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Tag: Trade Marks Act 1999

  • REASONS WHY TRADEMARK CAN BE REJECTED

    Trademark registration is a vital step for businesses and individuals seeking to protect their brand identity. A trademark not only offers legal protection but also helps establish trust and brand recognition in the marketplace. However, not every trademark application is successful. The Trademarks Act, 1999, outlines various grounds under which a trademark application can be refused. Understanding these reasons can help applicants avoid common pitfalls and ensure a smoother registration process. This article explores ten key reasons why a trademark might be refused registration in India.

    TMWala can be your personal guild throughout your trademark journey and help you avoid every problem that can affect your trademark registration.  

    REASONS WHY TRADEMARKS CAN BE REJECTED

    1. LACK OF DISTINCTIVENESS

    One of the most common grounds for refusal is the lack of distinctiveness in the mark. As per Section 9(1)(a) of the Trademarks Act,1999, a trademark must be capable of distinguishing the goods or services of one person from those of others. If a mark is generic, overly descriptive, or comprises common trade phrases, it may not be considered distinctive enough for registration. 

    For example, using the term “Fresh Milk” for a dairy product may be rejected because it merely describes the product and does not distinguish the applicant’s goods from others.

    The law seeks to prevent applicants from monopolizing commonly used terms or phrases that are essential for others in the industry to describe their own goods and services. Therefore, creating a unique, inventive, or arbitrary mark significantly improves the chances of successful registration.

    2. SIMILARITY TO EXISTING MARKS

    Section 11(1) of the Act deals with refusal based on similarity to earlier trademarks. If the proposed mark is identical or deceptively similar to an already registered mark or a well-known trademark, the application can be rejected. The rationale is to prevent confusion among the public and protect the interests of trademark owners who have already established rights in a particular mark.

    Similarity is judged not only based on visual appearance but also on phonetic, conceptual, and overall commercial impression. The registrar examines whether the public is likely to confuse one mark with another. This makes conducting a thorough trademark search before applying essential to avoid potential conflicts.

    TMWala helps conduct comprehensive searches and risk assessments, ensuring your brand doesn’t unknowingly overlap with existing marks and protecting you from potential disputes.

    3. USE OF PROHIBITED OR SCANDALOUS MATTER

    Under Section 9(2)(a), trademarks that contain or consist of scandalous or obscene matter, or anything likely to hurt religious sentiments, are not eligible for registration. This provision ensures that trademarks do not offend the moral or cultural sentiments of the public. Trademarks that include vulgar words, sexually explicit language, or derogatory references to any religion or community will be outrightly refused.

    Applicants should therefore carefully evaluate the cultural and moral impact of their proposed trademarks, especially in a diverse and sensitive society like India.

    4. NON-COMPLIANCE 

    The procedural framework for filing a trademark application is governed by Section 18 of the Act. If an application fails to comply with the prescribed formalities such as incorrect classification of goods/services, inadequate representation of the mark, or missing essential information it can be rejected.

    Applicants must ensure that they adhere to all the procedural mandates, including the correct use of forms, payment of fees, proper power of attorney (if applicable), and the accurate classification of goods and services according to the Nice Classification system. Even minor oversights in procedure can lead to significant delays or rejection.

    TMWala ensures timely compliance so that your mark stays protected. 

    5. USE OF GOVERNMENT SYMBOLS OR EMBLEMS

    Section 9(2)(b) of the Trademarks Act,1999, along with the Emblems and Names (Prevention of Improper Use) Act, 1950, prohibits the use of marks that include names, symbols, or emblems associated with the government or any national institution. Trademarks containing representations of the national flag, Ashoka Chakra, or official government insignia cannot be registered.

    This provision is intended to prevent the misuse of symbols that are of national importance or public trust. Such symbols are protected to maintain their dignity and prevent any commercial exploitation or misleading implications of governmental endorsement.

    6. BAD FAITH 

    Section 11(3)(a) addresses the issue of trademarks filed in bad faith. If it is found that the application was filed with a malicious intent, such as copying a competitor’s mark, misleading the public, or attempting to gain an unfair advantage, the registrar can refuse the application.

    Trademark law places a premium on honest business practices. Applications that appear to be opportunistic or deceptive, such as registering a mark similar to a foreign brand already known in India, are often challenged and rejected. Courts and tribunals are especially harsh on applicants who act in bad faith, and such behaviour can lead to penalties or cancellation of the mark.

    7. GENERIC WORD

    Section 9(1)(b) denies registration to marks that have become generic. Over time, some trademarks lose their distinctiveness due to widespread and indiscriminate use. When a mark becomes a common term used to describe a general category of goods or services, it is said to have become genericized and loses its protection under trademark law.

    For instance, if the public starts using a trademarked term to refer to all similar products regardless of origin, the mark may be deemed generic. Applicants must ensure that their mark retains its association with a particular source and is not used as a general descriptor in the market.

    8. NON-USE OF TRADEMARK

    Under Section 47, a registered trademark can be removed from the registry if it has not been used for a continuous period of five years from the date of registration. Additionally, if it can be shown that the applicant had no bona fide intention to use the mark at the time of registration, it may also be subject to cancellation.

    Non-use weakens the mark’s relevance in the marketplace and may deprive others of the opportunity to use it. Regular and documented use of the trademark in commerce is necessary to retain registration and enforce trademark rights.

    9. FAILURE TO RESPOND TO EXAMINATION REPORT

    As per Section 18(5), once a trademark application is examined by the registry, an examination report is issued detailing any objections. If the applicant fails to respond to these objections within the prescribed time frame, usually 30 days, extendable by request the application may be deemed abandoned.

    Timely and comprehensive responses are crucial to address any issues raised in the report. Applicants should provide legal justifications, documentary evidence, and persuasive arguments to overcome objections. Silence or incomplete responses can lead to outright rejection.

