ABSOLUTE AND RELATIVE GROUNDS

FOR REFUSAL OF TRADEMARK

BY- URVI SHRIVASTAVA

 The Trademark Act, 1999 lays down absolute and relative
grounds for the refusal of trademark.

 Sec 9 (Absolute Grounds for refusal)

Sec 9(1) - The trade marks—
a) which are devoid of any distinctive character,
DISTINCTIVENESS
 The term of protection for a trade mark can last till perpetuity.
 Such long-lasting monopoly-like right requires the trade mark to
be one that is capable of performing the necessary function of
distinguishing the goods or/and services of one trader from
those of the others. This function or
 capability of distinguishing is referred to as ‘distinctiveness’ of
a trade mark.
 The capability may be some inherent distinctiveness in the
mark itself or
 perhaps acquired distinctiveness through use of the mark over
a period of time.
 2nd Circuit Court of Appeals in Abercrombie & Fitch Co. v. Hunting
World, Inc., provided for understanding the spectrum of
distinctiveness.
Justice Learned Hand has laid down a spectrum which measures
distinctiveness on the following categories:

Generic—does not qualify for protection

Descriptive—sometimes qualifies for protection
Suggestive—qualifies for protection
Arbitrary —qualifies for protection
 Invented – affords strongest protection

Generic <Descriptive<Suggestive<Arbitrary<Invented
(Weakest protection) ------------------------(Strongest protection)
 Categories of marks
 Generic: They are not distinctive.
 They do not warrant protection because if one seller could
trademark a generic name, other sellers would be unable to
describe their products
 For example, it is not permissible to use a word mark "Milk" to
brand the product milk or the words "Hiking Boots" to brand
boots. Such words which have become publici juris or generic
cannot be appropriated as they belong to the public at large.

American Online Inc.'s Application, 2002 

The applicant sought to register the word "YOU'VE GOT MAIL" as
a trade mark in various classes. The examiner refused the
application finding the trade mark was not distinctive. It was held
that the trade mark composed of common words to inform email
users of the ordinary fact they have received a new mail and that
the phrase must remain free from the individual monopoly rights.
 Descriptive: Descriptive terms and symbols generally identify
attributes of the product, such as the purpose, size, colour,
ingredients, origin, and so forth.

 To qualify for protection, a mark must acquire a ‘secondary

meaning.’ To acquire a secondary meaning, the public must
associate the mark with the manufacturer
 A surname incorporated into a mark is treated as a descriptive mark
—it does not qualify for protection until it acquires a secondary
meaning. Examples include McDonald's and Hilton Hotels.
 Keystone Knitting Mills Ltd. case, the word “Charm” for ladies
stocking was said to describe the character and quality of the
goods.
 In Rich Product Corporation v. Indo-Nippon Foods Ltd, 2010,
the word “WHIP TOPPING” was held both generic and descriptive
 In IHHR Hospitality Limited v. Bestech India Pvt. Ltd.

The court stated that being registered proprietor of the trade mark
“Ananda” the appellant would have to show prima facie
evidence so strong that in public mind the mark is linked in
relation to an abode. It has acquired secondary distinctiveness.

 Secondary meaning or acquired distinctiveness has to be

established.
 The court considers several factors while determining this such
as extent and period of use, goodwill and association in the
minds of consumers, investment on advertisements, recognition
in trade circles, channels of distribution and relevant class of
customers
In another case Re Leopold Cassella & Co. (1910) “Diamine” was
denied registration for dyes.
which indicated that the word contained two amine groups. It was held
that this fact was sufficient to indicate that registration was applied in
respect of goods which contained two amine groups and that the
word was descriptive of the character and quality of the goods.

 In M/s Hindustan Development Corporation Ltd. v. The Deputy

Registrar of Trade Marks
The word “Rasoi” was denied registration for groundnut oil because it
was directly describing the character of good usually used for
cooking purposes.

