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Tag: Trademark Law India

  • 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.

  • TRADEMARK REGISTRATION PROCESS AND FEE

    INTRODUCTION

    You must first register your trademark if you wish to acquire rights over it. In India, registering a trademark is a crucial first step for any company or individual looking to build and safeguard their brand. One registers their brand under the trademark legislation of 1999, which is overseen by the Office of the Controller General of Patents, Designs, and Trademarks, to safeguard their brand identification. Following registration, the owner of the trademark is granted exclusive rights to the class of goods and services it represents.

    The steps involved in registering a trademark in India, including how to do so, the trademark registration process, the trademark registration timeline, and the trademark filing fees, will all be covered in this article.

    TMWALA ensures compliance with each step, which makes from trademark registration journey smooth.

    TRADEMARK

    One form of intellectual property that distinguishes one brand’s goods and services from those of other brands is a trademark. A trademark might be a single word, phrase, symbol, emblem, or a combination of these. Since the owner of a trademark has the sole right to use it, they may complain if someone else tries to use it for their products or services. A trademark identifies the owner of a particular good or service.

    Trademark as defined under section 2(1)(zb) is “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours;”

    HOW TO REGISTER A TRADEMARK IN INDIA?

    The first step is to determine whether the mark you are attempting to acquire for your company is available. To accomplish this, you should conduct a trademark search, which varies depending on your jurisdiction. You may also look for the mark’s availability abroad. You can then continue with the registration process if the mark is available.

    Either in person at the trademark registry office or online at IP India’s official website, the trademark application must be filed in FORM TM-A. Depending on the nature of the business, the application may be submitted for a single class or multiple classes.

    TRADEMARK REGISTRATION PROCESS

    Trademark Registration Process in India includes the following steps

    1. Trademark Search Report: To make sure the mark is distinctive and unique, one must conduct a trademark search before applying. Because it helps to prevent future legal conflicts, this step is crucial. It saves time, money, and effort. One can do the trademark search on the IP India website: https://ipindiaservices.gov.in
    2. Filing of Trademark Application: The trademark application is filed on the official IP India website, together with the necessary paperwork. The applicant can begin utilizing the ™ symbol with the brand name or logo after applying. You have the option of filing offline or online.
    3. Vienna Codification: The Registrar of Trademarks uses the Vienna Classification to assign a trademark to a different classification if it contains any figurative marks.
    4. Formalities Chk Pass: At this point, a formality check is performed on the application and the supporting documentation. A Formality Check Report is generated in the event that any procedural flaws are discovered. Within a month, the applicant has to make the necessary corrections.
    5. Trademark Examination: The application is examined by a trademark officer to see whether it is in compliance or if it matches any previously registered marks. If it does, the officer provides a trademark examination report that includes the objections discovered during the examination. Aspects including distinctiveness, descriptiveness, and similarity to previous trademarks are evaluated throughout the assessment. The officer will object and identify competing trademarks in the same class if the mark violates Sections 9 or 11 of the Trade Marks Act, 1999.
    6. Reply to Examination Report: After obtaining the Examination Report, the applicant or their representative has one month to address any objections. The application may be abandoned if no response is received. The application moves forward to approval if the register is satisfied with the response and all legal requirements are met.
    7. Show Cause Hearing: A hearing is set if the response is not sufficient. The application may be accepted conditionally or rejected by the examiner. The candidate has one month to meet the requirements if they are accepted conditionally. Publication of the trademark occurs only after compliance. The applicant is entitled to appeal if their request is denied.
    8. Journal Publication: Following acceptance, the trademark is published for four months in the Trademark Journal. Third parties may object to the application during this period.
    9. Withdrawal of Acceptance: After providing the applicant a chance to be heard, the Registrar may decide not to accept a trademark application under Section 19 of the Trade Marks Act, 1999. Usually, this takes place prior to the registration being finalized.
    10. Opposition: Anybody may contest the trademark within four months after its publication, per Section 21 of the Trade Marks Act, 1999. Typical reasons for protest include:
      • Similarity or identity with an earlier or existing registered trademark.
      • Lack of distinctive character.
      • Descriptive nature of the mark.
      • Application made in bad faith.
      • Use of customary terms in current language or trade practices.
      • Likelihood of public deception or confusion.
      • Conflict with existing laws.
      • Prohibition under the Emblems and Names (Prevention of Improper Use) Act, 1950.
      • Content is likely to offend the religious sentiments of any class or section of people.
    11. Counterstatement and Evidence Stages: The applicant is required to submit a counterstatement after being served with a notice of objection. This is succeeded by:
      • Evidence in support of opposition under Rule 45(1).
      • Evidence in support of application under Rule 46(1).
      • Further evidence in reply by the opponent under Rule 47.
      • Additional evidence under Rule 48 of the Trade Marks Rules, 2017.
    12. Hearing with Third Party (if applicable): Following the filing of all supporting documentation, the Trademark Registry Officer holds a hearing to determine whether or not the opposition can be maintained.
    13. Trademark Registration: A Trademark Registration Certificate is granted if there is no resistance or if all oppositions are settled in the applicant’s favor. After that, the applicant may combine their trademark with the ® symbol.
    14. Renewal :The ten-year validity of a registered trademark can be extended as many times as the registered proprietor desires. Non-use for more than five years, failure to renew, mark modifications, addition of goods or services, inconsistencies with Sections 9 and 11 of the Trade Marks Act, 1999, omissions, fraudulent registration, or market confusion are all grounds for rectification.

    TRADEMARK REGISTRATION TIMELINE

    The Trademark registration timeline starts with a trademark search:

    • Trademark Search: 1–2 Days
    • Filing of Trademark Application: 1–3 Days
    • Vienna Codification: 3–5 Days
    • Formalities Check: 7–15 Days
    • Trademark Examination: 1–3 Months
    • Reply to Examination Report: Within 1 Month
    • Show Cause Hearing(if required): 1–2 Months
    • Journal Publication: 4 Months
    • Withdrawal of Acceptance(if applicable): Before registration
    • Opposition: Within 4 Months
    • Counterstatement and Evidence Stages: 6–9 Months
    • Hearing with Third Party(if applicable): 1–2 Months after the evidence stage
    • Trademark Registration: 1–2 Months after opposition resolution
    • Renewal: Every 10 Years

    Overall Timeline

    • Without Opposition: 12–18 months
    • With Opposition: 24–30 months

    TRADEMARK FILING FEES

    The trademark filing fees in India can differ based on the applicant type and the filing method. For individuals, startups, and small businesses, the fee is rupee 4,500 per class for online filing,i.e., E-filing, and rupee 5,000 per class for physical filing. For other entities, such as companies, LLPs, and partnership firms, the fee is ₹9,000 per class for online filing and ₹10,000 per class for physical filing.

    You can get the best trademark filing deal with TMWALA.

    CONCLUSION

    In India, trademark registration is essential for having exclusive rights over your applied trademark. The Trademark registration process in India includes several steps from conducting a trademark search to trademark renewal.

    The Trademark registration timeline typically takes 12 to 18 months to complete without opposition, and with opposition, it may take up to 30 months.

    The trademark filing fee depends on the applicant type and the filing method. For online filing, it can be 4,500 rupees or 9,000 rupees, and for offline filing, it can be 5,000 rupees or 10,000 rupees. Differ based on business type, whether a single firm or LLP, or a Partnership firm.

    TMWALA can make this complicated journey easy for you by dealing with all the compliance checks and offering you the best advice at each stage.

  • TRADEMARK EXAMINATION REPORT

    INTRODUCTION

    In India, the trademark registration process ensures that trademarks are unique and legally protected under the Trade Marks Act, 1999. After an applicant submits a trademark application to the Indian Trade Marks Registry, the status of the application may initially appear as “Marked for Exam”. This status signifies that the trademark is now undergoing examination by an associate examiner to determine its eligibility for registration.

    The examination process is a key step in determining whether a trademark is eligible to be published in the Trade Marks Journal and, eventually, granted registration. This article provides a detailed look into the trademark examination process, including the steps involved, the criteria for examination, and what happens after the application is marked for examination.

    WHAT DOES “MARKED FOR EXAM” MEAN?

    When a trademark application is assigned to an Associate Examiner for scrutiny, its status on the Indian Trade Marks Registry website is updated to “Marked for Exam”. This status indicates that the application is under formal examination, which means that an examiner will assess whether the mark qualifies for registration based on the criteria established under the Trade Marks Act, 1999.

    The examiner’s task is to scrutinize the trademark application, perform a search to identify any conflicting trademarks, and decide whether the mark can be accepted for publication in the Trade Marks Journal. This examination is crucial because it helps ensure that trademarks are distinctive and do not infringe on existing marks, protecting businesses and consumers alike.