    10. OPPOSITION FROM THIRD PARTIES

    After a trademark is accepted by the registry, it is published in the Trademarks Journal for public scrutiny. As per Section 21, any third party can file a notice of opposition within four months from the date of publication. If an opposition is filed, the application enters the opposition proceedings, where both parties can present their arguments and evidence.

    Oppositions are often filed by companies that believe that the new trademark may infringe on their existing rights or damage their brand. If the opposition is upheld, the application can be refused. Therefore, it’s essential to prepare for potential opposition and have a legal strategy in place to defend the application.

    TMWala supports clients in drafting replies to oppositions, preparing evidence, and representing them in hearings ensuring your trademark has the best possible defence.

    CONCLUSION

    Trademark registration in India is governed by a well-defined legal framework designed to promote fair competition and protect the rights of both businesses and consumers. Understanding the grounds on which trademark applications can be refused helps applicants make informed decisions and avoid unnecessary legal hurdles.

    From ensuring distinctiveness and procedural compliance to defending against oppositions and maintaining actual use of the mark, every step in the trademark process requires diligence. Consulting a trademark attorney or IP expert can further improve the chances of securing a successful registration. Ultimately, a well-chosen and legally sound trademark is not just a legal asset, it’s a cornerstone of brand identity and business success.

    TMWala simplifies this journey, offering expert filing services, proactive compliance checks, and strategic legal support so that your brand gets the protection it deserves. In an increasingly competitive marketplace, a strong, registered trademark is not just a legal asset it is the foundation of brand credibility and long-term success.

  • 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.

  • Trademark renewal

    Introduction

    A trademark is a distinct sign, symbol, word, logo, or combination thereof that identifies and distinguishes the goods or services of one enterprise from those of others. In India, trademarks’ legal protection and regulation are governed by the Trademarks Act of 1999 and the Trademarks Rules of 2017.

    According to Section 25(1) of the Trade Marks Act, once a trademark is registered, it remains valid for a period of ten years starting from the date it was registered. This can be extended after the expiration of the initial 10 years.

    This article covers the complete process and legal significance of trademark renewal in India under the Trademarks Act, 1999, and the Trademarks Rules, 2017. It explains what trademark renewal entails, its procedure, the documents required, applicable forms and fees, and the legal and commercial benefits of timely renewal. It also highlights the consequences of non-renewal, and the procedure for restoration of a removed trademark, and concludes with the importance of timely compliance to ensure uninterrupted protection of brand rights and reputation.

    What is trademark renewal?

    Trademark renewal is a process by which the protection of a registered trademark is extended beyond its initial term of registration. In India, once a trademark is registered, it is legally protected for a duration of ten years from the date of registration. After this period ends, the trademark must be renewed. Renewal plays a crucial role in protecting the owner’s exclusive rights over the mark and ensuring that the brand remains protected from infringement.

    The procedure for trademark renewal is outlined under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017. To renew a trademark, the owner must submit a renewal application using Form TM-R to the Indian Trademark Registry, along with the prescribed renewal fee.

    In case of failure to renew the trademark within the prescribed time limit, it may be removed from the Trademark Register, and the exclusive rights may lapse. Renewal ensures that the trademark owner enjoys legal protection.

    Procedure for Renewal

    Filing the Renewal Application

    The renewal of a trademark officially begins with the submission of Form TM-R, as prescribed under Rule 57 of the Trade Marks Rules, 2017. Filing can be done through the official IP India portal.

    The applicant must provide certain essential details like the registration number of the trademark and its current legal status. If the renewal is being carried out through a trademark agent or legal representative, a valid Power of Attorney must also accompany the application.

    A trademark renewal application can be filed within one year before the date on which the trademark is set to expire. In case this window is missed, renewal may still be sought within six months, but only by paying an additional late fee. However, if the deadline is missed entirely, the mark becomes vulnerable to removal from the register. If the renewal isn’t filed on time, the applicant must submit a restoration request under Rule 60, which not only increases the expenses but also makes the process more complicated.

    Scrutiny and Examination by the Registry

    After submission, the application is examined by the Trademark Registry to ensure that all legal requirements are satisfied. The Registrar checks whether the application was filed within the permitted time and whether all relevant documents and prescribed fees are in order.

    If the Registry detects any discrepancy, such as an incomplete form, unpaid fees, or classification issues, it may issue a formal objection. The applicant is generally given 30 days to respond. If the response is not submitted on time or the discrepancies are not addressed properly, the application may be rejected or delayed.

    Publication in the Trade Marks Journal

    After the application passes the examination stage, the renewal information is officially published in the Trade Marks Journal. Any third party may file an opposition in 4 months under Section 21 of the Trade Marks Act, 1999. If an objection is filed, the trademark owner will be given a chance to respond. If the matter remains unresolved, the Registrar may call for a hearing and make a decision.

    If no opposition is raised or if any objections are successfully resolved, the trademark renewal proceeds without further hurdles.

    Issuance of the Trademark Renewal Certificate

    After the opposition period and resolution of any related disputes, the Trademark Registry formally issues a Trademark Renewal Certificate. This certifies that the trademark has been renewed for a further 10-year period from the date of the previous expiration.

    Trademark Restoration Following Expiry

    If the renewal deadline and the six-month grace period have both passed without action, the trademark is officially removed from the register. However, the law allows the owner to apply for restoration within one year from the date of expiry. This request must be accompanied along with the prescribed fees, can be done through ipindia.gov.in.

    Once the application is received, the Registrar examines the application. If no discrepancy is found or if the Registrar is satisfied, the request for restoration is accepted, and the trademark is published in the Trademark Journal.