 Suggestive: A suggestive mark does not describe the product; it

suggests its nature or characteristics. Although an inference must be
made about the product, the product must still bear some relationship
to the mark
 Examples of suggestive marks are AIRBUS for airplanes and
NETFLIX for streaming services. 

 A suggestive mark is different from a descriptive mark because

the consumer or member of the public must exercise his or her
imagination, or thought or perception, to draw a conclusion
about what kinds of goods or services are being offered.

 A descriptive mark, on the other hand, immediately states

something about the product or service to which it is attached.
 Arbitrary - Marks that are arbitrary do not describe or suggest
any characteristic of the product.
 When the meaning of the symbol used in the mark is not
inherently related to the product, the product is more likely to
be associated with the symbol
 It ensures that the consumer recalls the arbitrary association
drawn by use of the unrelated symbol for identifying a product.
 Examples include Apple for computers, Ghadi for detergent.
These words have no inherent relationship with their products
 Invented words: They are afforded strongest protection owing to their
inherent newness.

 In the Diabolo case, it was held that

“to be an invented word within the meaning of the Act a word must not only
be newly coined, in the sense of not being already current in the English
language, but must be such as not to convey any meaning, or, at any rate,
any obvious meaning to ordinary Englishman. It must be a word having
no meaning or no obvious meaning until one has been assigned to it.”

  Examples are GOOGLE for online services, ROLEX for watches, Yahoo

 Since a coined mark has no inherent meaning, in the beginning a bigger

effort in terms of advertising is necessary in order to educate the public as
to the relationship between the invented word and the owner’s product or
service. However, these marks enjoy the broadest scope of protection
against third-party use.
 Eastman Photographic Material Co. Ltd. v. The Comptroller
General of Patent, Design and Trademark
The term “Solio” for photographic paper was held to be an
invented term.
It was said that an invented word was not allowed registration as
a reward of merit but because the registration deprived no
member of the community of the rights which he possessed to
use from the existing vocabulary as he liked.
 Sec 9(1)(b) - which consist exclusively of marks or indications which may
serve in trade to designate the kind, quality, quantity, intended purpose,
values, geographical origin or the time of production of the goods or
rendering of the service or other characteristics of the goods or service;

 Hindustan Lever Limited, Bombay v Kilts Products, New Delhi, 1982

The word ‘Saffo’ was denied protection for cleaning powder and liquid as
being too close to the word ‘Saff’ meaning clean. This word indicated the
character of the goods.

 The word ‘Ombrella’ for shower baths curtains was not registered as it was
descriptive of umbrella-like shower bath curtains.

Aegon Life Insurance Co. Ltd. v. Aviva Life Insurance Company India
Ltd., 2013

The mark “iTerm” was considered descriptive for the goods and services of
the plaintiff i.e. Insurance term.
ELGI Ultra Industries Ltd. v. The Assistant Registrar of Trade
Marks, 2008
The world ‘ultra’ and ‘perfect’ are highly descriptive and
laudatory and cannot be registered as trade marks.

W.N. Sharpe Ltd. v. Solomon Bros Ltd.

It was held that certain words such as “good” “best” “superfine”
are incapable of registration
 The Imperial Tobacco Co. of India Ltd. v. The Registrar of
Trade Marks, 1977
The Imperial Tobacco Company is a famous company which
manufactures and distributes cigarettes with a label "SIMLA"
throughout the country. In the year 1960 and in 1966, ITC ltd.
made an application to the Registrar for the registration of the
above mentioned trademark
However, the Registrar refused the application for the registration
against which an appeal was preferred to the Calcutta High
Court. The Calcutta High Court dismissed the appeal on the
ground that the word "SIMLA" is a famous geographical place
which cannot be registered as a trademark.
 Geographical names –
Trade Marks Act 1999 prohibits the registration of a trade mark which consists
exclusively of marks or indications which may serve to designate the
geographical origin of the goods

 the use of geographical names in an arbitrary or fanciful manner maybe

allowed, if distinctiveness was proved.

