Registering a mark under the Trade Marks Act, 1999

Section 2(1)(m) defines a mark to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or a combination of colours, or any combination of these. Section 2(1)(zb) then defines a trade mark as a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and says it may include the shape of goods, their packaging and combinations of colours. Both limbs have to be met: a shape that cannot be represented, or a word that cannot tell one trader from another, fails at the definition stage.

Section 18(1) lets any person claiming to be the proprietor of a mark used or proposed to be used apply to the Registrar in writing in the prescribed manner. Proposed use is enough to apply, so a start-up can file before launch. The mark may be limited to a combination of colours under section 10(1), and a mark registered without that limitation is deemed registered for all colours under section 10(2). A colour limitation therefore narrows the right and is taken into account when the Registrar or the High Court decides on distinctive character.

Shapes get their own rule in section 9(3). A mark is not registered if it consists exclusively of a shape that results from the nature of the goods, a shape necessary to obtain a technical result, or a shape that gives substantial value to the goods. A shape of the goods that is only functional will meet that objection, and the answer lies in showing that the mark does not consist exclusively of that shape.

Section 7(1) requires the Registrar to classify goods and services in accordance with the International classification, and section 7(2) says that any question about the class within which goods or services fall is decided by the Registrar, whose decision is final. The class numbers and headings sit in the rules and the Registry's index and are not printed here. Section 18(2) allows a single application for different classes of goods and services, with the fee payable for each class. The fee is prescribed and the amount is a matter for the rules.

No section of the Act makes a search a condition of filing, but section 11 makes the register the first thing an examiner checks, so a search of earlier marks in the same and similar classes is the practical step that saves a refusal. Section 133(1) lets the Registrar, on application in the prescribed manner by a person who proposes to apply, advise whether the mark appears prima facie distinctive. If that advice is favourable and an objection on distinctiveness still follows on an application made within three months of the advice, section 133(2) entitles the applicant to the refund of the filing fee on withdrawing within the prescribed period.

Section 18(3) fixes the office: the Registry within whose territorial limits the applicant's principal place of business in India lies, or, for joint applicants, that of the first-named applicant with a place of business in India. An applicant with no business in India files at the office covering the address for service in India. For a foreign filer, section 154(2) gives six months from the first convention-country application to file in India, and the mark is then registered as of the date of that earlier application. Section 36E deals with an international registration that designates India: sections 9 to 21 apply to it as if it were an application under section 18, and the Registrar may refuse protection within eighteen months of the advice from the International Bureau.

Section 9(1) bars three kinds of mark. The first is a mark devoid of any distinctive character, meaning one not capable of distinguishing the goods or services of one person from those of another. The second consists exclusively of marks or indications that may designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods, or other characteristics. The third consists exclusively of indications that have become customary in the current language or in the bona fide and established practices of the trade.

The proviso to section 9(1) is where most responses to an examination report are built. A mark is not to be refused if, before the date of application, it has acquired a distinctive character as a result of the use made of it, or if it is a well-known trade mark. Evidence of use, such as dated invoices, sales figures, advertising spend and the area of sale, goes to that proviso. Section 32 protects a mark registered in breach of section 9(1) from being declared invalid if it has acquired distinctive character by use after registration and before any proceedings challenging it begin.

Section 9(2) lists marks that cannot be registered at all. These are marks likely to deceive the public or cause confusion, marks likely to hurt the religious susceptibilities of any class or section of the citizens of India, marks comprising scandalous or obscene matter, and marks whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. Acquired distinctiveness does not rescue a mark that falls here, because the proviso is attached to section 9(1) alone. The Supreme Court's treatment of the name of a religious book, described in the cases below, shows how this sub-section is applied.

Section 11(1) refuses a mark where, because of its identity with an earlier mark and similarity of goods or services, or its similarity to an earlier mark and the identity or similarity of goods or services, there is a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier mark. Section 11(2) extends protection to a well-known mark in India against an identical or similar mark for goods that are not similar, where use of the later mark without due cause would take unfair advantage of, or harm, the distinctive character or repute of the earlier mark.

Section 11(3) refuses a mark whose use in India is liable to be prevented by the law of passing off protecting an unregistered mark, or by the law of copyright. Under section 11(5), grounds under sub-sections (2) and (3) are not taken by the Registrar on his own: a mark is not refused on them unless the proprietor of the earlier mark raises the objection in opposition proceedings. Sub-sections (6) to (9) set out what the Registrar considers in deciding whether a mark is well known, and sub-section (9) says use, registration or an application in India is not a precondition.

Two routes allow a similar mark through. Section 11(4) says nothing in the section prevents registration where the proprietor of the earlier mark or other earlier right consents, and the Registrar may then register the mark under special circumstances under section 12. Section 12 itself allows registration by more than one proprietor of identical or similar marks for the same or similar goods or services in the case of honest concurrent use or other special circumstances, on conditions and limitations the Registrar thinks fit. This route rests on a written consent from the earlier owner that describes the goods each side will use the mark on.