    At this stage, TMWALA can provide you with expert assistance to ensure your trademark application meets all the formal requirements and that your mark is classified correctly to avoid any initial delays or rejections.

    THE TRADEMARK EXAMINATION PROCESS: STEP BY STEP

    Step 1: Formal Review and Filing Compliance

    The first step of the examination process is to ensure that the trademark application complies with the formal requirements set by the Trade Marks Registry. This includes verifying that:

    • The correct forms have been filled out (e.g., TM-A form for application).
    • All mandatory details have been provided, including the applicant’s name and address, a clear representation of the trademark, and a description of the goods or services the mark will cover.
    • Payment of the application fee has been made.
    • The mark is categorized into the appropriate class (out of the 45 classes under the Nice Classification of goods and services).

    If any deficiencies or irregularities are found during this initial review, the applicant will be notified, and they will need to rectify the issues before the examination proceeds.

    Here, TMWALA can guide you through the filing process, ensuring that all documentation and legal requirements are met accurately, reducing the chances of initial rejection due to minor errors.

    Step 2: Trademark Search for Conflicts

    Once the application is accepted as compliant, the examiner conducts a thorough search of the existing trademarks in the Trade Marks Registry. The primary objective of this search is to identify:

    • Identical or similar trademarks that are already registered or pending registration.
    • Trademarks that are similar in relation to the goods or services the applicant is claiming for their mark.

    The examiner will check the phonetic and visual similarity of the applied mark to ensure there is no likelihood or confusion. For instance, if the trademark is too similar to an existing registered mark in the same or a related class, the examiner may raise an objection.

    Before filing your application, TMWALA conducts an in-depth trademark search to assess the likelihood of conflicts with existing trademarks. This proactive search helps mitigate potential rejections later in the process, saving both time and resources.

    Step 3: Assessing Registrability Under the Trade Marks Act, 1999

    The core of the examination is assessing whether the trademark meets the legal standards for registration under the Trade Marks Act, 1999. The key criteria include:

    • Distinctiveness: The mark must be unique and capable of distinguishing the goods or services of one business from those of another. Trademarks that are generic, descriptive, or commonly used in the industry are likely to be rejected.
    • Non-conflict with public interest: The mark should not be offensive, scandalous, or contrary to public policy or morality. It also should not violate any existing laws (e.g., national flags, symbols, or the names of countries).
    • Non-descriptive: Trademarks that merely describe the goods or services (such as “Fresh Apples” for apples) are usually not registrable.
    • No Likelihood of Confusion: The examiner evaluates whether the trademark is likely to cause confusion with any existing marks, especially in the same or related fields.

    Step 4: Identifying Conditions, Limitations, or Restrictions

    In some cases, the examiner may propose specific conditions, limitations, or restrictions on the use of the trademark. These may include:

    • Limiting the geographical scope of the mark’s use if there is already a similar mark registered in another region.
    • Imposing disclaimers if a part of the mark is deemed non-distinctive (e.g., disclaiming the word “fresh” in a trademark for fruit).
    • Adding conditions on how the mark can be used, based on the specific goods or services it covers.

    ISSUANCE OF THE EXAMINATION REPORT

    Once the examination process is complete, the examiner issues a consolidated Examination Report. The report may contain the following outcomes:

    1. Acceptance with No Objections: If the examiner is satisfied that the mark meets all requirements, the application is accepted for publication in the Trade Marks Journal.
    2. Objections: If the examiner identifies any issues (e.g., conflicting trademarks, lack of distinctiveness, etc.), the application will be provisionally refused, and the examiner will issue a detailed Examination Report listing the objections.

    The applicant will then need to respond to the objections within a specified time frame, usually 30 days from receiving the examination report.

    If objections arise, TMWALA will assist you in drafting a thorough response, addressing each objection with the necessary evidence or legal arguments. Whether it involves providing proof of acquired distinctiveness or modifying the trademark, TMWALA’s expert team ensures your application stays on track.

    RESPONDING TO OBJECTIONS

    If objections are raised, the applicant must take appropriate action to overcome them. There are a few ways to address objections:

    • Filing a Response: The applicant can provide explanations or evidence to support the distinctiveness of the trademark. For example, if the examiner objects on the grounds of descriptiveness, the applicant may provide evidence of the mark’s acquired distinctiveness through usage in the marketplace.
    • Amendment of the Application: In some cases, applicants may need to modify their application or amend the trademark in response to objections (e.g., changing the wording or the design of the logo).
    • Requesting a Hearing: If the applicant disagrees with the objections, they can request a hearing before the Registrar of Trade Marks to present their case and seek a resolution.

    PUBLICATION IN THE TRADE MARKS JOURNAL

    If the examiner accepts the application or the applicant successfully overcomes objections, the trademark is then published in the Trade Marks Journal. This publication serves to notify the public about the proposed trademark registration, allowing third parties to raise any opposition.

    The opposition period typically lasts 4 months from the date of publication. During this time, anyone who believes they will be adversely affected by the registration of the mark can file an opposition with the Trade Marks Registry.

    FINAL REGISTRATION

    If no opposition is filed, or if the opposition is resolved in favor of the applicant, the mark proceeds to the final registration stage. The applicant will receive a Certificate of Registration, confirming their exclusive rights to use the trademark in relation to the specified goods or services.

    CONCLUSION

    The trademark examination process is crucial to maintaining the integrity of the trademark system and ensuring that only those marks that meet the requirements of distinctiveness and legality are granted protection. Understanding the examination steps, responding to objections promptly, and being aware of the overall timeline can significantly increase the chances of successful trademark registration.

    From the moment an application is “Marked for Exam” to its final registration, the process requires careful attention, adherence to legal requirements, and strategic action. By navigating each step diligently, applicants can protect their brand identity and secure exclusive rights to their trademark in India.

    TMWALA, with its expert guidance at every stage of the processfrom filing to final registrationensures your trademark journey is smooth, timely, and successful. Whether you need assistance with formal review, responding to objections, or understanding the nuances of the process, TMWALA is the ideal partner to help you secure your brand’s legal protection.

  • FORMALITIES CHECK PASS

    INTRODUCTION

    The “Formalities Check Pass” status in a trademark application indicates that the Indian Trademark Registry has verified the applicant’s details, the application’s accuracy, and that it complies with all procedural requirements. This signifies that the application is complete and ready to proceed to the next stage, which is the examination of the trademark’s distinctiveness and potential conflicts with existing trademarks. 

    The process of registering a trademark in India involves several stages, each with its legal significance. One of the early and crucial milestones in this journey is the “Formality Check Pass”. Despite sounding procedural, this step plays an essential role in ensuring your trademark application moves ahead smoothly.

    In this article, we’ll break down what “Formality Check Pass” means, why it matters, and what comes after.

    TRADEMARK STATUS: FORMALITIES CHECK

    At this stage in the trademark registration process, the Registrar of Trademarks undertakes a preliminary review to verify that all procedural requirements have been met under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017. This initial screening is essential to confirm that the application is formally complete and compliant.

    The formalities check involves a thorough verification of the applicant’s basic details, including their name, address, and nationality. Additionally, it ensures that the information provided in the application is accurate, consistent, and complete. As part of this process, the Registrar also assesses whether the applied trademark is prima facie free from conflict with any pre-existing trademarks and does not violate any statutory provisions.

    When an application successfully clears this stage, an Examination Report is issued, indicating that the formalities check has been passed. The application then moves forward to the substantive examination phase, during which the distinctiveness and registrability of the trademark are evaluated in greater depth

    However, if any discrepancies, omissions, or legal inconsistencies are found during the formality scrutiny, the Registrar may raise formal objections. In such cases, the applicant is required to respond to and resolve the objections within a prescribed time period. Only after these issues are satisfactorily addressed will the application be allowed to proceed to the next stage of examination.

    TMWALA provides end-to-end support during this critical phase by ensuring that your application is complete, legally sound, and that all mandatory documentation is in order. In the event of any formal objections, their experts assist in timely and accurate responses to avoid delays or rejections.

    TIMELINE FOR FORMALITY CHECK PASS IN TRADEMARK REGISTRATION

    1. Submission of Trademark Application

    The process officially begins when the applicant submits the trademark application through the prescribed Form TM-A, typically via the online portal. This date of filing is considered Day 0 in the trademark registration timeline.

    2. Commencement of Formality Check

    Within approximately one to seven working days after submission, the Trade Marks Registry initiates a preliminary review of the application. This involves verifying whether the correct form has been used, whether the goods or services have been classified properly, and whether the applicant’s details, accompanying documents, and statutory fees are all in order.