 Rule 102 of the Trade Marks Rules 2002 allows parties to request the
Registrar to refuse or invalidate a registered trade mark on account of the
following:

(i) The trade mark contains or consists of a geographical indication with

respect to goods or class or classes of goods not originating in the territory
of a country, or a region or locality in that territory which such geographical
indication indicates, if the use of such geographical indication in the trade
mark for such goods, is of such nature as to confuse or mislead the persons
as to the true place of origin of such goods or class or classes of goods; or
(ii) The trade mark contains or consists of geographical
indication identifying goods or class or classes of goods
notified under S.22(2) of the Geographical Indications of
Goods (Registration and Protection) Act 1999.

 Eboline case – “Eboli” is a place in Italy and the mark

“Eboline” for silk goods was denied registration to prevent a
trader from acquiring monopoly in the name of the place and
suggesting that goods have local origin.

 Liverpool Electric Cable Co. Ltd. Case – “Liverpool” for

cabels was denied registration.

 Fanciful use such as Northpole Banana, Monte Rosa

Cigarettes, Magnolia Metal maybe allowed.
Sec 9 (1)(c) - which consist exclusively of marks or indications
which have become customary in the current language or in the
bona fide and established practices of the trade, shall not be
registered.
Provided that a trade mark shall not be refused registration if
before the date of application for registration it has acquired a
distinctive character as a result of the use made of it or is a well-
known trade mark.
Haughton Elevator Co. v. Seeberger
It was held that the mark ‘escalator’ has become generic and does
customary in respect of moving stairs and cannot be registered
Mrs Ishi Khosla v. Anil Agarwal and Anr.
The Hon’ble Court had held that “the plaintiff has been able to
show prima facie prior use, distinctiveness as well as reputation
which the plaintiff’s trademark “Whole Foods” has acquired.
Sec 9 (2)
A mark shall not be registered as a trade mark if—

(a) it is of such nature as to deceive the public or cause

confusion;
(b) it contains or comprises of any matter likely to hurt the
religious susceptibilities of any class or section of the citizens
of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names
(Prevention of Improper Use) Act, 1950 (12 of 1950).
a) to deceive the public or cause confusion

 The word confusion has been used in both grounds of refusal

i.e. in 'absolute' as well as 'relative' but both confusions are
different from each other.

 Section 9(2)(a) is primarily concerned with the deceptive

nature of the mark by the reason of something inherent in the
mark

 The mark may be in nature of misrepresentation as to the

characteristics of the goods or services or to the effect that
they were made in a specified geographical region or place,
when in fact not so made
 Deceptive use is also involved where the mark contain false or
misleading matter (such as the of word "regd" when the mark
is not registered)

 If the Registrar is convinced that the mark propounded for

registration is of such nature that the public may be deceived
or there will be confusion among the purchasing public and the
trade or profession, he may not register it.
 For example if a mark contains a description like 'pure ghee'
and mark is applied for edible oil then it will be refused on the
ground of deception or confusion under the current section.

 National Sewing Thread Co. Ltd v. James Chadwick &

Bros. Ltd
 Hon'ble Supreme Court observed that the burden of proving
that the trademark concerned is not likely to deceive or to
cause confusion, is upon the applicant. The real question to
decide in such cases is to see as to how a purchaser, who must
be looked upon as an average man of ordinary intelligence,
would re-act to a particular trademark, what association he
would form by looking at that trademark, and in what respect
he would connect the trade mark with the goods which he
would be purchasing.
 Leather Cloth Co. Ltd. V. American Leather Cloth Co. Ltd 
the plaintiffs had stamped upon all their goods the words 'tanned
leather cloth' whether such goods are tanned or untanned.
They had made only about one-tenth of their whole produced
in tanned cloth. It was held by the House of Lords that the
plaintiffs were disentitled to relief in the ground inter alia that
they had made a material misrepresentation about the nature
of the goods.

