Key Takeaways: - Significance - Grounds for refusal of registration - Recent judgement on covishield

1. Introduction to Trade Marks Act,
1999
CS Meenakshi Jayaraman

2. Research Credits
Iswariya BS
Hari Saanthosi R

3. Legends Used
Act The Trade Marks Act, 1999
CG Central Government
CRPC Criminal Procedure Code
HC High Court
IPAB Intellectual Property Appellate Board
IPC Indian Penal Code
SII Serum Institute of India
TM Trade Mark
TRIPS Trade Related aspects of Intellectual Property Rights

4. Presentation Schema
History of Trade
Mark
What is Mark and
Trade Mark
Need and
importance of
Trade Mark
Trade Mark office
and officers
Register of TM &
Classification of
goods and services
Grounds for
refusal of
registration &
Limitation as to
Colour
Relative grounds
for refusal of
registration
Pune District court
and Bombay HC
judgement on
Covishield

5. History of Trade Mark Act

6. History of Trade Mark Act
1940:
 The first statutory law related to TM
in India was the TM Act, 1940 which
had similar provision like the UK TM
Act, 1938
 TM Registry was established in
India
1958: The Trade and Merchandise
Marks Act, 1958 was enacted which
consolidated the provisions related to
TMs contained in other statutes like,
IPC and CRPC
1999: The Trade and Merchandise
Marks Act, 1958 was repealed by the
TM Act, 1999 and it is the current
governing law related to registered
TMs
The 1999 Act was enacted to comply
with the provisions of the TRIPS
obligation as recommended by WTO
and it is in accordance with the
international systems and practices

7. What is Mark & Trade Mark?

8. What is Mark?
What is a Trade Mark?
As per Section 2 (1) (m) of the Act, Mark includes a device, brand, heading, label, ticket,
name, signature, word, letter, numeral, shape of goods, packaging or combination of
colours or any combination thereof
As per Section 2 (1) (zb) of the Act, TM 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 shape of goods, their packaging and combination
of colours and-

9. In relation to Chapter XII – Offences, Penalties and Procedure (other than section
107), a registered TM or a mark used in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course of trade
between the goods or services, as the case may be, and some person having the
right as proprietor to use the mark and
In relation to other provisions of this Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services, as the case may
be, and some person having the right, either as proprietor or by way of permitted
user, to use the mark whether with or without any indication of the identity of
that person, and includes a certification trade mark or collective mark
Contd.
Thus, for a mark to be treated as trademark, it has to satisfy the following conditions:
• It must be graphically represented and
• It must be distinguishable from other persons goods or services

10. Why Trade Mark?

11. Why Trade Mark?
an exclusive right to the owner and distinguishes the product
from other similar products / from other businesses
an intangible asset for the owner and protects the brand
an exclusive right to the owner to use such words, logos, slogans,
etc.
to protect a brand to recognize the owner and to prevent
fraudulent use

12. Importance of Trade Mark
It is an effective
communication tool
It make it easy for
customers to identify
It provides uniqueness
to brand
It provides protection
to the brand
It averts legal issues in
the future
It prevents unfair
competition

13. Trade Mark office and officers

14. Trade Marks officers
Authority: Controller-General of Patents, Designs and TMs appointed by
the CG by notification in official gazette shall be the Registrar of TMs
Other officers: The CG may appoint such other officers as it thinks fit for
the purpose of discharging, under the superintendence and direction of
the Registrar
TM Registry: The TM Registry established under the Trade and
Merchandise Marks Act, 1958 shall be the TM Registry under this Act
Section 3

15. Trade Mark offices
Head Office:
Mumbai
Branch office:
Ahmedabad,
Kolkata,
New Delhi and
Chennai
Generally
Applicant’s principal place
of business in India
In case of joint applicants,
principal place of business
in India of the applicant
whose name is first
mentioned
Applicant does not
carry on business
in India
Application be filed with
TM Registry
-within whose territorial
limits the place mentioned
in the address
-for service in India as
disclosed in the application
is situated
Territorial jurisdiction for filing
TM application
Section 5