    3. Result of the Formality Check

    If the application meets the necessary procedural requirements, the status is updated to “Formality Check Pass”, generally within seven to ten working days from the date of filing. At this point, the application progresses to the substantive examination stage. On the other hand, if any procedural deficiencies or errors are detected, the application status changes to “Formality Check Fail”. In such cases, the Registrar notifies the applicant about the issues identified, and the applicant is usually given a 30-day window to make the required corrections and resubmit the application for further processing.

    TMWALA provides expert guidance in addressing objections quickly and effectively, minimizing the risk of rejection or abandonment due to unresolved issues.

    WHAT HAPPENS AFTER PASSING THE FORMALITY CHECK?

    When a trademark application’s status reflects “Formalities Check Pass,” it indicates that all required details and accompanying documents have been submitted under the procedural norms and have successfully cleared the preliminary review. However, it is important to understand that this status does not equate to the trademark being officially registered.

    Following this stage, the application is forwarded to an Examining Officer, who is responsible for assessing whether the mark complies with all substantive legal requirements necessary for registration. The duration of this examination phase can differ significantly, influenced by the complexity of the application, the existence of similar marks already on record, and the current volume of pending applications at the Trademark Registry.

    During the examination period, it is crucial for applicants to keep a close watch on the status of their application and respond accordingly to any communications or additional queries raised by the examiner. Additionally, conducting a prior trademark search is advisable to identify any potential conflicts that might pose a barrier to successful registration.

    WHAT IF THE APPLICATION FAILS THE FORMALITY CHECK?

    In cases where discrepancies or omissions are detectedsuch as missing documents, incorrect class selection, or unclear representations, status is marked as “Formality Check Fail.” The Registrar may issue a notice outlining the objections or irregularities, and the applicant is typically given a limited time to rectify the issues. If no corrective action is taken, the application may be treated as abandoned. Therefore, attention to detail during the filing stage is essential to avoid unnecessary delays and complications.

    With TMWALA’s proactive legal and procedural support, applicants can quickly address any issues flagged during the formality check, preventing delays and reducing the risk of the application being considered abandoned.

    WHY THIS STAGE MATTERS

    Though seemingly procedural, the formality check acts as a vital filter in the registration process. It prevents defective or incomplete applications from entering the examination pipeline, thereby conserving administrative resources and safeguarding applicants from future rejections. A successful formality check demonstrates that the applicant has taken care to comply with the prescribed legal norms, which significantly increases the chances of a smooth progression through the remaining stages of registration. It is also worth noting that this step does not assess the distinctiveness or legality of the trademark itself; it merely confirms that the application is ready for such evaluation.

    LEGAL BASIS

    While the term “Formality Check Pass” is not explicitly defined in the Trade Marks Act, 1999, it is an administrative step under the authority of Section 18 of the Act, read with Rule 10 to Rule 22 of the Trade Marks Rules, 2017.

    Section 18(1) – Any person claiming to be the proprietor of a trademark used or proposed to be used may apply in the prescribed manner for the registration of the mark.

    The Registrar must ensure that the application is in order before it proceeds to substantive examination under Section 18(2).

    CONCLUSION

    The “Formality Check Pass” stage, although administrative in nature, plays an essential role in the trademark registration process under Indian law. It acts as the gateway to substantive examination and ultimately to registration. For applicants, understanding this stage means being better prepared to submit complete, compliant, and well-documented applications. In the competitive world of branding and business, where legal protection of identity is crucial, even procedural compliance can make a world of difference. As such, navigating this stage successfully is not just about ticking boxes about setting the foundation for securing a valuable intellectual property asset.

    TMWALA empowers businesses and individuals by simplifying the trademark filing process, offering legal clarity, handling objections, and providing expert end-to-end support, helping you protect your brand efficiently and confidently.

  • TRADEMARK SEARCH REPORT

    INTRODUCTION

    Trademark search report is the first step taken by an individual, company or any other person when they need to know whether a specific mark exists, or they want a mark to get registered. Conducting a Trademark Search helps in ensuring that the logo, slogan or mark is unique and distinctive in nature. Trademark search reports becomeuseful in identifying the marks that can arise conflict or infringe the right of the owner of the mark. Trademark search is a very simple and easy process to do, anyone can do it.

    The result of Trademark search is based on the product description, which class it belongs too, which word or mark is being used. It not only shows the existing marks but also their present status like whether the mark is registered, opposed, abandoned etc.., In this article we are going to discuss what is Trademark, the importance of Trademark Search, types of Trademark Search, the process of Trademark Search, how it can be used as evidence and common mistakes during Trademark Search.

    WHAT IS TRADEMARK?

    A Trademark is a form of intellectual right property that distinguishes one brand’s goods and services with other brands goods and services. A trademark consists of a word, phrase, insignia, symbol or combination of all in one. The Trademark identifies that a particular goods or service belongs to whom, if anyone else tries to have the same mark for their goods or service the owner has the right to claim opposition as he has exclusive right on that Trademark.

    THE IMPORTANCE OF TRADEMARK SEARCH REPORT

    Trademark Search is an excellent example of ‘Precaution Is Better Than Cure’, as it can help in identifying the mark which can cause conflict in future. Conducting a Trademark Search is important as it can minimize the risk of investing in a mark that is already being used by some other party. It helps you to avoid any kind of legal dispute which can occur by using such mark and it also helps in saving your money from those legal processes which you may face using that disputed mark.

    TYPES OF TRADEMARK SEARCH

    In India various type of Trademark search can be done based who that trademark is going to be used by the Applicant, few of them are: –

    Phonetic search:

    It is done to find out that if there is any mark which soundsto the mark you are applying for, the words can be different but do those two marks sound similar? For example, Organic and Organik or Frooti and Fruiti

    Exact match:

    It is the most basic trademark search as it used to find the identical word to that of the proposed mark.

    For example: AYN and AYN

    Class wise search:

    There is a total of 45 classes of trademark, class 1 to 34 is for goods and 35-45 is for services. The class wise search ensures that no identical mark as of proposed mark exists in same class.

    For example: class 9 electronics, marks Sony and Soni

    Comprehensive search:

    Comprehensive search is in depth search of a mark, it includes all the above-mentioned searches and search of the status the similar mark whether it is opposed, abandoned or pending.

    THE PROCESS OF TRADEMARK SEARCH

    The Trademark Search is done by using the Trademark Registry online data, the search can be done by anyone by the following process:

    Visit the Trademark Registry’s official website Official website of Intellectual Property India

    Go to related links, there you find public search

    Click on public search, then it will ask permission to proceed to external site, click on yes

    You will reach the public search page, which looks like this:

    • Then fill in the required information on this page, for example
      • Search type: – type of search you are conducting (e.g. wordmark)
      • Wordmark: – type the wordmark you are searching for (e.g. AYN)
      • Class: – type the class in which you are searching for (e.g. 45)
      • Enter the code shown above: – carefully enter the captcha (e.g. 12345)

    • Search: – Last step is to click the search button, you will get all the similar existing trademark registered in Trademark Registry, like

    HOW IT CAN BE USED AS EVIDENCE

    Trademark Search Report can work evidence in Trademark infringement case where you must prove that you have taken the mark in good faith and in a bona fide intention.

    The Trademark search report includes details of every mark whether they were opposed, pending or abandoned, and if you have taken a mark which was abandoned by its prior user then your intention of applying that mark is in good faith, and this can benefit you in a Trademark infringement case.

    COMMON MISTAKES DURING TRADEMARK SEARCH

    While conducting a trademark search people usually make these mistakes: –

    • Not doing phonetic search: people usually do word mark search if it’s clear they think that there will be no conflict in registering this mark, but the phonetically similar sound can be a challenge later.
    • Not considering unregistered mark: this sounds confusing, how can an unregistered mark be a problem, but it can. If someone in the local area has been using a similar mark for a very long period, then they claim that they are the prior user of the mark which will eventually create a big problem for the present Applicant.
    • Filling the mark without an attorney:Trademark attorney or professionals make sure to check and clear every aspect related to your Trademark Registration. So contact TMWALA if you need any guidance regarding your Trademark Search or Trademark Registration.

    CONCLUSION

    Conducting a Trademark Search is the very first and most crucial process in Online Trademark Registration process. It ensures that your proposed Trademark does not infringe someone else’s Trademark rights. It also provides clarity about whether you should move forward with the present mark or not. A through Trademark Search by yourself or with the help of a profession can help you save a lot of your time, money, energy and help you avoid future conflicts, legal troubles and unnecessary hassle in the long run. 