 The general rule is that the misstatement of any material fact

calculated to deceive the public, will be sufficient for this
purpose
b) If a mark is hurting the religious sentiment of any class or
section of Indian citizens, it cannot be registered as trademark.
 It is not difficult to find the name of any god or goddess or any
religious head as a trademark in India.
 Examples: The use of names or device of deities on foot wear
will be considered disrespectful. Likewise, the use of Hindu
gods in respect of beef or meat products or use of Muslim
saints for pork products would be offending the religious
sentiments of respective sections of public.
 In Amritpal Singh v. Lal Babu Priyadarshi, the word
RAMAYAN was refused registration on the grounds that:
Firstly, it was not capable of distinguishing the goods of the
applicant and Secondly, that it was likely to hurt religious
sentiments of a class of society.
 Amritpal Singh v. Lal Babu Priyadarshi, 2006

Lal Babu Priyadarshi, trading under the name M/s. Om Perfumery

made an application to the Registrar of Trade Marks to register
trademark by the name ‘RAMAYAN’ along with the image of a
crown. The impugned mark was to be registered in respect of
incense sticks and perfumeries. The said application was
opposed by another trader Amritpal Singh trading under the
name M/s. Badshah Industries, claiming that the Impugned
Mark, is name of a religious book, and hence it could not
become the subject matter of monopoly for an individual.

 The Assistant Registrar of Trade Marks dismissed the said

opposition, stating that the Impugned Mark was capable of
distinguishing the goods under the Trade Marks Act, 1999.
 Aggrieved by the said order, Amritpal Singh preferred an
appeal before the Intellectual Property Appellate Board,
which set aside the order of Assistant Registrar of Trade
Marks. Aggrieved by the order of the Intellectual Property
Appellate Board, Lal Babu Priyadarshi preferred this special
leave petition before the Supreme Court.

 Lal Babu Priyadarshi contended that the goods under the

impugned mark had been extensively advertised by him. Use
of same or similar trademark or carton by any other person
would cause confusion and deception.
 He contended that the use of names of Hindu deities as
trademarks was common practice, and denied that such usage
offended any religious feelings.
 The Court relied on the Amritpal Singh’s contention that the
Impugned Mark did not have any distinctive character as it
was being used by more than 20 traders in the city.

 Pursuant to this case, the Court has held that the names of
holy books such as Quran, Bible, Guru Granth Sahib,
Ramayan etc. cannot be registered as trademarks.
c) If a trademark contains any kind of scandalous or obscene
matters.
 Obviously, a mark which is contrary to the morality or is
considered obscene must not be registered and the onus will
fall on the applicant to prove it so by the evidence to
overcome the objection.

 In  Iancu v. Brunetti, 2019

The Respondent, Erik Brunetti started the streetwear clothing
brand FUCT in 1990. FUCT was widely known as an
acronym for “Friends U Can’t Trust”. In 2011, Brunetti
sought to obtain registration for its trademark ‘FUCT’ under
class 25 for athletic apparel. The US Patent and Trademark
Office (‘PTO’) denied registration that it prohibits registration
of trademarks that consist of or comprise immoral or
scandalous matter
Examples –
drug use, because it is scandalous to “inappropriately glamorize drug
abuse” such as the mark names KO KANE

S Rangarajan v. P Jajivan Ram, 1989

That the basis of obscenity should be from the view point of an
ordinary person of common sense and prudence and not that of a
“hyper sensitive man”.
4. If the use of such trademark is prohibited under the Emblem &
Names (Prevention of Improper use) Act, 1950
 Emblem and Names (Prevention of Improper) Act, 1950, prohibits
the improper use of certain emblems and names for professional and
commercial purpose. Section 4(b) of the act prohibits the registrar
from registering a trademark or a design which holds any emblem or
name and use of it shall be in contravention of section 3 of the Act.
 Example: Mahatma Gandhi, Pandit Jawahar Lal Nehru, Shivaji
Maharaj National Flag etc. cannot be used as Trademark
Sec 9 (3) - A mark shall not be registered as a trade mark if it
consists exclusively of—

a) the shape of goods which results from the nature of the goods
themselves; or
b) the shape of goods which is necessary to obtain a technical
result; or
c) the shape which gives substantial value to the goods.

