise Marks Act, 1958, there were stricter rules that disallowed trademarking of surnames and personal names unless they had acquired distinctiveness. But today’s law takes a more flexible approach.

    According to Section 2(1)(m) of the Trade Marks Act, 1999, the definition of a “mark” includes names. The section states “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof;”

    Means that both first names and surnames can be protected if they’re used to distinguish goods or services and meet the necessary legal requirements, particularly that of distinctiveness.

    Platforms like TMWala can help you determine whether your name is eligible for trademark protection and guide you through the registration process to avoid legal issues that can arise in the future.

    WHAT MAKES A NAME DISTINCTIVE?

    To trademark your name successfully, you must prove that your name has become distinctive. In simple terms, this means that people associate that name specifically with your products or services, and not just with you as an individual.

    There are two main ways a name can gain distinctiveness:

    1. Inherent Distinctiveness – If the name is rare or unique enough to stand out (e.g., Godrej).
    2. Acquired Distinctiveness – If the name has been in use for a long time and has become associated in the public’s mind with your goods or services (e.g., Mahindra).

    This is especially important when the name is a common surname like Sharma, Singh, or Patel. For such names, the law expects the applicant to show that the public now connects the name with a particular product or service, not just a family name.

    THE LEGAL GREY AREA: WHEN TWO PEOPLE SHARE THE SAME NAME

    Trademarking your own name sounds simple, but it can get complicated when someone else is already using the same or a similar name in business. In these cases, the courts look closely at intent, the nature of the business, and the likelihood of confusion.

    Let’s understand this better with a few real-life examples.

    1. Mahindra & Mahindra Ltd. vs. Mahindra Paper Mills

    In this case, the auto and engineering giant Mahindra & Mahindra took legal action against another company, Mahindra Paper Mills, for using the name “Mahindra.”

    Although both companies were using the same surname, the court ruled in favour of Mahindra & Mahindra Ltd., stating that they had built a strong brand over 50 years, and the use of the same name by another company could confuse consumers into thinking the businesses were related. The court concluded that the name “Mahindra” had become more than just a surname; it was a recognised brand and therefore deserved protection.

    2. Precious Jewels v. Varun Gems

    In another case, a jewellery brand named Precious Jewels, which had trademarked the surname “Rakyan,” sued Neena and Ravi Rakyan for using their own names in their business.

    The Delhi High Court initially granted an injunction against the Rakyans. However, the Supreme Court overturned this decision, noting that the Rakyans were running their business honestly and using their own names, which is allowed under Section 35 of the Trade Marks Act, 1999.

    This provision clearly states that you have the right to use your own name in good faith, even if someone else has trademarked it as long as you are not trying to mislead the public or ride on someone else’s brand reputation.

    WHAT DOES SECTION 35 OF THE TRADE MARKS ACT, 1999 SAY?

    This section is a critical part of the law and acts as a defence for individuals who want to use their own names. In simple language, it says:

    “Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.”

    This means that as long as you’re not pretending to be someone else or misleading customers, you’re allowed to use your name in business.

    WHAT COUNTS AS GOOD FAITH?

    To use your name in a way that’s considered bona fide or “in good faith,” you should:

    • Use your name honestly and do not try to benefit from another brand’s reputation.
    • Make sure that your branding (logo, colour, business nature) is not creating any kind of confusion for the customers.
    • Do not try to license or sell your name to others in a way that exploits another existing brand’s goodwill.

    If the court sees that your intention was to copy or confuse consumers, your defence under Section 35 won’t hold up.

    TMWala can help assess whether your branding and usage align with these principles, ensuring that your application holds up in court if ever challenged.

    CELEBRITY NAMES AND TRADEMARKS

    Many celebrities in India, like Shah Rukh Khan, Sachin Tendulkar, and Anil Kapoor, have trademarked their names to protect their personality rights, especially to stop others from using their names in products, advertisements, or events without their permission. This helps prevent misuse and protects their personality rights. For the general public, however, unless your name is famous, trademark protection will depend largely on how you use it and whether people recognise it as a brand.

    CONCLUSION

    Your name is your identity, and it can be your brand’s identity too. But in business, legal identity matters. So, if you’re planning to build a brand around your name, consider trademarking it early, using it consistently, and ensuring that it stands out in the market. And most importantly, always act in good faith.

    If you’re unsure whether your name can be protected as a trademark or if you’re at risk of infringing someone else’s, it’s wise to consult a trademark expert or legal advisor.

    Your name might just be your biggest business asset; make sure you protect it the right way.

    TMWala can help you navigate this legal landscape from eligibility checks to filing and defending your trademark.

  • Delhi HC Rules in SPARX vs HRX Trademark Dispute: No Injunction Granted

    Case 3: Relaxo Footwears Ltd. v. XS Brands Consultancy Pvt. Ltd. & Ors.