    If no opposition is filed or if the applicant overcomes any objections, a Restoration Certificate is issued.

    Legal Consequences of Non-renewal

    If a trademark is not renewed on time, it can be removed from the register, leading to the loss of exclusive rights to use the mark. Without renewal, the owner cannot enforce trademark rights or prevent others from using a similar mark. The trademark becomes vulnerable to being registered by others, weakening the original owner’s position. While restoration is possible within one year of removal, it’s not automatic and requires valid reasons. Overall, non-renewal risks losing legal protection.

    Documents required

    1. Form TM-Ris is the prescribed form for renewal of a trademark under the Trade Marks Rules, 2017. It must be filed six months before the expiry of the current registration or within a grace period of six months after the expiry (with applicable fees).
    2. Power of Attorney is required only when the renewal is filed by a trademark attorney or an authorized agent; a power of attorney is submitted to establish their authority to act on behalf of the owner.
    3. Proof of identity and address: Though not always mandatorily providing documents is recommended.
    4. Copy of the Trademark Registration Certificate.
    5. Affidavit of Use: The Registrar may request an affidavit to ensure genuine intent or prior use of the trademark.

    Forms and fees

    Form NamePurposePhysical feeOnline feeIndividuals/ start-ups (online only)
    TM-RRenewal of trademark registration (with/without modification or advertisement before renewal)₹10,000₹9,000₹4500 per class
    TM-R With surchargeRestoration of a removed trademark within 6 months after expiry (includes renewal)₹10,000+ renewal fee₹9000+ renewal fee₹9000 per class
    TM -18Affidavit of use (if required by Registrar)–––
    TM-U  Change in name/address/agent details during renewal₹1,000₹900₹450
    TM-MMiscellaneous requests (likean extension of time or correction of a clerical error)₹1,000      ₹900₹450

    Benefits of renewal

    Legal protection- Renewal ensures that the trademark remains legally protected under the Trademarks Act, 1999. If the trademark isn’t renewed, the legal protection it offers lapses, leaving it vulnerable to misuse or infringement by others.

    Preservation of Exclusive Rights – A trademark owner has certain exclusive rights, which are rights, though can be preserved by renewing the trademark.

    Strengthening of Legal Position –The trademark owner has the right to initiate legal action in case of infringement. Renewal of a trademark also provides this right, which strengthens the owner’s position in defending their mark and seeking remedies for any unauthorized use.

    Maintaining Brand Identity- Every business has a distinct brand value in the marketplace. Without renewal, the mark may lose its distinctiveness, potentially eroding the brand’s reputation and value in the market.

    Business and Commercial Benefits A renewed trademark enables the trademark owner to leverage their intellectual property for business opportunities such as licensing, franchising, and brand expansion. A valid trademark is an asset that increases business credibility and value.

    Conclusion

    Trademark renewal is a crucial step in preserving a brand’s legal identity and commercial strength. Under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017, renewal ensures that a registered trademark continues to enjoy statutory protection, allowing the proprietor to maintain exclusive rights and prevent misuse by others.

    Missing the renewal timelines can lead to the cancellation of a trademark, weakening the brand’s legal standing and market position. Though restoration is allowed within a limited period, it involves additional costs and formalities.

    Timely renewal is a simple yet vital legal action that protects years of brand building, reputation, and investment. For any business or individual relying on their trademark, proactive compliance with the renewal process is not just good practice but is essential for long-term brand security.

    References

    1. The Trade Marks Act, 1999– https://www.ipo.gov.in/tmrAct_1999.pdf
    2. The Trade Marks Rules, 2017– https://www.ipo.gov.in/TMRules_2017.pdf
    3. IP India – Trade Marks Section– https://ipindia.gov.in/trade-marks.htm
    4. Trademark Renewal in India, iPleaders– https://blog.ipleaders.in/trademark-renewal-india/
    5. Trademark Renewal Procedure, LawBhoomi-https://lawbhoomi.com/trademark-renewal-procedure-in-india/
    6. Trademark Forms and Fees, IP India – https://ipindia.gov.in/form-and-fees-tm.htm
    7. Trademark JournalSearch, IP-India https://search.ipindia.gov.in/tmrpublicsearch/jsp/journal/journal_search.jsp

  • Delhi High Court Protects Amul’s Trademark: Pharma Firm Barred from Using “AMUL” Brand

    Case 10: Kaira District Cooperative Milk Producers Union Ltd. & Anr. v. Bio Logic and Psychotropics India Pvt. Ltd. & Anr.

    Citation: 2024 LiveLaw (Del) 1035
    Court: Delhi High Court
    Date Decided: 10 September 2024
    Judge: Justice Mini Pushkarna

    Background

    Kaira District Cooperative Milk Producers Union Ltd., widely known as Amul, is a prominent dairy cooperative in India, recognized for its extensive range of dairy products. Amul holds registered trademarks for the brand name “AMUL,” which has become synonymous with quality dairy products across the country.

    Bio Logic and Psychotropics India Pvt. Ltd., a pharmaceutical company, began marketing an antipsychotic medication under the brand name “AMUL.” These products were sold through various e-commerce platforms. Upon discovering this usage, Amul issued a cease and desist notice to the defendants. In response, the defendants claimed to have invented the trademark in 2013 and filed a trademark application for “AMUL” eight days after receiving the legal notice.

    Amul filed a suit seeking a permanent injunction to restrain the defendants from using the “AMUL” mark or any other mark deceptively similar to it, alleging trademark infringement and passing off.

    Legal Issues

    1. Whether the defendants’ use of the “AMUL” mark for pharmaceutical products constitutes infringement of Amul’s registered trademark under the Trade Marks Act, 1999.
    2. Whether such use amounts to passing off, leading to confusion among consumers and dilution of Amul’s brand identity.
    3. Whether Amul is entitled to a permanent injunction and damages for the unauthorized use of its well-known trademark.