a) Any shape that is a result from the nature of goods themselves

cannot be trademarked. The basis of this clause is to keep free
of exclusivity any basic shapes of goods – for use by the
public. Ex – For example, the shape of Vanilla ice cream that
resulted from the nature of the product itself was not registered
as a trademark.
b) Any shape of good that is necessary to obtain a technical
result cannot be trademarked. Hence, any shape which consist
exclusively of the shape of a product that are attributable to
the technical result cannot be trademarked.

Example: Lego was the owner of a

trademark for three-dimensional shape of a
red lego brick. Mega Brands applied to
have Lego’s trademark declared invalid on
the basis that the shape of the brick was
necessary to obtain a technical result.
Mega Brands contended that it was
necessary to include two rows of studs on
the upper surface of the brick in order to fit
with other lego bricks. The European
Courts agreed with Mega Brands and
declared Lego’s trademark invalid.
Koninklijke Philips Electronics Ltd. v. Remington Consumers
Products Ltd.

Philips was claiming a shape mark over it shaver with 3

rotational shavers in an equilateral triangle and tried to
prevent the defendant from manufacturing a shaver with the
three shavers in equilateral triangle it was held at Philips
could not protect its shaver as a shape mark as it was a shape
which was important to get specialised technical result that's
it was held at different dependent had not encroached upon
the trademark of Philips.
c) The basis behind not providing trademark protection to
shapes that give substantial value to the goods is to excludes
“aesthetic shapes” from trademark registration.
Thus, any shape that appeals to the eye compared to the
common shape of a product cannot be trademarked.
As a test for determining substantial value to the goods, what
compels customers to select the particular shape over
competing shapes, leaving aside any value attributable to
better materials used or to any technical or functional feature
must be determined.

Some example of shape trademark – Coca Cola bottle, Zippo

lighters, Wodka Gorbatschow etc.
 Sec 11 – Relative Grounds for refusal of a trademark

(1) Save as provided in section 12, a trade mark shall not be

registered if, because of—
(a) its identity with an earlier trade mark and similarity of goods
or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or
similarity of the goods or services covered by the trade mark,
there exists a likelihood of confusion on the part of the public,
which includes the likelihood of association with the earlier
trade mark.
 Identical Trademark -
A mark is identical with the trade mark where it reproduces
without any modification or additions, all elements
constituting the trade mark or where, viewed as a whole it
contains differences so insignificant that they may go unnoticed
by an average consumer

 Similarity of Trademark
The terms similarity of trademarks is to be construed as
“deceptively similar” which expression has been defined “as
so nearly resembling that other mark as to be likely to deceive
or cause confusion”.
 For likelihood of confusion to exist it must be probable; it is not
necessary that actual confusion has arisen or should arise in the
mind of public i.e. the average consumer.
 The distinction between identity and similarity is that the
identity means sameness of essential character whereas
similarity means resemblance.

 Pianotist Co. Ltd.’s application –

Lord Parker said -
Take two words, judge them both by look and sound. Consider
the goods, consider the nature and kind of consumer who
would be likely to buy those goods. Consider what will happen
when each of those trademarks are allowed to be used in a
normal way as a trademark for the respective owners of the
marks. If considering all those circumstances you come to the
conclusion that there will be a confusion, then you must refuse
the registration.
 Whether two marks are likely to cause confusion is a matter of first impression.