Section 18(4) lets the Registrar refuse the application or accept it absolutely or subject to amendments, modifications, conditions or limitations. Section 18(5) requires him, on a refusal or conditional acceptance, to record in writing the grounds and the materials used. That recorded order is what the applicant answers, and it is also what is appealed under section 91. In AB & T Lifestyle Spaces LLP v. Registrar of Trade Marks (CMA (TM) No. 16 of 2024, Madras High Court, decided 21-11-2024), the Court quashed a refusal that rested on section 11(1) and on the proviso to section 9, calling it a non-speaking order passed without a hearing on the point that the cited marks were in use, with the lack of acquired distinctiveness raised for the first time in the order itself. It directed the mark to be advertised, limited to Karnataka, as the applicant had undertaken. Section 19 allows the Registrar, after acceptance but before registration, to withdraw the acceptance after hearing the applicant if he wishes, where the application was accepted in error or the mark should not be registered, or should be registered on different conditions.

Section 20(1) requires the accepted application, with any conditions, to be advertised in the prescribed manner. The proviso lets the Registrar advertise before acceptance where section 9(1) or section 11(1) and (2) apply, or in other exceptional circumstances, so the opposition period can start while the examination issues are still being argued. Under section 21(1), as substituted by Act 40 of 2010 with effect from 8-7-2013, any person may give written notice of opposition within four months from the date of the advertisement or re-advertisement, on payment of the prescribed fee.

The Registrar serves a copy of the notice, and under section 21(2) the applicant has two months from receipt to send a counter-statement. An applicant who does not do so is deemed to have abandoned the application. Section 21(4) provides for evidence and a hearing, and section 21(5) lets the Registrar take into account a ground whether or not the opponent relied on it. An opponent does not have to prove prior use of its earlier mark: in Street One GmbH v. Registrar of Trade Marks (C.A.(COMM.IPD-TM) 38/2024, Delhi High Court, decided 28-11-2025), the Court set aside the dismissal of an opposition on the ground that prior use was not proved, held that likelihood of confusion under section 11(1) is judged without regard to actual use of the earlier mark, and remanded the opposition for a fresh decision. Under section 21(6), a party who neither resides nor carries on business in India may be required to give security for costs and, in default, the opposition or application may be treated as abandoned.

Section 23(1) says that once an application has been accepted, and either no opposition was filed and the time for notice of opposition has expired, or the opposition was decided in the applicant's favour, the Registrar shall register the mark within eighteen months of filing, unless the Central Government otherwise directs. The mark is registered as of the date of the application, and that date is deemed the date of registration, subject to section 154. Under section 23(2) a certificate of registration in the prescribed form is issued. Under section 23(3), where registration is not completed within twelve months from the application because of the applicant's default, the Registrar may, after notice, treat the application as abandoned.

Section 28(1) gives the registered proprietor, if the registration is valid, the exclusive right to use the mark for the goods or services it is registered for and to obtain relief for infringement. Section 28(2) makes that right subject to the conditions and limitations on the register. Section 28(3) deals with two registered proprietors of identical or nearly resembling marks: registration alone does not give either an exclusive right as against the other, though each has the usual rights against everyone else.

The term is ten years under section 25(1), and the Registrar renews it for ten years on application, within the prescribed period and on payment of the prescribed fee, under section 25(2). The term runs from the date of filing, because section 23(1) deems the application date the date of registration. If the renewal conditions are not met, the Registrar may remove the mark, but under the proviso to section 25(3) he may not do so where the prescribed form, fee and surcharge are filed within six months from the expiry of the last registration. In Jaisuryas Retail Ventures Pvt. Ltd. v. Registrar of Trade Marks (W.P.(IPD) Nos. 4 to 14 of 2024, Madras High Court, decided 13-08-2024), the Court held that the Registrar must give notice under section 25(3) before removing a mark for non-renewal, and that where no acknowledgment of the notice was produced and the mark had not been removed, the proprietor or its successor could still apply to renew, an assignee first having to apply to register the assignment. A mark removed for non-payment can be restored under section 25(4) on application after six months and within one year from that expiry, if the Registrar is satisfied that it is just to do so.

Section 47(1) lets any person aggrieved apply to the Registrar or the High Court to take a registered mark off the register for the goods or services concerned, on one of two grounds. The first is that the mark was registered without a bona fide intention to use it and has not in fact been used up to a date three months before the application. The second is that, up to a date three months before the application, a continuous period of five years from the date the mark was entered on the register had passed with no bona fide use. Section 47(3) excuses non-use shown to be due to special circumstances in the trade, including legal restrictions on use in India, and not to an intention to abandon.

Section 57 lets a person aggrieved apply to the Registrar or the High Court to cancel or vary a registration for contravention of a condition on the register, or to make, expunge or vary an entry that was made without sufficient cause or wrongly remains. The Registrar or the High Court may also act of its own motion under section 57(4) after notice and a hearing. These sections were amended by the Tribunals Reforms Act, 2021 with effect from 4-4-2021 to substitute the High Court for the Appellate Board, although the headings of the chapter still say Appellate Board.

An appeal from an order or decision of the Registrar lies to the High Court under section 91(1) within three months from the date the order is communicated. Section 91(2) bars an appeal filed late unless the High Court is satisfied there was sufficient cause. In Chennai the appeal is filed in the Intellectual Property Rights Division of the Madras High Court; the AB & T appeal was filed under section 91 read with Rule 2(4) of the Madras High Court Intellectual Property Rights Division Rules, 2022. The appeal is in the prescribed form, verified in the prescribed manner and accompanied by a copy of the order and the prescribed fee. Applicants who receive a refusal under section 18(5) should diarise the period from the day of communication and not the day of the hearing.