  • Section 18 of the Trademarks Act 1999: Application for Registration

    The Trademark law in India provides a structured process for the registration of trademarks. This is done in order ensure brand protection and legal enforcement against any type of infringement. Under the trademark law the central provisions which govern the trademark registration in India is the Section 18 of the Trademarks Act. 

    This section specifically lays down the procedure and eligibility criteria for filing of a trademark application. It correspondingly clarifies in detail who can apply for a trademark and who cannot along with the necessary formalities, and all the essential aspects to form a valid application.

    General Terms Associated with Section 18:

    Applicant: An Applicant can be a person or an entity like sole proprietors, businesses (Registered Companies), partnerships (like LLPs), trusts, or even government bodies applying for trademark registration.

    Proprietor: Proprietor is the individual or legal person who claims the ownership of a trademark and seeks exclusive rights to it.

    Proposed to be Used: A trademark application can be filed even before the actual use of the said mark. It is done so provided that the applicant has a bona fide intention to use it in the coming future.

    Service Mark: It is a trademark which is used to identify services in order to distinguish them from the goods. For example, a logo of a famous hotel chain is a service mark.

    Goods Mark: It’s a trademark which is used to identify and distinguish products i.e. goods. For example, the “Nike” logo is specifically registered and known for footwear and apparel wear.

    Subsections of Section 18 of The Trademarks Act, 1999

    Section 18 governs the application procedure for registration of a trademarkas per the Trademarks Act 1999. It mainly consists of four vital subsections that outline specifics. These specifics include l who can apply, the requirements of a bona fide intention to use the said trademark, and the procedure involved in registration.

    Section 18(1): Who Can Apply for a Trademark 

    According tothe Section 18(1) of Trademarks Act, any legal person who is claiming to be the proprietor of a trademark can apply to register it for themselves.

    They can be individuals, businesses, and legal entities. Even foreign entities can also apply for registration of a trade mark in India, however, only if they comply with Indian trademark laws. Joint applicants can also file a trademark application for registration of a trade mark together.

    Illustration: A Start-up Founder Applying for a Trademark

    Let’s imagine an entrepreneur, Raj, launching a new brand of organic skincare products under the name “GlowPure.” Even before selling any product, he can file a trademark application under Section 18, claiming proprietorship and expressing an intent to use the mark.

    Section 18(2): The Requirement of Bona Fide Intention

    According to Section 18(2), an application for registration of the trade mark must be filed with a genuine intention to use the trademark in a commercial field. This means an applicant cannot register a trademark just to ‘block’ others from using it. They must be intending to use it for themselves.

    Case Law: Pfizer Products Inc. v. Rajesh Chopra & Ors. (2006 (32) PTC 301 (Del)

    In context of this case, Pfizer, the American pharma giant, opposed a trademark application on the grounds that the applicant had “no bona fide intention” to use the mark. Delhi High Court held that if an applicant cannot demonstrate a genuine intention to use the trademark, their application may be rejected by the Registrar. To learn more about this case visit Indian case law.

    Illustration: Preventing Trademark Hoarding

    Suppose a company registers the name “ZyloTech” for mobile phones but never launches a product under this name. And now if another business wants to use “ZyloTech” for electronics and can prove the first applicant had no real intention to use the mark, they may challenge the registration.

    Fun Fact: If the owner has not applied the trademark to the goods or services for a continuous period of five years or more, the Registrar has the authority to withdraw the trademark from the Register. Five years from the day the trademark is entered into the Register, the Registrar will compute. 

    As a result, a person or business will forfeit their trademark rights if they do not use their registered trademark for five years after the date of registration.

    Trademark Registration and Past Use Without Usage

    As per theSection 18(2), a trademark applicant must have a “bona fide intention” to use the said mark. Nevertheless, what happens if someone has been associated with a trademark but hasn’t actually used it in commerce and now wants to register it?

    This situation commonly arises when businesses have reserved a brand name, have built recognition through promotions, or have used it sporadically without actual trade. Indian courts have recognized that past association with a mark, even without substantial use, can support registration—provided there is a genuine intent to use it in the near future.

    Case Law: Hardie Trading Ltd. v. Addison Paints & Chemicals Ltd. (2003 (27) PTC 241 (SC))

    In this case, the Supreme Court held that mere non-use of a mark does not automatically disqualify a proprietor from registration, but lack of intent or unjustified delays in use may lead to cancellation.

    Can You Use a Trademark Immediately After Filing?

    If an application is filed today, can the owner start using the trademark right away? Absolutely Yes, a trademark applicant can start using the mark immediately, even before registration is granted. That is because trademark rights in India are based on use, not just registration.

    However, under Section 46, if a trademark is registered but remains unused for five consecutive years, it may be removed from the register due ‘to non-use cancellation’. This means businesses should commence usage as soon as possible to maintain exclusive rights.

    Thus, while a pending application provides some legal standing, full proprietary rights and legal enforcement only arise once the mark is successfully registered.

    Section 18(3): Filing a Trademark Application 

    As per Section 18(3) of the Trade Marks Act, a trademark application must be filed in the prescribed manner, accompanied by:

    • A clear representation of the mark.
    • Details of goods or services the mark will be used for.
    • The applicant’s name and address.
    • A statement declaring whether the mark is already in use or is “proposed to be used.”
    • Payment of the prescribed fee.

    Case Law: Amar Nath Sehgal v. Union of India (2005 (30) PTC 253 (Del))

    This case in particular emphasized the importance of properly filing and maintaining trademark applications in order to ensureit’s legal validity and protection.

    Illustration: Trademark Filing for an E-Commerce Brand

    Take a company named “ShopEase” files a trademark application for its online shopping platform. It provides details about its logo, service category (e-commerce), and business owner details to complete the application correctly.

    Section 18(4): Single or Multiple Class Applications

    Section 18(4) of the Trade Marks Act allows an applicant to file for trademark registration under:

    • A single class, if the trademark applies to one category of goods/services.
    • Multiple classes, if the trademark is intended for different types of goods/services.

    Case Law: Dabur India Ltd. v. Emami Ltd. (2004 (29) PTC 1 (Del)

    In this case, Dabur applied for a trademark in multiple categories, but Emami challenged it, claiming overlapping product lines. The Court clarified the need for clear classification in multi-class applications.

    Illustration: A Fashion Brand Expanding to Accessories

    A fashion brand “TrendWear” initially registers its trademark under Class 25 (clothing). Later, as it starts selling handbags and shoes, it files additional applications under Class 18 (leather goods) and Class 35 (retail services).

    Key Takeaways from Section 18

    • Anyone who claims to be a trademark proprietor can apply for registration of a trademark.
    • A bona fide intention to use the trade mark for which the application for registration has been filed is mandatory.
    • The application for registration must follow prescribed procedures.
    • A trademark can be registered under one or multiple classes.

    Conclusion

    Thus, Section 18 of the Trademarks Act, 1999, ensures a structured and fair trademark application process. By requiring a ‘bona fide intention’ and clear application formalities.It prevents fraudulent filings and ensures genuine proprietors receive their due legal protection. So businesses and individuals seeking trademark registration should accordingly ensure their compliance with the prescribed guidelines as to strengthen their intellectual property rights.

    Author- Apoorva Lamba, 2nd Year LLB. Student of Madhav Mahavidyalaya, Jiwaji University, Gwalior

  • Section 17 of the Trademarks Act & the Anti-Dissection Rule

    Introduction

    The Trademark law in India plays a crucial role in protecting one’s brand identity, and ensuring fair competition a cutthroatmarket. Unsurprisingly, Section 17 of the Trademarks Act 1999 stands up to the task. As it governs the rights conferred on a registered trademark as a whole, which in turn reinforces something called the Anti-Dissection Rule. This principle prevents the selective or piecemeal examination of a composite trademark and ensures that protection is granted to the mark as a whole rather than to its individual elements.

    Common Words Associated with Section 17 explained:

    Composite Mark – It is a mark that includes a combination of elements. These elements can include shapes, words, scents, devices, sounds, and/or colors. The best specimen of a Composite Mark is a logo because a logo usually consists of shapes, words, specific colors&even at times, images.

    Disclaimed Elements – When a trademark includes a common word or phrase, the trademark owner may be required to ‘disclaim’ that part. Itmeaning that they cannot claim exclusive rights over it. This occurs when a portion of the trademark is by nature generic or descriptive and commonly used in the industry.