AMRITDHARA PHARMACY V. SATYADEO GUPTA (1962)

 In this case, the courts did a likelihood of confusion analysis between two
marks, namely, "AMRITDHARA" (Opponent's Mark) and
"LAKSHMANDHARA" (Applicant's Mark). Both these marks were being
used for a medicinal preparation, where "AMRITDHARA" was in use since
1901, much before the Applicant's mark i.e. "LAKSHMANDHARA" came into
existence.
 The courts, in this case set down rules/guidelines, the essence of which echoes
till today. The courts laid down the test for determining if the two marks were
similar.
 Two Important Tests:

- Reasonable Man's Test: The differentiation of the two marks must be done from
the point of view of a man with average intelligence and imperfect recollection.
- Overall Impression Test: According to this test, we must see the overall
impression of the two marks. This includes the overall phonetic and visual
similarity of the two marks.
The court observed:
“A critical comparison of the two names may disclose some
points of difference, but an unwary purchaser of average
intelligence and imperfect recollection would be deceived by
the overall similarity of the two names having regard to the
nature of the medicine he is looking for with a somewhat
vague recollection that he had purchased a similar medicine
on a previous occasion with a similar name.”

• And thus, the Court held that there exists an

overall similarity between two Trade Marks and
High Court was erred in their observation
•Therefore, setting aside the judgment of the
High court, the decision of the registrar was
restored. The registration was allowed by the
Supreme Court with the limitation of the sale in
only Uttar Pradesh.
 William Bailey (Birmingham) Ltd. Application –

Application was made for the word “Erectiks” which was

opposed by proprietor of “Erector”.

Justice Farewell observed that –

“I do not think it is right to take part of a word and compare it

with a part of another word as a whole. I think it is a dangerous
method to adopt and divide the word up and seek to distinguish
a portion of it from a portion of the other word.”
 F. HOFFMANN-LA ROCHE & CO. LTD. V. GEOFFREY
MANNER & CO. PVT. LTD. (1969)

 Marks in question “PROTOVIT” & “DROPOVIT”

Reasoning: i) letters ‘D’ & ‘P’ corresponding to letter ‘P’ & ‘T’
cannot be slurred over pronunciation
ii) Prescription is needed for purchase
iii) 57 trademarks are registered with the suffix “VIT”

The Test:
 Totality Test: It is important that while comparing the two marks,
one must compare the mark as a whole. The practice of taking a
portion of the word and saying that it is different from the other
mark is not a right practice. The marks must be compared in
totality to ascertain if any deception or confusion exists.
 Mark was not removed from register.
 Similarity of goods & services-

In order to ascertain whether ‘goods were of same description’

three tests have been laid down in Jelinek’s Application18 by
Justice Romer. The tests are:
(a) The nature and composition of the goods;
(b) The respective use of the goods;
(c) The trade channels through which the respective goods were
bought and sold
 Sec 11(2) A trade mark which—

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar
to those for which the earlier trade mark is registered in the
name of a different proprietor,

shall not be registered if or to the extent the earlier trade mark

is a well-known trade mark in India and the use of the later
mark without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the
earlier trade mark.
 Well-Known Marks –

Section 2(1)(zg), Trade Marks Act, 1999

“...a mark which has become so to the substantial segment of the public which uses
such goods or receives such services that the use of such mark in relation to other
goods or services would be likely to be taken as indicating a connection in the
course of trade or rendering of services between those goods or services and a
person using the mark in relation to the first- mentioned goods or services”

Tata Sons Ltd. v. Hoop Anin & Ors., 2011

Wherein it was held that the mark ‘TATA’ which the substantial segment of the public
uses for particular goods or services, if used by another person for other goods or
services like TATA diamonds is likely to indicate a connection between Tata Sons
Ltd. and TATA diamonds

In Rolex SA v. Alex Jewellery Pvt Ltd.

The court stated that Rolex is well-known trade mark from the point of view of that
segment of the public which uses the high quality watches
Why are some trademarks recognized as well known marks?