    Citation: 2024 SCC OnLine Del 3141
    Court: Delhi High Court
    Date Decided: 13 May 2024
    Judge: Justice Anish Dayal

    Background

    Relaxo Footwears Ltd., a prominent Indian footwear manufacturer, has been using the “SPARX” brand since 1976. The company developed a distinctive “X” device mark derived from its “SPARX” logo, which it used prominently on its footwear products. In 2024, Relaxo filed a suit against XS Brands Consultancy Pvt. Ltd., associated with the “HRX by Hrithik Roshan” brand, alleging that the defendants’ use of a similar “X” mark on their footwear products infringed upon Relaxo’s trademark rights.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether the defendants’ use of the “X” mark infringed upon Relaxo’s registered trademark under the Trade Marks Act, 1999.
    2. Whether the similarity between the two “X” marks could cause confusion among consumers, constituting passing off.
    3. Whether the defendants’ use of the “X” mark was honest and concurrent, given their market presence since 2013.

    Parties’ Contentions

    Plaintiff (Relaxo Footwears Ltd.):

    • Asserted that their “X” mark, derived from the “SPARX” logo, had acquired distinctiveness and was associated exclusively with their products.
    • Argued that the defendants’ use of a similar “X” mark on identical goods (footwear) was likely to cause confusion among consumers.
    • Claimed that the defendants’ adoption of the “X” mark was dishonest and aimed at capitalizing on Relaxo’s established reputation.

    Defendant (XS Brands Consultancy Pvt. Ltd. & Ors.):

    • Contended that their “X” mark was distinct and had been used in conjunction with the “HRX” brand since 2013.
    • Argued that the marketplace was crowded with similar “X” marks, and Relaxo had previously agreed to coexist with other entities using similar marks, undermining their claim to exclusivity.
    • Maintained that their use of the “X” mark was honest, concurrent, and had not caused any actual confusion in the market.

    Decision

    The Delhi High Court refused to grant an interim injunction against the defendants. The court observed that:

    • The defendants had been using the “X” mark in conjunction with the “HRX” brand since 2013, indicating honest and concurrent use.
    • Both parties used their respective “X” marks alongside their principal brand names, reducing the likelihood of consumer confusion.
    • The balance of convenience favored the defendants, given their substantial investment in developing the “HRX” brand and the absence of evidence showing actual consumer confusion.

    Ratio Decidendi

    • The court held that the mere similarity of the “X” marks was insufficient to establish infringement or passing off, especially when both marks were used alongside distinctive brand names.
    • Emphasized the importance of considering the overall presentation of the marks, including their use in conjunction with other brand identifiers.
    • Recognized the defendants’ honest and concurrent use of the “X” mark since 2013, which weighed against granting an injunction.

    LEGAL ANALYSIS

    Principles of passing off under common law

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)

    • (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
    • (b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
    • (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

    Bibliography

    Author: Suhani Sharma

  • SECTION 27 OF THE TRADE MARKS ACT, 1999

    The Trade Marks Act, 1999 provides legal protection to registered trademarks, allowing owners to exclusively use and also to sue other trade marks for infringement. Section 27 of the Trade Marks Act also provides statutory protection to unregistered trademarks by upholding common law rights through the passing-off principle. In accordance with section 27 of the Act even though an unregistered trademark cannot be protected through an infringement case, the owner may still pursue legal action if someone tries to mislead consumers or damage the company’s reputation by abusing the mark.

    Let’s discuss section 27 of the Trade Marks Act, 1999 in detail.

    Section 27(1) of the Trade Marks Act:

    According to Section 27(1) of the Trade Marks Act an infringement suit cannot be filed against an unregistered trademark i.e. the trade mark not registered under the Trade Marks Act, by any person. 

    Illustration: 

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ cannot file an infringement suit against the copied trademark of the ‘Y’ since the mark ‘PickliBoo’ is not registered by ‘X’. 

    Section 27(2) of the Trade Marks Act:

    Section 27(2) of the Trade Marks Act protects registered as well as unregistered trade mark. This section recognises common law rights of the trade mark owner to take action against any person for passing off goods or services as the goods or services of another person. Accordingly, even if a trade mark is not registered, the owner of such trade mark can still take action under the common law principle of passing off. 

    And, for this, the owner of the unregistered trade mark must prove that the said trade mark has reputation and goodwill in the market, there has been misrepresentation in the market and owing to this the use of the other copied mark would substantially damage the business of the owner of the unregistered trade mark.

    Illustration:

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act, however, enjoys substantial goodwill and reputation in the market and have extensive market base. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ can file a Passing off suit against the copied trademark of the ‘Y’.

    Conclusion

    In conclusion, section 27 of the Trade Marks Act restricts legal action for infringement to registered trademarks only. Nonetheless, it recognizes passing off as a powerful remedy to protect business reputation and goodwill for unregistered trademarks.

    Learn more about common law rights and passing off at WIPO and IP India.

    Register your trademark with us starting at only Rs. 999/-