    Non-Distinctive Elements – Some words, symbols, or phrases are considered ‘too generic’ or commonly used to meet the requirements under trademark protection. These are termed as non-distinctive elements. It is because they do not help consumers uniquely identify a brand. E.g., ‘Fresh’

    Generic Terms – Generic terms are words or phrases that directly name a product or service and are commonly used in the industry. Such terms cannot be trademarked because as belong to the public domain. For example, “Milk” for a dairy brand or “Laptop” for a computer company. Those cannot be registered as trademarks since they are standard product namesfor their specific industries.

    Descriptive Terms – Descriptive terms describe a characteristic, feature, or quality of a product or service. While initially weak as trademarks, they can gain protection if they acquire secondary meaning over time. For example, “Cold & Creamy” for ice cream is descriptive, but if consumers associate it specifically with one brand, it may become protectable. 

    Section 17: Its Subsections and their Applicability:

    Section 17 of the said act deals with those rights which are conferred upon an entity with the registration of a trademark. This is mainly relevant in cases where the mark consists of multiple elements i.e., a composite mark. 

    The key principle here is that the trademark protection extends to the entire composite mark and not to each component separately, unless specifically disclaimed.

    Section 17 mainly consists of these two subsections-

    1. Section 17(1): Exclusive Rights Over Composite Marks

    According toSection 17(1) of the Trademarks Act, 1999, when a trademark is registered as a whole i.e., in its ‘entirety’, then theholderof the said mark gets exclusive rights over the entire mark, and not just different parts of it. What this means is that if a company today trademarks a full brand name, they can protect it from being copied. But they cannot claim ownership over individual words within the name if they are commonly used.

    Illustration: Imagine a bakery named “SweetBite Bakery” that has effectively registered its entire brand name under the trademark law. This would mean:

    • They have exclusive rights over “SweetBite Bakery” as a whole.
    • They cannot stop others from using “Bakery” alone because it is a generic term.
    • But they also cannot claim sole ownership of “Sweet” or “Bite” or “Bakery” separately. That is so because these words are very commonly used in the food industry.

    But, if tomorrow another bakery tries to open under the name of “SweetyBite” or “Sweet Bakes”, then it may possibly cause confusion among customers. Only thencan SweetBite Bakery take any legal action.They may that the new names are too similar to their trademark as a whole, potentially misleading customers.

    Case Law: Parle Products (P) Ltd. v. J.P. & Co. (AIR 1972 SC 1359)

    Similarly in this particular case, Parle Products, a well-knownbrand for their biscuits, had a trademark for “Glucose Biscuits” with distinctive packaging. A competitor then introduced a product with nearly identical name and packaging.

    Thus, Supreme Court ruled that minor differences in individual words or design elements do not matter if the overall mark creates confusion among customers. It emphasized that the composite mark must be considered as a whole while determining trademark infringement. To know more about this case law visit casemine.

    2. Section 17(2): No Exclusive Rights Over Disclaimed Parts

    Section 17(2) of the Trademarks Act, ensures that no exclusive rights are claimed over ‘disclaimed’ or ‘non-distinctive elements’ of a composite mark. So, if a composite trademark, then contains such terms, the proprietor cannot claim exclusive rights over those. This rightfully prevents trademark owners from monopolizing commonly used words, generic terms, or descriptive elements. As they are used by the other businesses in the industry as well.

    Let’s take an example, say if a brand registers a composite mark like “FreshBites Bakery”. This means it receives exclusive rights over the full namei.e.”FreshBites Bakery”. Meaningit does not receive monopolyover the individual words of “Fresh” or “Bakery’. This is because these are very commonly used in the food industry. Hence, other businesses can use similar terms, like “Healthy Bites” or “Tasty Bakery,” without infringing upon the trademark.

    Case Law: Marico Limited v. Agro Tech Foods Limited (2010 (44) PTC 736 (Del))

    Similarly, in Marico Limited vs Agro Tech Foods Limited, Marico, the owner of the trademark “LOSORB”, sued Agro Tech Foods. Agro Tech Foodswas using the mark “LO-SALT”. The court held that “LO” is a common abbreviation for the term “low” and cannot be monopolized by one party. The protection was limited to the composite mark of “LOSORB”, and the use of “LO-SALT” was thus not considered infringement.

    Therefore, Section 17(2) ensures that businesses cannot unfairly restrict competitors from using descriptive or industry-specific terms while still protecting their brand identity as a whole.

    Proprietors Cannot Claim Exclusive Rights Over Common or Descriptive Parts:

    As we now understand that Section 17 of the Trademarks Act ensures that businesses cannot monopolize generic, descriptive, or commonly used terms that are essential for fair competition. So, if a word is frequently used in an industry or has a general meaning, exclusive rights cannot be claimed over it. Even though it isa part of a registered trademark. Courts have consistently upheld this principle to prevent unfair advantages and to ensure availability of such terms for public use.

    Similar sentiments were expressed in Mr. A.D. Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd vs Aachi Cargo Channels Private Limited. Madras High Court ruled that the term “Aachi,” meaning “grandmother” in Tamil language, was a commonly used word.Therefore, it could not be monopolized by Aachi Masala Foods despite the plaintiff’ holding a registered trademark. The Court held that common words should remain available for others to use in a descriptive manner.

    Likewise, Bhole Baba Milk Food Industries Ltd V. Parul Food Specialities (P) Ltd, inquired the same principle. Question arose whether the word “Krishna” can be trademarked. The Court observed that “Krishna” is a widely recognized Indian name, similarto “John” in the West. And held since the term was generic and widely used, it did not acquire ‘secondary distinctiveness’. Despite it being a part of a registered trademark.

    So, we can successfully say that these rulings have time and again reaffirmed the aforementioned position.Registration in itself does not automatically grant exclusivity over common words or descriptive elements.That is unless they acquire distinctiveness over time through extensive use. So, if a business seeks exclusive rights over a particular word, it must be proven that the term has gained a unique association with the brand in the minds of consumers, rather than merely being a common or descriptive term.

    Understanding the Anti-Dissection Rule

    The Anti-Dissection Rule is a fundamental principle in the trademark law. According to which composite trademark must be considered in its entirety, rather than being analyzed in isolated parts. The rationale behind this rule is that consumers perceive trademarks as a whole rather than breaking them down into individual components.

    Illustration of the Anti-Dissection Rule in Action

    Illustration 1: ‘KENT RO SYSTEMS’ vs. ‘KENT PURE WATER’

    If ‘KENT RO SYSTEMS’ is a registered trademark, another company cannot register ‘KENT PURE WATER’ by arguing that ‘RO SYSTEMS’ is common.

    The composite mark ‘KENT RO SYSTEMS’ is protected as a whole, meaning that ‘KENT’ alone cannot be monopolized unless separately registered.

    Judicial Interpretation of the Anti-Dissection Rule

    1. K.R. Chinna Krishna Chettiar v. Sri Ambal& Co. (AIR 1970 SC 146)

    The Supreme Court held that a composite mark must be compared as a whole. And not simply by dissecting its individual components. The Court further ruled that likelihood of confusion must be judged from the overall impression that the mark creates on the consumer’s mind.

    2. M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. &Anr. (2014 SCC OnLine Del 1956)

    The Delhi High Court held that when evaluating trademark similarity, the composite mark must be viewed in its entirety.

    The case involved the dispute between ‘HAAGEN DAZS’ (a global ice cream brand) and ‘D’DAZS’ (an Indian brand).

    The Court ruled that since ‘DAZS’ was not a standalone distinctive element, the defendant could not claim exclusive rights over it and confusion must be evaluated based on the whole mark.

    3. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73

    The Supreme Court emphasized that the overall structure, phonetic similarity, and idea behind the mark must be considered.

    It rejected the argument that individual words in a mark should be compared in isolation.

    Exceptions to the Anti-Dissection Rule

    While the Anti-Dissection Rule generally applies, there are cases where courts have considered dominant parts of a mark in determining infringement.

    1. The Doctrine of Dominant Feature

    Sometimes, a dominant part of a mark is considered separately if it leaves a lasting impression on the consumer.

    Case Law: M/s Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd. (2015 SCC OnLine Bom 2309)

    The dispute was between ‘Officer’s Choice’ and ‘Collector’s Choice’.

    The Bombay High Court held that ‘Choice’ was a common word, but ‘Officer’s’ was the dominant part of the mark.

    Therefore, Collector’s Choice was found to be deceptively similar to Officer’s Choice.

    2. Phonetic & Visual Similarity Overrules Anti-Dissection Rule

    Courts may sometimes give more importance to phonetic or visual similarities, even if only a part of the mark is identical.

    Example: ‘McDowell’s No.1’ vs. ‘McDonald’s’

    Though both contain ‘Mc’, the overall trade dress and product category are different, so they were not considered similar.