    Parties’ Contentions

    Plaintiff (Amul):

    • Asserted that “AMUL” is a well-known trademark with significant goodwill and reputation in the market.
    • Claimed that the defendants’ use of the identical mark for pharmaceutical products is likely to cause confusion among consumers and tarnish the brand’s image.
    • Argued that the defendants acted in bad faith by adopting the “AMUL” mark without any plausible justification.

    Defendants (Bio Logic and Psychotropics India Pvt. Ltd.):

    • Contended that they had invented the “AMUL” trademark in 2013 and had been using it for their pharmaceutical products since then.
    • Filed a trademark application for “AMUL” shortly after receiving the legal notice from Amul.
    • Did not file a written statement or provide substantial evidence to support their claims.

    Decision

    The Delhi High Court granted a permanent injunction in favor of Amul, restraining the defendants from using the “AMUL” mark or any other mark deceptively similar to it for their pharmaceutical products. The court observed that the defendants had no plausible justification for adopting the “AMUL” mark and acted with mala fide intent to ride upon Amul’s immense reputation and goodwill. The court also imposed costs and damages totaling ₹5 lakhs against the defendants for infringing Amul’s well-known trademark. Additionally, the court directed the defendants to destroy the infringing goods that had been confiscated by the Local Commissioner and returned to them, in the presence of Amul’s representatives.

    Ratio Decidendi

    • The unauthorized use of a well-known trademark, even in a different class of goods, constitutes infringement under Section 29(4) of the Trade Marks Act, 1999, if it takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.
    • Adoption of an identical or deceptively similar mark without a plausible justification indicates mala fide intent and is actionable under trademark law.
    • In cases of infringement of well-known trademarks, courts may grant permanent injunctions and award damages to protect the brand’s reputation and prevent consumer confusion.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2), 29(4), 29(6), 29(8), 29(9), 134
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2

    Bibliography

    Kaira District Cooperative Milk Producers Union Ltd. & Anr. v. Bio Logic and Psychotropics India Pvt. Ltd. & Anr., 2024 LiveLaw (Del) 1035

    • ‘Delhi High Court restrains Bio Logic and Psychotropics India Pvt Ltd from using mark similar to “AMUL”‘ (SCC Online, 21 September 2024) https://www.scconline.com/blog/post/2024/09/21/dhc-restrains-bio-logic-and-psychotropics-india-pvt-ltd-from-using-mark-similar-to-amul/
    • ‘Delhi High Court Restrains Businesses From Using Amul’s Trademark On Their Pharmaceutical Products, Directs Payment Of ₹5 Lakhs In Damages & Costs’ (LiveLaw, 19 September 2024) https://www.livelaw.in/high-court/delhi-high-court/amul-trademark-infringement-pharmaceutical-tablets-costs-damages-270042
    • ‘Court Stops Trademark Infringement of “AMUL”‘ (BananaIP, 21 September 2024) https://bananaip.com/pharma-companys-buttery-slip-court-stops-trademark-infringement-of-amul/

    Author: Suhani Sharma

  • Emami vs. Hindustan Unilever: Calcutta HC Rules in Favor of ‘Fair and Handsome’ in Trademark Battle

    Case 9: Emami Limited v. Hindustan Unilever Limited

    Citation: 2024 SCC OnLine Cal 3579
    Court: Calcutta High Court
    Date Decided: 9 April 2024
    Judge: Justice Ravi Krishan Kapur

    Background

    Emami Limited, a prominent Indian FMCG company, launched its men’s skincare product “Fair and Handsome” in 2005. Over the years, Emami invested significantly in building the brand’s identity, emphasizing the term “Handsome” through extensive advertising campaigns and achieving a substantial market share in the men’s fairness cream segment.

    In 2020, Hindustan Unilever Limited (HUL) rebranded its men’s skincare product from “Fair & Lovely Men” to “Glow & Handsome.” Emami perceived this rebranding as an attempt to capitalize on the goodwill of its established brand and filed a suit against HUL, alleging trademark infringement and passing off.

    PLAINTIFF’S MARK

    DEFENDANT’S MARK

    Legal Issues

    1. Whether HUL’s use of the mark “Glow & Handsome” infringes upon Emami’s registered trademark “Fair and Handsome.”
    2. Whether HUL’s adoption of the mark constitutes passing off by creating confusion among consumers and leveraging Emami’s brand reputation.
    3. Whether Emami is entitled to an interim injunction restraining HUL from using the “Glow & Handsome” mark pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiff (Emami Limited):

    • Asserted that “Fair and Handsome” is a well-established brand with significant goodwill and recognition in the market.
    • Claimed that HUL’s adoption of “Glow & Handsome” is deceptively similar and likely to cause confusion among consumers.
    • Argued that the term “Handsome” has acquired distinctiveness and a secondary meaning associated with Emami’s product due to extensive use and promotion.

    Defendant (Hindustan Unilever Limited):

    • Contended that “Handsome” is a descriptive term commonly used in the industry and lacks distinctiveness.
    • Argued that Emami had disclaimed exclusive rights over the term “Handsome” during trademark registration, limiting its ability to claim infringement.
    • Maintained that there is no likelihood of confusion between the two marks due to differences in packaging and marketing strategies.

    Decision

    The Calcutta High Court granted an interim injunction in favor of Emami, restraining HUL from using the “Glow & Handsome” mark for its men’s skincare products. The court observed that while Emami could not claim infringement due to the disclaimer over “Handsome,” it had established a prima facie case for passing off. The court noted that HUL’s adoption of a mark with a prominent and essential feature of Emami’s brand suggested an attempt to benefit from Emami’s goodwill, leading to potential consumer confusion. HUL was granted one month to comply with the order.