1. To prevent unfair use of a mark’s reputation

Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994

In this case, the Plaintiff was a manufacturer of Mercedes Benz
cars, and the Defendant was using the mark BENZ for selling
its undergarments.
while restraining use of the Benz tristar logo (well known mark)
on under garments, (unrelated goods), it was held that trademark
law is not intended to protect a person who deliberately sets out
to take the benefit of somebody else's reputation with reference
to goods, especially so when the reputation extends world wide
2. To prevent harm to the reputation of a mark

Doctrine of dilution -  tarnish or diminish the image of a well-

known trademark. Ex – Whole Foods

3. To prevent consumer confusion

As is evident from Section 2(1)(zg), well known marks are

recognized to avoid a situation where a connection in the course
of trade is likely
 Determining factors for a well-know mark (Sec 11(6)) –

Well-known
Marks

knowledge or record of
duration, extent and recognition in successful
geographical area relevant section of enforcemen
the public t

Use of Promotion/ Registration of

TM advertising/ TM to reflect
publicity/ the use or
presentation recognition of
TM
 Factors NOT to be considered while determining a well-
known trademark Sec 11(9) –

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered in India;
(iii) that the application for registration of the trade mark has
been filed in India;
(iv) that the trade mark—
(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been
filed in, any jurisdiction other than India; or
(v) that the trade mark is well-known to the public at large in
India.
 Sec 11 (7) - The Registrar shall, while determining as to
whether a trade mark is known or recognised in a relevant
section of the public for the purposes of sub-section (6), take
into account –

 (i) the number of actual or potential consumers of the goods

or services;
 (ii) the number of persons involved in the channels of
distribution of the goods or services;
 (iii) the business circles dealing with the goods or services

ICICI Bank Ltd. v. Chuandong XU, the court observed that

ICICI was extensively and widely used and was highly
distinctive and hence with its use around the world, it has
acquired the significance of a well-known trademark.
 Rule 124 of Trade Mark Rules 2017

This rule permits the trademark owners to file a request for

grant of "well-known" trademark to the Registrar in form TM-
M. Before the coming up of this rule, a mark was declared
well-known only after proceedings, rectification and
opposition held before the Hon'ble courts. With the advent of
this rule and the procedure laid thereof, a trademark owner can
request for a well-known trademark without getting into any
proceedings or rectifications.
Rule 124 ensures a trademark to be granted the tag of "well-
known" merely by an application of request to the Registry.
Sec 11(10) While considering an application for registration of a
trade mark and opposition filed in respect thereof, the Registrar
shall—
(i) protect a well-known trade mark against the identical or similar
trade marks;
(ii) take into consideration the bad faith involved either of the
applicant or the opponent affecting the right relating to the trade
mark.
Sec 11(11) Where a trade mark has been registered in good faith
disclosing the material information to the Registrar or where
right to a trade mark has been acquired through use in good
faith before the commencement of this Act, then, nothing in this
Act shall prejudice the validity of the registration of that trade
mark or right to use that trade mark on the ground that such
trade mark is identical with or similar to a well-known trade
mark.
 Sec 11(3)
A trade mark shall not be registered if, or to the extent that, its use
in India is liable to be prevented—
(a) by virtue of any law in particular the law of passing off
protecting an unregistered trade mark used in the course of
trade; or
(b) by virtue of law of copyright
For this purpose, objections must be raised in opposition
proceedings by the proprietor of the earlier trade mark

 Sec 11(4)
Nothing in this section shall prevent the registration of a trade
mark where the proprietor of the earlier trade mark or
other earlier right consents to the registration, and in such
case the Registrar may register the mark under special
circumstances under section 12.
 Sec 12 (Honest and concurrent use) –

In the case of honest concurrent use or of other special

circumstances which in the opinion of the Registrar, make it
proper so to do, he may permit the registration by more than
one proprietor of the trade marks which are identical or similar
(whether any such trade mark is already registered or not) in
respect of the same or similar goods or services, subject to such
conditions and limitations, if any, as the Registrar may think fit
to impose.
 Concurrent maybe established by documents which may
include bills, invoices, transportation, sales proofs,
advertisements, other promotional activities and materials.