    Therefore, Section 17 of the Trademarks Act, 1999 establishes the Anti-Dissection Rule. It ensures that trademarks are protected as a whole rather than in isolated parts. This prevents businesses from monopolizing generic words while ensuring fair competition. However, courts have also developed exceptions, particularly when:

    • A dominant part of the trademark creates confusion.
    • Phonetic or visual similarity outweighs dissection principles.

    For businesses, this means when registering trademarks, choose distinctive elements to avoid mandatory disclaimers under Section 17(2). In case of infringement, focus on overall similarity rather than isolated words. 

    Author – Apoorva Lamba (2nd Year Student Madhav Mahavidyalya, Jiwaji University, Gwalior)

  • SECTION 21 OF THE TRADE MARKS ACT, 1999

    A trademark is a unique symbol, logo, word, design or combination of these which is capable of being distinguished from the goods and services of one person or entity from that of another person or entity. By virtue of registration of a trade mark the owner of the trade mark enjoys exclusive right to use the same. The Trade Marks Act, 1999, which grants the registered trademarks legal protection and the owner exclusive rights, also regulated process of trade marks registration in India. Section 21 of the Act provides provisions related to opposition proceedings, allowing any person to challenge the registration of a trademark before it is officially granted.

    In addition, the Trade Marks Act, 1999 also provides process for opposition to a trade mark, where any individual or entity can challenge a trademark application if they feel, it violates their rights or creates confusion in order to preserve a fair and competitive market. This process of opposing a trade mark is outline under section 21 of the Trade Marks Act.

    Here is an article that discusses the provisions of section 21 of the Trade Marks Act in brief.

    Explanation of the terms used in the article:

    1. Oppose/Opposition: to contest or to challenge a trade mark.

    2. Opponent: The person who has filed opposition or the person who is opposing the Trade Mark applied for the registration.

    3. Applicant for Registration: The person who has filed application for the registration of the Trade Mark.  4. Opportunity to be heard: Giving the parties involved in the case equal and fair chance to present their arguments before deciding the case.

    Section 21(1) of the Trade Marks Act:

    According to Section 21(1) of the Trade Marks Act, any aggrieved person can oppose a trademark. It is not necessary for a person opposing a mark to be prior applicant or registered owner of trademark. However, it is a necessary requirement that the opposition must be in writing, in a prescribed manner and be filed within 4 months from the date of advertisement or re-advertisement of an application for registration in the Trade Marks Journal. 

    Section 21(2) of the Trade Marks Act:

    Section 21(2) of the Trade Marks Act imposes a duty on the Registrar of Trade Marks to serve a copy of the notice of opposition to the Applicant for Registration (person who filed application for registration of the trade mark). Further, section 21(2) of the Act imposes duty on the Applicant for Registration to reply to the notice of opposition by sending the counterstatement to the Registrar within two months from the date on which the Applicant for registration received the copy of the Notice of opposition.

    The Applicant for Registration, in the counterstatement, must state the grounds on which he relies for his trade mark application. Failure in doing say might result in the Application being abandoned and the same will not proceeded for registration. 

    Section 21(3) of the Trade Marks Act: 

    According to section 21(3) of the Trade Marks Act, if the Applicant for Registration sends the counterstatement within the prescribed period i.e. two months from the date of receipt of notice of opposition by the Applicant for Registration, the Registrar of Trade Marks is bound to serve a copy of the same to the opponent. 

    Section 21(4) of the Trade Marks Act: 

    After the Applicant gives the counterstatement in reply to the notice of opposition, the opposition process moves on to the evidence stage. According to section 21(4) of the Trade Marks Act, both the parties to the case i.e. the opponent and the applicant for registration are required to serve evidence in support of their claims. The opponent is required to file evidence in support of notice of opposition within two months from the date he receives the copy of the counterstatement.

    And the Applicant for Registration is required to file evidence in support of trade mark Application and counterstatement within two months from the date he receives the evidence filed by the opponent. Further, this sub-section provides that if the Registrar of the Trade Marks thinks fit, it must also provide both the parties the opportunity to be heard. 

    Section 21(5) of the Trade Marks Act: 

    Section 21(5) of the Trade Marks Act provides provision related to the decision by the Registrar of the Trade Marks. Accordingly, it provides that after considering the arguments of both the parties, evidence submitted and objections raised by the opponent in the notice of opposition, the Registrar of Trade Marks must decide whether to grant the registration to the trade mark applied for registration unconditionally, impose any conditions/ limitations on the same or refuse the registration. 

    Section 21(6) of the Trade Marks Act:

    According to section 21(6) of the Trade Marks Act, if the opponent or the applicant does neither resides nor conduct its business in India after receiving of the notice of opposition or the counterstatement, the Registrar can demand security for costs of proceedings before him. In case of failure to give the security for cost of proceedings, the notice of opposition or the application, as the case may be, will be treated as abandoned.

    Section 21(7) of the Trade Marks Act: 

    According to section 21(7) of the Trade Marks Act, if any party i.e. the opponent or the applicant for registration, desires to make any correction of any error or any amendment in the notice of opposition or a counter-statement, he can request to the Registrar of Trade Marks for the same. And, if the Registrar thinks fit, he may allow such correction or amendment. 

    CONCLUSION

    In conclusion, section 21 of the Trade Marks Act provides the provisions related to the process of opposing a trade mark in India. Accordingly, the opposition can be filed by any person within four months from the date of advertisement or re-advertisement. A copy of the said notice needs to be served by the Registrar of Trade Marks to the Applicant and the Applicant is bound to file counterstatement within two months from the date of the receipt of the copy of the notice, else the trade mark Application may be deemed to be abandoned.

    After the counterstatement is given, both the parties are required to be provide evidences to support their claims. After considering such evidences, giving opportunity to be heard and objections raised by the opponent in the notice of opposition, the Registrar may either grant registration to the trade mark or refuse the same.

    For a detailed legal perspective on trademark opposition, you can visit this resource to explore case studies and official guidelines.

  • Section 12 of the Trademark Act, 1999: Registration in the Case of Honest Concurrent Use & Special Circumstances

    The purpose of the Trade Marks Act, 1999 is to grant exclusive rights to a proprietors over their originally adopted and conceived mark while preventing any unauthorised use of such protected mark by anyone other than the original adopter and lawful proprietor. However, there are certain special circumstances in which the Trade Mark Act allows for the registration of identical or similar mark in respect of similar set of goods and services to more than one person.

    This could be done only in extraordinary circumstances as enshrined under Section 12 of the Trademark Act, 1999. The said act allows multiple proprietor to obtain registration of identical or similar trademark in relation to similar goods and services in case of honest and concurrent use.  Let’s understand this provision, its applicability and meaning in detail.

    What is Honest Use under Section 12 Of The Trademark Act?

    Honest use refers to a situation where a trademark has been adopted & thereafter used by a person in good faith and with bona fide intent. A mark is said to be honestly used when the mark has been independently adopted and used without knowledge of prior-existing identical or similar marks in the market. There is no intend to deceive anyone, cause confusion vis-à-vis any prior-existing mark or ride upon anyone else’s reputation.

    What is Concurrent Use under Section 12 Of The Trademark Act?

    Concurrent use refers to a situation where the identical marks are being used by two or more persons simultaneously & parallelly co-existing over a period of time. The law recognizes that there are certain circumstances like that of concurrent use which may not create confusion among consumers, especially if both businesses operate in different geographical areas or have different trade channels. Below is small and simple example of circumstances where the provision of Section 12 of The Trademark Act may be invoked.

    Example: ‘A’, being a seller of tea in Assam, adopts & starts to use the mark ‘Turban Tea’ in its local business for 20 years, unaware regarding the prior existence & use of the same mark by another tea seller ‘B’ in Karnataka since the past 21 years. Here ‘A’s adoption and use of the mark ‘Turban Tea’ is both honest and concurrent.

    Is Section 12 a Right or a Discretion?

    Section 12 of the trademark act gives discretionary power to the Hon’ble Registrar to exercise in special circumstances of honest and concurrent use by allowing registration of similar or identical marks. Ld. Registrar has to decide this on case to case basis whether such extraordinary or special circumstances exist to exercise its discretionary powers under section 12 of the Trademark Act. The registrar has to be sufficiently satisfied regarding the Honesty and Concurrency of use to exercise its discretion. For this, the Registrar is at complete liberty to call upon the parties to present cogent and unimpeachable documentary evidence substantiating their claim of Honest & Concurrent use.