    Ratio Decidendi

    • Even if a term within a trademark is descriptive and disclaimed, extensive use and promotion can confer it with distinctiveness and secondary meaning, warranting protection against passing off.
    • Adoption of a mark that closely resembles a competitor’s established brand, especially with knowledge of its market presence, can constitute passing off due to the likelihood of consumer confusion and deception.
    • Interim injunctions can be granted in passing off cases where the plaintiff demonstrates a strong prima facie case, potential for irreparable harm, and a balance of convenience in its favor.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2), 29(4), 30, 34, 35
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2

    Bibliography

    Author: Suhani Sharma

  • Delhi High Court Grants Ex-Parte Injunction to Moti Mahal

    Case 8: Moti Mahal Delux Management Services Pvt. Ltd. & Ors. v. SRMJ Business Promoters Pvt. Ltd. & Anr.

    Citation: CS(COMM) 1115/2024
    Court: Delhi High Court
    Date Decided: 12 December 2024
    Judge: Justice Mini Pushkarna

    Background

    Moti Mahal Delux Management Services Pvt. Ltd. (“Moti Mahal”), a renowned restaurant chain with a legacy dating back to 1920, owns several registered trademarks, including “MOTI MAHAL,”“MOTI MAHAL GROUP,”“MOTI MAHAL MANAGEMENT SERVICES,” and “TANDOORI TRAIL.” These marks are associated with high-quality North Indian cuisine and have garnered significant goodwill both in India and internationally.

    SRMJ Business Promoters Pvt. Ltd. (“SRMJ”) was previously a franchisee of Moti Mahal under a Franchise Agreement dated 5 October 2013, which expired on 5 October 2022. Despite the termination of the agreement, SRMJ continued to operate its restaurant business using the marks “MOTI MAHAL DELUX TANDOORI TRAIL” and “MOTI MAHAL DELUX,” prompting Moti Mahal to file a suit seeking a permanent injunction against SRMJ for trademark infringement, passing off, and unfair trade practices.

    Legal Issues

    1. Whether SRMJ’s continued use of the marks “MOTI MAHAL DELUX TANDOORI TRAIL” and “MOTI MAHAL DELUX” after the termination of the franchise agreement constitutes trademark infringement under the Trade Marks Act, 1999.
    2. Whether such use amounts to passing off and unfair trade practices, causing confusion among consumers and diluting Moti Mahal’s brand identity.
    3. Whether Moti Mahal is entitled to an ex-parte ad-interim injunction to prevent irreparable harm pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiffs (Moti Mahal Delux Management Services Pvt. Ltd. & Ors.):

    • Asserted that they are the rightful and exclusive owners of the registered trademarks in question, which have acquired immense goodwill over the years.
    • Claimed that SRMJ’s continued use of the marks post-termination is unauthorized and constitutes deliberate infringement and passing off.
    • Argued that SRMJ’s actions are likely to cause confusion among consumers and damage the reputation and distinctiveness of Moti Mahal’s trademarks.

    Defendants (SRMJ Business Promoters Pvt. Ltd. & Anr.):

    • At the time of the ex-parte hearing, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of Moti Mahal, restraining SRMJ and its affiliates from:

    • Using the marks “MOTI MAHAL,”“MOTI MAHAL DELUX,”“MOTI MAHAL DELUX TANDOORI TRAIL,” or any other mark deceptively similar to Moti Mahal’s registered trademarks.
    • Operating any restaurant or catering business under the impugned marks.
    • Using any logos, signage, promotional materials, or digital content bearing the infringing marks.

    The court held that Moti Mahal had established a prima facie case for the grant of an injunction, with the balance of convenience in its favor, and that it would suffer irreparable harm if the injunction were not granted.

    Ratio Decidendi

    • The unauthorized use of a registered trademark by an ex-franchisee post-termination of the franchise agreement constitutes infringement under Sections 29(1) and 29(2)(c) of the Trade Marks Act, 1999.
    • Such use also amounts to passing off and unfair trade practices, leading to consumer confusion and dilution of the trademark’s distinctiveness.
    • In cases where the plaintiff demonstrates a strong prima facie case and the likelihood of irreparable harm, courts may grant ex-parte ad-interim injunctions to preserve the status quo pending final adjudication.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2)(c), 29(4)
    • Code of Civil Procedure, 1908: Order XXXIX Rules 1 and 2
    • Copyright Act, 1957: Sections 2(c), 17

    Bibliography

    Author: Suhani Sharma

  • Delhi HC Restrains ‘Baap Ki Adalat’ for Trademark Infringement

    Case 4: Independent News Service Pvt. Ltd. & Rajat Sharma v. Ravindra Kumar Choudhary & Ors.

    Citation: 2024 SCC OnLine Del 3142
    Court: Delhi High Court
    Date Decided: 30 May 2024
    Judge: Justice Anish Dayal

    Background

    Independent News Service Pvt. Ltd. (INS), the proprietor of the 24-hour Hindi news channel “India TV,” and its Chairman and Editor-in-Chief, Rajat Sharma, filed a suit against Ravindra Kumar Choudhary and others. The plaintiffs alleged that the defendants were using the mark/logo “Baap Ki Adalat,” which was deceptively similar to their registered trademark/logo “Aap Ki Adalat,” a well-known television program featuring interviews with prominent personalities. The defendants, particularly Choudhary, a self-proclaimed political satirist, were creating and publishing various video and audio content on social media platforms under the impugned mark.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether the defendants’ use of the mark/logo “Baap Ki Adalat” infringed upon the plaintiffs’ registered trademark/logo “Aap Ki Adalat” under the Trade Marks Act, 1999.
    2. Whether the defendants’ actions constituted passing off, leading to confusion among the public.
    3. Whether the unauthorized use of Rajat Sharma’s name, photograph, and video violated his personality rights.