16. Register of TM &
Classification of goods and services

17. Register of TM
Register of TM shall be kept at the head office of the TM Registry which includes all the details
relating to the TMs registered
It shall be lawful even if the records are wholly or partly kept in computer floppies,
diskettes or in any other electronic form, subject to safeguards
Any reference to entry in the Register shall be construed as entry in electronic form
No notice of any trust whether express / implied / constructive, shall be entered in the
register and the same shall not be receivable by the Registrar
Register shall be kept under the control and management of the Registrar
A copy of register and other documents u/s 148 (Documents open to public inspection)
as CG may specify by notification in official Gazette direct shall be kept at the branch
office of TM Registry
Register of TMs existing at the commencement of the Act, shall be incorporated and form part
of register maintained under this Act
Section 6

18. The Registrar shall
classify goods and
services as per the
International
classification of goods
and services for the
purposes of registration
of TMs
Any question about the
class of any goods or
services shall be
determined by the
Registrar and his
decision shall be final
Classification of goods and services
Section 7
International Classification of Goods and Services also known as the Nice Classification was
established by the Nice Agreement in the year 1957
It is a system of classifying goods and services for the purpose of registering trademarks

19. Grounds for refusal of registration &
Limitation as to Colour

20. Grounds for refusal of registration
• If it is not capable of distinguishing the goods or services
of one person’s TM from those of another
• If it consists exclusively of marks or indications which may
serve in trade to designate kind, quality, quantity or time
of production of goods or rendering of service or other
characteristics of goods or service
• If it has become customary in current language or in the
bonafide and established practices of trade
• Exception: If the TM has acquired a distinctive character
before application for registration as a result of use made
of it or it is a well known TM
TMs shall not be
registered
• It causes confusion to or of a nature to deceive the public
• It contains any matter that is likely to hurt the religious
sentiments of citizen of India
• It contains scandalous or obscene matter
• Its use is prohibited under the Emblems and Names
(Prevention of Improper Use) Act, 1950
A mark shall not be
registered as a TM if :
Section 9

21. • Shape of goods which results from the nature of the
goods themselves
• Shape of goods which is necessary to obtain a technical
result
• Shape which gives substantial value to the goods
A mark shall not be
registered as a TM if it
consist exclusively of:
Contd.
A TM may be limited wholly or partly to any combination of colors and the same shall
be taken into consideration by the tribunal to decide on the distinctive character of the
TM
If TM is registered without any limitation of color, it shall be deemed to be registered for
all colors
Limitation as to Colour
Section 10

22. Relative grounds for refusal of
registration

23. Relative grounds for refusal of registration
Save as provided in section 12*, TM shall not be registered because of:
• its identity / similarity with an earlier TM and similarity / identity of goods or services covered
by the TM
• creating a confusion on the part of public which includes the likelihood of association with the
earlier TM
Section 11
Section 12*
In case of honest use and special circumstances, the Registrar may permit registration by more
than one proprietor of TM which are similar or identical in respect of the same or similar goods or
services subject to conditions and limitations as the Registrar may impose

24. Contd.
A TM which:
• is identical with or similar to an earlier TM but goods or services which are not similar to
those for which the earlier TM is registered in the name of a different proprietor
• shall not be registered if the earlier TM is well-known and the use of later TM would lead to
unfair advantage and be detrimental to the distinctive character of earlier TM
A TM shall not be registered if its use in India is liable to be prevented:
• by virtue of any law of passing off protecting an unregistered TM used in the course of trade or
• by virtue of law of copyright
TM shall not be refused registration on the grounds as specified above, unless objection on any
one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier
TM

25. Petitioner’s parent
company adopted TM
since 2002 for the Mark
GETZ
But, the Respondent
had registered the TM
for the mark GETZ
Thus, the Petitioner filed
rectification application
for removal of
Registered TM for the
mark GETZ
Petitioner
Hyundai Motor
India Limited
Respondent
Ajay Gupta
Judicial Precedent
Judgement as on 16th July, 2018 by IPAB
Citation Code: ORA/12/2016/TM/DEL

