Registration of Trademark

REGISTRATION OF TRADEMARK
Procedure for Registration
• The trademark registration process is outlined in Section 18 of the Act.

• Any person claiming the trade mark may submit an application in writing to the
Registrar.
• Single registration application can cover multiple classifications of products or services.
• The central government appoints a person known as the Controller General of Patents,
Designs, and Trade Marks.
• This person also serves as the Registrar of the trade mark.
• Every application must be filed at the trademark registry office within the territorial
limits of the principal place of business in India of the applicant.
• In the case of joint applicants, the application should be filed at the trademark registry
office within the territorial limits of the principal place of business in India of the
applicant whose name is mentioned first in the application.
Acceptance or Refusal of Application
• Upon receiving an application, the Registrar has the authority to accept or refuse
it.
• If the Registrar decides to refuse the application, they must provide reasons for the
refusal.
• The application may be accepted with or without any changes, conditions, or
limitations.
• However, if the Registrar realises that they erroneously accepted the application
after acceptance but before registration, they can withdraw the acceptance.
(Section 19)
Grounds for refusal of registration: Absolute Grounds
( Section 9)
• Trade Marks that do not have any distinguishing characteristics

• Trade Marks that consist only of markings or indications used in commerce
• Trade Marks that only comprise markings or indications that have become
customary of the trade:
• Trade Marks that deceive or confuse the public:
• Trade Marks that offend religious sensibilities:
• Trademarks containing scandalous or indecent material
• Trade Marks whose use is forbidden under the Emblems and Names Act:
• Marks derived from the form of the items themselves.
Relative Grounds
• Registration of a trademark may be refused for reasons beyond those specified in

Section 9 of the Act. In Section 11, the grounds mentioned are 'relative' in nature,
meaning the Registrar may refuse registration if:
• There is a likelihood of confusion among the public, including association with an
earlier trademark due to identity or similarity of goods/services.
• The earlier trademark is well-known in India, and the later mark would unfairly
benefit from or harm the reputation of the earlier mark.
• Its use in India is liable to be prevented by virtue of any law passed off protecting
an unregistered trademark used in the course of trade, or its use in India is liable
to be prevented by virtue of the law of copyright.
• Registration of the later trademark may be permitted if the proprietor of the earlier trademark or
other earlier rights holder consents to it.
• A refusal of registration on the mentioned grounds cannot be made unless opposed by the
proprietor of the earlier trademark during opposition proceedings.
Honest & Concurrent Use
• Under Section 12, the Registrar may allow the registration of trademarks that are identical or
similar to each other, even if one has been previously registered, based on honest and concurrent
use or other special circumstances.
• The Delhi High Court in S. Mehar Singh v. M.C. Gupta & Co. (1998) outlined the following
parameters to consider:
• The extent of use in terms of time, quantity, and geographical area of trade.
• The likelihood of confusion due to the resemblance of the marks, indicating the level of public
inconvenience.
• The honesty of the concurrent use.
• Any instances of proven confusion.
• The relative inconvenience that would arise if the marks were registered.
Advertisement of Application ( Section 20)
• After acceptance of a trademark registration application, the Registrar advertises it in the

Trademark Journal.
• The advertisement includes any conditions or limitations imposed on the acceptance of the
application.
• The purpose of advertising is to invite objections from interested parties whose trade interests
may be affected.
• The Registrar may advertise the application before acceptance if:
• The trademark lacks distinctive character.
• It consists only of common marks or indications.
• It includes marks or indications that have become customary in the relevant language or trade
practice.
• The trademark is deceptively similar or identical to another trademark, potentially causing
confusion among the public.
Opposition of Application (Section 21)
• Within three months from the date of advertisement or re-advertisement of a

trademark registration application, any person can give written notice of
opposition to the Registrar.
• The Registrar sends a copy of the opposition notice to the applicant.
• The applicant must provide a counter-statement within two months from
receiving the notice. Failure to do so within this period implies withdrawal of
the application.
• Both parties have the opportunity to submit evidence to the Registrar.
• The Registrar provides an opportunity for both parties to be heard if they desire.
• After considering the application, opposition, counter-statement, oral
representations, etc., the Registrar decides whether to permit the registration
and under what conditions or limitations, if any.
Registration ( Section 22)
• After accepting the application for registration and resolving any objections, if
raised, the Registrar will proceed to register the trademark, unless directed
otherwise by the Central Government.
• The registration takes effect from the date of application.
• Once registered, the Registrar issues a certificate to the applicant in the prescribed
form.
• It's important to note that if the registration process cannot be completed within
twelve months due to the applicant's default, the Registrar may treat the
application as abandoned after giving notice to the applicant.

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REGISTRATION OF TRADEMARK

Procedure for Registration

• The trademark registration process is outlined in Section 18 of the Act.

• Trade Marks that do not have any distinguishing characteristics

• Registration of a trademark may be refused for reasons beyond those specified in

• After acceptance of a trademark registration application, the Registrar advertises it in the

• Within three months from the date of advertisement or re-advertisement of a

• The registration takes effect from the date of application.

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