    Parties’ Contentions

    Plaintiffs (Independent News Service Pvt. Ltd. & Rajat Sharma):

    • Asserted that “Aap Ki Adalat” is a registered trademark and a widely recognized television program, thereby possessing significant goodwill and reputation.
    • Claimed that the defendants’ use of “Baap Ki Adalat” was deceptively similar, both phonetically and visually, leading to confusion among the public.
    • Alleged that the defendants’ use of Rajat Sharma’s name, photograph, and video without consent infringed upon his personality rights.

    Defendants (Ravindra Kumar Choudhary & Ors.):

    • At the time of the interim injunction, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of the plaintiffs, restraining the defendants from:

    • Using the mark/logo “Baap Ki Adalat” or any other mark/logo deceptively similar to “Aap Ki Adalat” in any manner, including as a trademark, logo, trading style, domain name, social media posts, audio-video content, or in relation to any services.
    • Using the photograph, video, or name of Rajat Sharma in any manner that would violate his personality rights.

    The court directed the defendants to remove the infringing content from their social media platforms and scheduled the next hearing for 18 October 2024.

    Ratio Decidendi

    • The court found a prima facie case of trademark infringement and passing off, noting the deceptive similarity between “Aap Ki Adalat” and “Baap Ki Adalat.”
    • Recognized the significant reputation and goodwill associated with the plaintiffs’ trademarks, and the potential for confusion and deception among the public due to the defendants’ use of a deceptively similar mark.
    • Acknowledged the violation of Rajat Sharma’s personality rights through the unauthorized use of his name, photograph, and video.

    LEGAL ANALYSIS

    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.
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2
    • Common law principles relating to passing off and personality rights

    Bibliography

    Author: Suhani Sharma

  • Delhi High Court Rules in Favor of Pfizer in VIAGRA vs VIGOURA Trademark Dispute

    Case 2: Pfizer Products Inc. v. Renovision Exports (P) Ltd.

    Citation: 2024 SCC OnLine Del 3140
    Court: Delhi High Court
    Date Decided: 1 May 2024
    Judge: Justice Sanjeev Narula

    Background

    Pfizer Products Inc., a globally recognized pharmaceutical company, holds the registered trademark “VIAGRA” for its sildenafil citrate-based medication used to treat erectile dysfunction. The trademark “VIAGRA” has been registered in India since 1996 and enjoys widespread recognition due to extensive marketing and media coverage.

    In 2005, Pfizer discovered that Renovision Exports (P) Ltd. was marketing homeopathic products under the mark “VIGOURA,” including variants like “VIGOURA 2000,”“VIGOURA 5000,” and “VIGOURA 1000,” purportedly for treating sexual disorders. Pfizer issued cease-and-desist notices, but the defendants continued their activities, leading Pfizer to file a suit seeking a permanent injunction against the use of the “VIGOURA” mark.

    Plaintiff’s – VIAGRA  Defendant’s- VIGOURA

    Legal Issues

    1. Whether the defendants’ use of the mark “VIGOURA” infringed upon Pfizer’s registered trademark “VIAGRA” under the Trade Marks Act, 1999.
    2. Whether the phonetic and visual similarities between “VIAGRA” and “VIGOURA” could cause confusion among consumers, constituting passing off.
    3. Whether such confusion between medicinal products poses a risk to public health, warranting judicial intervention.

    Parties’ Contentions

    Plaintiff (Pfizer Products Inc.):

    • Asserted that “VIAGRA” is a well-known trademark with global recognition, registered in over 147 countries.
    • Argued that “VIGOURA” is phonetically and visually similar to “VIAGRA,” leading to potential consumer confusion.
    • Contended that the defendants’ use of “VIGOURA” constituted trademark infringement and passing off, especially given the identical therapeutic use.

    Defendant (Renovision Exports (P) Ltd.):

    • Claimed that “VIGOURA” was a distinct mark used for homeopathic products, differing in composition and treatment approach from “VIAGRA.”
    • Denied any intention to deceive consumers or capitalize on Pfizer’s reputation.
    • Argued that the products catered to different consumer bases and medical philosophies.

    Decision

    The Delhi High Court granted a permanent injunction in favour of Pfizer, restraining the defendants from:

    • Manufacturing, selling, or marketing any product under the mark “VIGOURA” or any mark deceptively similar to “VIAGRA.”
    • Engaging in any activity that would amount to infringement or passing off of Pfizer’s registered trademark.

    Additionally, the court awarded nominal damages of ₹3,00,000 to Pfizer, recoverable jointly and severally from the defendants.

    Ratio Decidendi

    • The court observed a high degree of phonetic similarity between “VIAGRA” and “VIGOURA,” noting that such similarity could mislead consumers into believing an association between the two products.
    • Emphasized that confusion between medicinal products poses serious risks to public health, beyond mere economic harm.
    • Held that the visual similarities in letter structure and length further contributed to the likelihood of confusion.
    • Concluded that Pfizer had established a strong case of trademark infringement and passing off.

    LEGAL ANALYSIS

    Principles of passing off under common law

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(3)

    • (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 trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
    • (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

    Bibliography

    Author: Suhani Sharma

  • Trademark Dispute: Bulgari S.p.A. vs. Prerna Rajpal (The Amaris Flagship)

    INTRODUCTION

    The realm of trademark law in India has witnessed dynamic evolution in recent years, with courts playing an increasingly assertive role in safeguarding brand identity, consumer trust, and commercial goodwill. In the upcoming paragraphs, we’ll know about the trademark dispute between Bulgari S.P.A and Prerna Rajpal The Amaris Flagship. The period between 2024 and 2025 has been particularly significant, marked by a series of landmark decisions that have refined the interpretation of the Trade Marks Act, 1999, and expanded jurisprudence on infringement, passing off, honest concurrent use, and protection of well-known marks.