26. Contd.
The mark was adopted internationally by the Parent Company of the Petitioner during 2002
and by the Petitioner during the year 2004 in India
The mark was adopted as early as 2002, being the first of its kind, with no such name
existent in the relevant industry (automobile manufacturing industry)
Petitioner’s parent Company had obtained registrations in India for the TM in Class
12
Responded had registered the TM in Class 9
Mark GETZ has been immensely popular and embedded in the minds of the public to
be directly & exclusively related to the Petitioner. Thus, to avoid confusion, the
Petitioner prayed for removal of Respondent’s TM from the Register
IPAB ordered for removal of Respondent’s TM from the Register in order to maintain the
purity of the Register since the same was contrary to the provisions of Sections 11 (1), 11
(2), 11 (3) (a), 12, 18 and 57 of the Act

27. Contd.
While determining whether a TM is well-known, the Registrar shall take the following into
consideration:
• the knowledge / recognition of a TM in public;
• the duration, extent and geographical area of any use of that TM and any promotion of that
TM;
• the duration and geographical area of registration / application for registration of that TM to
the extent that they reflect the use or recognition of the TM;
• the enforcement of the rights in the TM is recognized as well-known TM by Court / Registrar
In order to determine whether a TM is known / recognized in the relevant section pf public, the
Registrar shall consider the following :
• number of actual or potential consumers of goods / services;
• number of persons involved in the channels of distribution of goods / services;
• business circles dealing with goods / service
If the proprietor of the earlier TM or other earlier right consents to the registration, TM will
not be prevented from registration and in such case the Registrar may register the mark under
special circumstances as mentioned u/s 12
If the TM is treated as well known in at least one relevant section of the public in India either by Court
/ Registrar, then it shall be considered as a well known TM for registration by the Registrar

28. Contd.
Following shall not be taken into consideration for determining whether a TM is well-known by the
Registrar:
• the TM has been used in India / registered;
• the application for registration of the TM has been filed in India;
• The TM is well-known, been registered or an application for registration has been filed in
jurisdiction other than India;
• the TM is well-known to the public at large in India.
In case of application for registration and opposition filed against TM, the Registrar shall:
• protect the well-known TM;
• consider the bad faith involved either of the applicant or opponent affecting the right relating
to the TM
If a TM has been registered or acquired in good faith before the commencement of this Act,
then nothing shall prejudice the validity of the registration on the ground that the TM is
identical / similar to the well-known TM

29. Pune District Court and Bombay High
Court judgement on Covishield
Date of Judgement: 20th April, 2021

30. Facts of the case
Appellant: M/s.
Cutis Biotech Respondent: M/s.
Serum Institute of
India Pvt. Ltd.
Both, the Appellant and the
Respondent have applied for
registering Covishield TM
but their applications are
pending
Cutis Biotech, on 29th April
2020, filed an app.
No.4493681 for registration
of TM ‘COVISHIELD’
On 6th June 2020, SII applied
for registration of TM
'Covishield' under app.
No.4522244

31. Cutis Biotech had filed an application for registration of trademark ‘Covishield’ for
veterinary, ayurvedic, allopathic, medicinal and pharmaceutical preparation and vitamins
and dietary food supplements for humans and animals
Whereas SII applied for registration of trademark ‘Covishield’ for its Covid-19 vaccine
Cutis Biotech contended to be the “prior user” and thus the same cannot be used
by SII
On 4th January 2021, Cutis Biotech filed the Commercial suit before a District Court
(Commercial Court) in Pune for a temporary injunction on SII
The district court noted that the products of both the companies were used for
different purposes and there was no evidence of any confusion in the mind of the
consumers
Therefore it rejected the interim application on 30th January, 2021.
Thus, Cutis Biotech approached the HC
District court decision

32. HC observed that both the companies did not possess TM
Not only is there adequate evidence to show prior adoption and user, but SII has also
continued its user without a break
SII has produced 60 million doses of the ‘Covishield’ vaccine per month and has
supplied 48 million doses to the Government of India
SII has obtained various permissions and licenses for manufacturing the vaccine
Dismissing the appeal by Cutis, the HC held, “With these facts, the balance of convenience is
not in favour of Cutis Biotech. Grant of injunction against SII would have a serious impact on
its business”.
High court decision

33. From the above
contentions, it is
concluded that TM shall
be granted for covid
vaccines by the Registry
on applications made to
it:
Provided such TM is not
refused registration on
absolute or relative
grounds.
We need to wait for
further confirmation on
grant of TM to
Covishield vaccine.
Conclusion

34. Thank You!
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