    Even after being satisfied regarding Honesty and Concurrency of use, the registrar would check whether there are other special circumstances that justify allowing the use of similar marks like geographical differentiation i.e., marks being used in different geographical territories of India, established use of similar marks in the market that have created independent distinct identities despite the similarity.

    After being satisfied regarding the grounds mentioned above, the Registrar, if it thinks fit, may allow the registration of identical or similar marks. However, whether such registration is absolute, limited or conditional also lays on the Registrar.

    Conditions, Restrictions & Limitation under Section 12 Of The Trademark Act

    Section 12 of the trademark act empowers the Registrar to impose any condition, restriction or limitation over the registration of a mark as it deems fit. This right has been granted to the Registrar to remove any chances of potential confusion that might have arisen in the past or may arise in the future. Such any condition, restriction or limitation may include:

    • Limitation as to use in certain Geographical areas.
    • Restriction as to use in a relation to specific goods and services
    • Conditions regarding the manner of packaging/presentation of the marks to avoid confusion.

    Landmark Cases on Section 12 of the Trade Marks Act, 1999

    1. Kores (India) Limited vs Khoday Eshwarsa And Son, And Anr., (1985(1)BOMCR423) https://indiankanoon.org/doc/1226902/

    • In this case, the Hon’ble Bombay High Court laid down 5 pre-requisites for grant of registration under section 12 of the trademark act i.e.,

    a. The honesty of the concurrent use, 

    b. The quantum of concurrent use shown by the petitioners having regard to the duration, area and volume and trade and to goods concerned, 

    c. The degree of confusion likely to follow from the resemblance of the applicants’ mark and the opponents’ marks.

    d. Whether any instance of confusion have in fact been proved, and 

    e. the relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicants’ mark is registered.

      1. London Rubber Co. Ltd vs Durex Products, 1963 AIR 1882 https://indiankanoon.org/doc/1333219/ 

        The Hon’ble Supreme Court, in this case held that, there is no requirement to establish no probability of confusion. The simple fact that there has not been a single instance of confusion throughout the years of concurrent use of both the marks is enough to take the benefit of section 12 of the trademark act.

        Exceptions to Section 12 Of The Trademark Act:

        There are however certain circumstances where even after fulfilling the criteria laid down under the express provision as well the judicial pronouncements surrounding section 12 of the trademark act, registration to a mark cannot be granted. Such exceptions to the applicability of section 12 of the trademark act involve the circumstances where one mark is a well-known mark, in the case of trademark squatting, where the prior user has the bona fide plans of expansion in the same field as the later adopted mark etc. Thus, exercise of discretion under section 12 of the trademark act there is no rule of thumb and has to be decided on case to case basis.

        Conclusion: Section 12 of the Trademark Act

        Section 12 of the Trade Marks Act, 1999, provides certain amount of flexibility for businesses that have used similar or identical marks in good faith. This section ensures that the efforts, time and money spent by businesses over the honest and concurrent use and adoption of their marks do not outrightly go into vain. However, the burden rests on the Registrar to strike a balance between allowing businesses to protect their established marks and protecting the rights of honest and concurrent users. It was the total overview of Section 12 of the Trade Marks Act.

      1. SECTION 11 OF THE TRADE MARKS ACT, 1999: RELATIVE GROUNDS OF REFUSAL OF REGISTRATION

        The primary and fundamental purpose of trademarks is to act as brand identifiers creating a distinction between the goods & services provided by one person from that of the other’s in the market. This consequently necessitates that the trade mark so adopted be distinctive and capable of aiding differentiation amongst similar set of goods & services rendered by several different businesses in the market. 

        Take for instance the adoption of ‘Mahindra’ for cars which helps distinguish cars of another manufacturers such as ‘TATA’ and ‘Maruti Suzuki’ from those originating from the house of Mahindra and Mahindra.

        Thus, the provisions of Trade Marks Act, 1999 provide for certain characteristics and criteria that a mark must possess and qualify to become registrable. Under the Act, a trade mark can be refused registration on the below mentioned categories of grounds:

        1. Absolute grounds provided under section 9 of the trademark Act

        2. Relative grounds provided under section 11 of the trademark Act 

        In the Article, we shall explore the absolute grounds for refusal of trade mark, provided under the section 11 of the Trade Marks Act, 1999.

        Section 11 Of The Trade Marks Act (1):

        This subsection provides that a trade mark shall not be registered in the following case: 

        1. If it is identical to an earlier trademark or similar to goods/ services covered;
        2. If it is similar to an earlier trademark or identical to goods/ services covered,

        In such a way that it is likely to confuse the public by associating it with the earlier mark. 

        Explanation:

        According to Section 11 of the Trade Marks Act (1) , a trademark seeking registration should not be registered if it is identical or similar to the already existing mark and has similar goods or services and the similarity is such as is likely to cause confusion and association of the already existing trademark with the trademark seeking registration.

        Illustration:

        A person seeking registration of the trademark ‘COCA-COLA’ for soft drinks would not be granted registration for the same as the mark is identical and similar to the already existing ‘COCA-COLA’ mark being used for the same goods. If the registration will be granted to the new ‘COCA-COLA’ mark by different person or entity, it would cause confusion amongst the public and the public is likely to associate the goods bearing the new ‘COCA-COLA’ mark with that of the already existing mark. 

        Section 11 Of The Trade Marks Act (2):

        Section 11 of the Trade Marks Act (2) provides that a trademark applied for registration which is similar to earlier trademark can still be refused registration if the goods or services provided under both the marks are different. This clause, however, applies only if the already existing trademark is a well-known mark and the use of the new trademark applied for registration might take unfair advantage, diminish the distinctive or harm the reputation of the already existing mark. 

        Illustration:

        A person seeking registration of the trademark ‘NIKE’ for different goods (lets say, food products) would not be granted registration as the trademark ‘Nike’ is already a well-known trade mark in India. Allowing registration might result in unfair trade advantage, diminishing the distinctiveness of a well-known mark ‘Nike’ or harm the reputation of the same.

        Section 11 of the Trade Marks Act (3):

        According to section 11 of the Trade Marks Act (3) , a trademark is not entitled to registration if the trademark seeking registration causes passing off (meaning, if a trademark seeking registration infringes the rights of an already existing unregistered trade mark being used since prior date) or violates the rights protected under the Copyright Law. 

        Illustration:

        ‘A’ has been using the mark ‘Breezy shoes’ for footwears for several years, although not registered but it has gained recognition in the market. Later, ‘B’ applies for registration of the trademark ‘Breezy footwear’ for similar set of good i.e. footwears. Even though A’s mark is not registered under the Trade Marks Act, he is entitled to protect his mark under section 11 of the Trade Marks Act (3)(a) by virtue of law of passing off. 

        A company tries to register a trademark featuring a stylized version of the Mona Lisa painting as part of its logo for a fashion line. The Mona Lisa is an iconic painting by Leonardo da Vinci and is under copyright protection. Even though the company might argue that their design is original, the use of the Mona Lisa image or its likeness infringes on the copyright of the original artwork, as it is a protected creative work. Since the use of the image would violate copyright law, the Registrar would refuse the application for the trademark under Section 11 of the Trade Marks Act (3)(b), as it would be unlawful to use an image that is already protected by copyright.

        Section 11 of the Trade Marks Act (4):

        Explanation:

        According to section 11 of the Trade Marks Act (4), if the proprietor of the earlier trademark consents to the use of the new trademark applied for registration, the same may be granted registration under special circumstances under section 12.  

        Illustration:

        ‘A’ owns a registered trade mark “Swift Mobile” for mobile phone. While, ‘B’, a new company, applies to register the trade mark “Swift Mobilez” for the same products i.e. mobile phones.  B approaches A and requests permission to use the trade mark “Swift Mobilez” for their products. After negotiations, A agrees to give its consent to B for registering “Swift Mobilez”. In this case, the Registrar considers the consent provided by Company A and will allow the registration of “Swift Mobilez” under Section 11(4) of the Trade Marks Act.

        Section 11 of the Trade Marks Act (5):

        According to section 11 of the Trade Marks Act (5), no trade mark shall be automatically refused registration on the grounds of similarity as given under section 11 of the Trade Marks Act (2) or on the grounds of passing off or violation of the Copyright Law as given under section 11 of the Trade Marks Act (3), if no objections are raised on these grounds in opposition proceedings by the person filing the notice of opposition. 

        Illustration:

        A owns a registered trademark ‘TechGadget’ for electronics. Later, B applies for registration of the mark ‘TechGadget Pro’ for mobile accessories. The B’s mark ‘TechGadget Pro’ is similar to A’s mark ‘TechGadget’ and the same could cause confusion. Despite the similarity, the mark of the B will be granted  registration if no notice of opposition will be filed by the A.