    From disputes involving global giants like IKEA and Pfizer to homegrown legacy brands such as Amul and Moti Mahal, Indian courts have not only reaffirmed the foundational principles of trademark law but also responded to emerging complexities posed by digital commerce, franchising relationships, and deceptive marketing tactics. This article compiles ten of the most influential trademark rulings delivered during this period, each analysed through its factual matrix, legal issues, judicial reasoning, and statutory application, providing critical insights into the evolving contours of trademark protection in India.

    Case 1: Bulgari S.P.A. vs. Prerna Rajpal Trading as The Amaris Flagship

    Background

    Citation: 2024 SCC OnLine Del 3339
    Court: Delhi High Court
    Date Decided: 29 April 2024
    Judge: Justice Sanjeev Narula

    Bulgari S.P.A., an Italian luxury brand renowned for its distinctive jewellery collections, including the “Serpenti” line, discovered that The Amaris Flagship Store, operated by Prerna Rajpal in Delhi, was marketing a necklace named “Shield-It!” This necklace bore a striking resemblance to Bulgari’s “Serpenti Ocean Treasure Necklace.” Despite issuing cease-and-desist notices, Amaris continued to promote the allegedly infringing product, prompting Bulgari to initiate legal proceedings.

    Plaintiff’s – Bulgari Defendant’s –  Amaris

    Legal Issues

    1. Whether Amaris’s “Shield-It!” necklace infringed upon Bulgari’s registered trademark “SERPENTI” under the Trade Marks Act, 1999.
    2. Whether the design of the “Shield-It!” necklace constituted a substantial reproduction of Bulgari’s copyrighted “Serpenti Ocean Treasure Necklace,” thereby infringing upon Bulgari’s rights under the Copyright Act, 1957.

    Parties’ Contentions

    Plaintiff (Bulgari S.P.A.):

    • Asserted ownership of the “SERPENTI” trademark, registered in multiple jurisdictions, including India.
    • Claimed that the “Serpenti Ocean Treasure Necklace” is an original artistic work, protected under copyright laws.
    • Alleged that Amaris’s “Shield-It!” necklace was a blatant imitation, replicating the design, structure, and ornamentation of Bulgari’s product.
    • Argued that Amaris’s use of the “SERPENTI” mark and similar designs was likely to cause confusion among consumers, amounting to passing off.

    Defendant (Prerna Rajpal trading as The Amaris Flagship):

    • Acknowledged inspiration from Bulgari’s designs but denied substantial similarity.
    • Contended that the term “SERPENTI” is descriptive and not exclusively associated with Bulgari.
    • Argued that the design differences were sufficient to distinguish the products and avoid consumer confusion.

    Decision

    The Delhi High Court granted an ad-interim injunction in favour of Bulgari, restraining Amaris from:

    • Manufacturing, marketing, or selling the “Shield-It!” necklace or any product resembling Bulgari’s “Serpenti Ocean Treasure Necklace.”
    • Using the “SERPENTI” trademark or any deceptively similar mark in relation to their products.

    Ratio Decidendi

    • The court found prima facie evidence that Amaris’s “Shield-It!” necklace was visually and structurally similar to Bulgari’s “Serpenti Ocean Treasure Necklace,” indicating potential copyright infringement.
    • Recognized Bulgari’s trademark rights over “SERPENTI,” noting that Amaris’s use of the identical mark on similar products constituted infringement under Sections 29(2)(c) and 29(3) of the Trade Marks Act, 1999.
    • Held that the “Serpenti Ocean Treasure Necklace,” being handcrafted and produced in limited quantities, did not fall under the purview of Section 15(2) of the Copyright Act, 1957, and thus retained copyright protection.

    LEGAL ANALYSIS

    Trade Marks Act, 1999: Sections 29(2)(c), 29(3)

    • (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,
    • (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

    Copyright Act, 1957: Section 15(2)

    • (2) Copyright in any design, which is capable of being registered under the 3 [***] 4 [Designs Act, 2000 (16 of 2000)] but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.

    Bibliography

    Author: Suhani Sharma

  • WITHDRAWAL OF ACCEPTANCE

    INTRODUCTION

    Trademark withdrawal is a crucial aspect of the Trademarks Act, 1999, which serves as the cornerstone of trademark law in India, ensuring the protection of intellectual property rights. A trademark refers to any word, phrase, symbol, design, or combination thereof used to identify and distinguish the goods or services from one another. According to Section 2(1)(zb) of the Act, a trademark must be graphically represented and capable of distinguishing the goods or services of one party from others. This includes shapes, packaging, and combinations of colours.

    In India, trademarks are registered and protected under the Trademarks Act, 1999. The registration process involves several stages like application filing, examination, publication, and registration. As per Section 18, individuals or partners may apply for trademark registration through the Trade Marks Registry within the jurisdiction of their principal place of business.

    However, during this process, the Registrar may find grounds for refusal or may apply conditions for acceptance, leading to amendments or modifications in the application. Section 19 addresses such situations by empowering the Registrar to withdraw the acceptance of an application before the trademark is officially registered. This may occur if the acceptance was made in error or if new circumstances require additional conditions, limitations, or outright refusal.

    TMWALA, with its expertise in intellectual property law, can assist clients in navigating this complex process, ensuring compliance with the legal requirements for both voluntary and involuntary withdrawal.

    UNDERSTANDING TRADEMARK WITHDRAWAL

    The process by which a person cancels their trademark application prior to its official approval is known as trademark withdrawal. In India, trademarks may be withdrawn voluntarily or in response to specific circumstances, as explained below:

    • Voluntary Withdrawal

    In order for the Registrar to mark a trademark as “withdrawn” in the Indian Trademark Registry, applicants who wish to withdraw their applications can do so electronically.

    TMWALA can guide applicants through the withdrawal process, ensuring that all necessary forms are correctly filed, and legal requirements are met.

    • Withdrawal Following Rejection

    The applicant may withdraw their trademark application if the Hearing Officer or Trademark Officer rejects it. This withdrawal has no further consequences and is regarded as if the application had never been submitted.

    Legal experts at TMWALA can advise on the potential implications of withdrawal and assist in preparing for appeal.

    SECTION 19 OF THE TRADE MARKS ACT, 1999:

    Section 19 enables the Registrar to withdraw the acceptance of an application if it was accepted:

    • In error or
    • Without giving due regard to the situations in which the trademark shouldn’t have been approved or
    • Without putting the required limits, limitations, or conditions.

    After speaking with the applicant, the registrar has the option to revoke the acceptance and act as though the application had never been approved.

    REQUIRED FORMS FOR INITIATING TRADEMARK WITHDRAWAL

    • Form TM-O: Used in trademark withdrawal cases that fit the criteria listed in Trademark Act sections 47 and 57. When non-use or other circumstances listed in these sections are the basis for withdrawal, this form is selected.
    • Form TM-U: This form is only utilized in situations involving withdrawals that meet the requirements outlined in Section 50 of the Trademark Act. It applies when the withdrawal is made for grounds pertaining to a registered trademark’s cancellation or alteration.

    For businesses facing the withdrawal process, TMWALA provides expert advice on the appropriate form and the steps to ensure timely and proper submission.

    INITIATION OF WITHDRAWAL

    The withdrawal process typically begins with an office action, as outlined below:

    1. Identification of Error:The concerned officer certifies that the trademark application was approved, especially the officer in charge of PRAS (Pre-registration Action System) or EPR (Examination of Proprietary Rights):
      • In error.
      • With inappropriate restrictions or constraints.
      • As a result of errors in data entry (e.g., inaccurate classification, goods/services specification, or trademark representation).
      • For trademarks that are forbidden or not registrable (such as trademarks that resemble International Non-Proprietary Names for pharmaceuticals).
    2. Proposal for Withdrawal: The Registrar of Trademarks, the Controller General of Patents, Designs, and Trade Marks (CGPDTM), receives a note suggesting the withdrawal of acceptance.
    3. Referral to the Show Cause Hearing Section:Following approval by the CGPDTM, the application is sent for Show Cause Hearing, which, in accordance with Rule 42 of the Trade Marks Rules, 2017, starts the formal withdrawal procedure.

    WITHDRAWAL PROCESS

    The following is the detailed process for withdrawing acceptance in accordance with Section 19 and Rule 38:

    • Issuance of Notice:The applicant receives a notice outlining the grounds for withdrawal or change of acceptance as well as the Registrar’s concerns.
    • Response from the Applicant:The notice has 30 days for the applicant to reply. The applicant might:
      • Amend the application to comply with the Registrar’s requirements.
      • Apply for a hearing.
      • Withdraw the application voluntarily.
    • Deemed Withdrawal: The acceptance is considered withdrawn, and the application returns to the pre-acceptance stage if the applicant does not reply within the allotted 30 days.
    • Hearing Process: The Registrar sets up a hearing if the applicant seeks one. The applicant has two options for presenting their case: in person at the hearing or in writing.
    • Registrar’s Decision: The Registrar has the following options after examining the applicant’s materials:
      • Refuse to accept the application.
      • Put additional restrictions or requirements on the application.
      • Permit the application to move forward with the required changes.
    • Implementation of the Decision:The application moves forward in accordance with the decision’s implementation. The procedure proceeds as if the application had not been accepted in the first place if approval is revoked.

    EFFECTS OF TRADEMARK WITHDRAWAL

    The rights of the trademark proprietor and the trademark’s accessibility to third parties are significantly impacted when a trademark is withdrawn.:

    • Loss of Trademark Claims: Any prior legal claims or rights that the trademark proprietor may have had over the mark are essentially nullified by the withdrawal. As a result, the trademark returns to the public domain, where it can be registered and used by anybody.
    • Status Update in Trademarks Registry: When a trademark application is withdrawn, the official records are immediately updated. The application status will be updated to “withdrawn,” indicating the official end of the application process, on the Indian Trademarks Registry’s digital platform to reflect this change.
    • Restrictions on Trademark Use: The original owner loses all usage rights to the trademark after it is withdrawn. Since the trademark’s revocation deprives it of any protective rights, they are no longer permitted to lawfully use it in commerce or claim any exclusive rights thereto.

    CONCLUSION

    In order to preserve the validity and correctness of the Indian trademark registration system, trademark withdrawal under the Trademarks Act, 1999, is essential. The withdrawal procedure guarantees that only marks that satisfy all legal requirements are given protection, regardless of whether it is started voluntarily by the applicant or in response to regulatory investigation under Section 19.

    The law offers a vital precaution against misuse and incorrect registration by giving the Registrar the authority to review and cancel licenses given incorrectly or under incomplete evaluations. Natural justice principles are upheld while regulatory diligence is reinforced by the structured procedure, which includes hearings, show cause notices, and opportunity for applicant response.

    In the end, the withdrawal procedure safeguards the public interest, maintains the integrity of the trademarks registry, and guarantees that only truly legitimate and distinctive marks are granted intellectual property rights.

    Throughout the trademark withdrawal procedure,TMWALA may aid clients by offering legal advice, guiding them through the nuances of trademark law, and making sure their rights are completely upheld.