        Section 11 of the Trade Marks Act (6):

        Section 11 of the Trade Marks Act (6) provides the factors which the Hon’ble Registrar must consider to determine any trademark as a well-known mark. Accordingly, the Hon’ble Registrar must consider: 

        1. Public recognition of the trade mark, especially in India 

        (Illustration: Nike is widely recognized across India due to years of advertising through TV ads, sponsorships, and influencer endorsements)

        2. Since how long and in how many regions the mark has been used. The wider and longer the use, the stronger the case for the mark being well-known.

        (Illustration: Nike has been selling its products in India for over 20 years, covering all major cities and rural areas through extensive distribution)

        3. Since how long and in how many regions the trademark has been promoted, including, advertisements, publicity, etc.

        (Illustration: Nike has been widely advertised all over India for over 20 years)

        4. Since how long and in how many regions registration or any application for registration of that trade mark under this Act has been used

        (Illustration: Nike has registered its mark in various classes across India and many other countries for footwear, clothing, and sports equipment)

        5. The history of how the trade mark has been protected in legal proceedings, particularly where the mark has been recognized as well-known by courts or the Registrar.

        (Illustration: Nike has successfully enforced its trade mark rights in multiple legal cases where it was recognized as a well-known trade mark, preventing infringement)

        Section 11 of the Trade Marks Act (7):

        In addition to the factors provided under section 11 of the Trade Marks Act (6) to determine a trademark as well-known mark, the Hon’ble Registrar also takes into consideration the factors provided under section 11 of the Trade Marks Act (7) of the Act. Section 11(7) of the Act provides following factors:

        1. Consumer Base: the number of consumers currently use or may potentially use the goods or services under the trade mark

        (Illustration: Coca-Cola is a globally recognized brand with millions of actual consumers across the world, and the number of potential consumers is vast, especially in emerging markets)

        2. Channels of Distribution: the number of intermediaries, such as distributors, suppliers, retailers, or agents, are involved in getting the goods or services to consumers

        (Illustration: Apple’s distribution channels involve numerous intermediaries, including major retail stores (like Best Buy or Walmart), online marketplaces (Amazon), and mobile carriers)

        3. Business Circles: business sectors or industry groups that engage with or use the goods or services that the trade mark applies to.

        (Illustration: Microsoft’s Windows operating system is widely recognized within the technology and software industries, with businesses, IT professionals, and developers being highly familiar with the mark)

        Section 11 of the Trade Marks Act (8):

        According to Section 11(8) of the Act, if a trade mark has been determined as a well-known trade mark by virtue of any court or registrar, then the registrar shall consider it as a well-known trademark. 

        Illustration: Suppose there is a well-known trademark, namely “Frooti”, which is globally recognized as a beverage. Now, another brand, namely “Fruti”, seeks to get registered for snacks. In such a case, the Registrar is bound to refuse the mark for the same because there already exists a globally recognized well-known trademark with the similar name. 

        Section 11 of the Trade Marks Act (9):

        Section 11(9) of the Act outlines factors that are not required to be considered by the Hon’ble Registrar while determining any trademark as a well-known trademark. According to section 11(9) of the Act:

        1. There is no requirement of use of a trademark in India to determine a trademark as a well-known mark in India

        (Illustration: The trade mark Nike have obtained widespread recognition through advertising and international promotion. Even if the trade mark Nike has not been actively used in India, it can be considered well-known in India due to its international recognition)

        2. There is no requirement for a trademark to be registered in India to determine a trademark as a well-known mark in India

        (Illustration: The trade mark ‘Betterwe’ though not registered in India can still be determined as well-known owing to its widespread use and brand recognition.)

        3. There is no requirement for application for registration of the trade mark to determine a trademark as a well-known mark in India

        (Illustration: A luxury brand like ‘LOUIS VUITTON’ might not have filed application for registration for every of its trade mark in India, but the same can still be determined as well-known mark in India owing to its brand’s strong presence in the global fashion market and its association with luxury)

        4. There is no requirement that a trade mark is well-known, registered or application for registration of such trade mark has been filed in any part of the world other than India to determine a trademark as a well-known mark in India.

        5. There is no requirement that a trade mark well-known to the public at large in India to be determined the trade mark as a well-known mark in India.

        (Illustration: The trademark ‘Rolls-Royce’ may not be known to the average consumer in India but it is highly recognized within luxury car market. This makes Rolls-Royce a well-known trade mark in India despite not being recognized by public at large)

        Section 11 of the Trade Marks Act (10):

        Section 11 of the Trade Marks Act (10) outlines important guidelines for the Registrar to follow while reviewing a trade mark registration application, especially if a notice of opposition has been filed against it. The section provides two essential factors to be considered by the Hon’ble Registrar:

        1. Protecting well-known trademarks from similar or identical marks- The Registrar is required to protect a well- known trade mark from being registered or used by others, especially if the new mark is identical or confusingly similar to the well-known trade mark.

        (Illustration: If an applicant applies for registration of the trade mark “Coca-Cola King” for the soft drinks, the Registrar will most certainly reject the application due to the mark’s similarity to Coca-Cola trade mark which is worldwide recognised and a well-known trademark. Even if the applicant plans to use the mark Coca-Cola King for different goods, there is a considerable chances of confusion)

        2. Bad Faith involved in the application or opposition, affecting the rights relating to the trade mark- When deciding on a trademark application and any opposition that is filed against it, the Registrar must also examine any bad faith on the part of either the applicant or the opponent. Bad faith refers to instances in which an application or opposition is made with dishonest, fraudulent, or inappropriate intentions.

        (Illustration: Apple Inc., the owner of the well-known trade mark “Apple” used for electronics, comes across an application for the trade mark “AppleMart” in the same class of goods (electronics). If the Hon’ble Registrar finds out that the trade mark “AppleMart” was intentionally filed by an individual seeking to profit from Apple’s reputation without intending to use the mark in good faith, the Registrar may rule that the application was filed in bad faith and reject it.

        Alternatively, if the Hon’ble Registrar finds out that the opponent has filed the notice of opposition merely to impede an applicant’s registration merely for personal reasons or with the goal to hinder rather than preserve genuine rights, this is considered bad faith, and the notice of opposition may be rejected)

        Section 11 of the Trade Marks Act (11):

        According to section 11 of the Trade Marks Act (11), if a trade mark was registered in good faith and disclosed material information to the Registrar, or if a trade mark was acquired through good faith use prior to the enactment of this Act (30 December 1999), the registration or use of that trade mark will not be affected by the fact that it is identical or similar to a well-known trademark.

        Illustration

        Brand X has been using the trade mark “EcoClean” for cleaning products since 1889. In 2010, a multinational corporation with the well-known trade mark “CleanEco” challenges X’s use of trade mark “EcoClean”, alleging it is similar to its worldwide recognised trademark. However, because X used the mark in good faith prior to the enactment of the Trade Marks Act of 1999, “EcoClean” remains valid and protected under Section 11 of the Trade Marks Act (11). Despite the fact that the trade mark “EcoClean” of the ‘X’ is similar to “CleanEco”, ‘X’ can continue to use it

        CASE LAWS

        1. Twentieth Century Fox Film Corporation vs The Registrar

        https://indiankanoon.org/doc/125674682

        The Hon’ble Delhi High Court held that mere phonetic resemblance is not sufficient to consider marks identical or similar. There has to be a likelihood of confusion caused among the public. 

        This case addresses that phonetic similarity alone cannot be the sole reason to conclude that two marks are similar, though it can contribute to the comparison. The emphasis must be on the fact that the similarity is strong enough to confuse the public, with respect to concerned goods and services.

        2. Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries Limited

        https://indiankanoon.org/doc/163092085

        In this case, the trademark ‘Prius’ has gained significance long before the defendants started using and got the mark registered. However, relying on territoriality principle, it makes it necessary for the plaintiff to provide substantial evidence proving that their mark “Prius” has also acquired considerable goodwill in the domestic market of India. 

        The Hon’ble Supreme Court, in this case, emphasizes that the goodwill of a mark must be proven in the domestic market because global goodwill is not sufficient to prove establishment in the domestic market, too. It also focuses on the fact that even if the knowledge of mark exists domestically, then it must be prominent, substantial and widespread among the relevant section of the domestic market. 

        CONCLUSION

        From the aforementioned explanation, a clear understanding of the applicability of section 11 of the Trade Marks Act, 1999 can be drawn. Section 11 acts as a strong provision, barring the registrability of trademarks which are identical or deceptively similar with the prior existing trademarks.