Maarg Manthan · Topic 18.2

Trademarks

Science & Technology › Intellectual Property Rights (IPR) · Topic 18.2

A trademark is a mark capable of being represented graphically that distinguishes the goods or services of one person from those of others. It may be a word, name, logo, signature, shape of goods, packaging, colour combination or even a sound. In India trademarks are governed by the Trade Marks Act, 1999, in force from 2003, which replaced the Trade and Merchandise Marks Act, 1958, and the Trade Marks Rules, 2017. A registered trademark is valid for 10 years and can be renewed indefinitely for further periods of 10 years. The Trade Marks Registry, headed by the Controller General of Patents, Designs and Trade Marks, has its head office in Mumbai. India joined the Madrid Protocol in 2013, so Indian owners can seek protection abroad through one application. Unregistered marks are protected by the law of passing off.

5 min read · UPSC Prelims · Science & Technology · Intellectual Property Rights (IPR)

At a Glance

Law Trade Marks Act, 1999
Term 10 years, renewable
Registry HQ Mumbai
International Madrid Protocol, 2013
Unregistered Passing off
Exam link UPSC Prelims, Science & Technology: Intellectual Property Rights (IPR)

Where Does It Fit?

This topic follows the account of copyrights. Trademarks protect brand identity and the goodwill of a business, and are used by far more firms than patents. Previous topic: Copyrights. Next topic: Patents.

What Is a Trademark and How Is It Registered?

Aspect	Details
Definition	A mark used to indicate a connection between goods or services and the person who has the right to use it. Includes shape of goods, packaging and combination of colours
Law	Trade Marks Act, 1999 (in force 15 September 2003) and the Rules of 2017. The 1958 Act was repealed
Registry	Offices at Mumbai (head office), Delhi, Kolkata, Chennai and Ahmedabad, under the Controller General of Patents, Designs and Trade Marks
Classification	Goods and services are grouped in 45 classes under the Nice Classification: 34 for goods and 11 for services
Process	Search, application, examination, publication in the Trade Marks Journal, opposition period of four months, then registration
Term	Ten years from the date of application, renewable for periods of ten years
Symbols	TM for a claimed mark, SM for service mark and R in a circle for registered mark

What Are the Grounds for Refusal, Remedies and Treaties?

Absolute grounds: marks that lack distinctiveness, are descriptive, generic, deceptive or against public order
Relative grounds: marks confusingly similar to an earlier mark
Well-known trademark: a mark known to a substantial segment of the public, which gets wide protection even for unrelated goods
Passing off: a common law action against a person who misrepresents his goods as those of another, protecting unregistered marks and goodwill
Infringement: use of an identical or similar registered mark for similar goods in a way that causes confusion
Remedies: injunctions, damages, account of profits and criminal penalties
Madrid Protocol: India joined on 8 July 2013; one application to WIPO can cover many countries
Collective and certification marks: used by groups or to certify quality, such as the Agmark and the ISI mark

What Else Should You Remember?

Distinctiveness: the key test for a mark
Acquired distinctiveness: a descriptive mark may become registrable by long use
Sound marks: India registered its first sound mark, Yahoo’s yodel, in 2008
Shape marks: the shape of Coca-Cola bottle and some chocolates have been protected
Trade Marks Journal: a publication of applications
Opposition: third parties may challenge within four months
Appeals: after the Tribunals Reforms Act, 2021 appeals go to High Courts
Domain names: disputes are handled under a policy for the .in domain and by courts
Trade dress: look and feel of a product
Counterfeits: fake branded goods harm consumers and brands
Geographical indications: a different right, as in Geographical Indications
Brand valuation: trademarks are valuable assets in mergers
Dilution: weakening of a famous mark by unrelated use
Startup Intellectual Property Protection: a scheme that gave rebates on trademark fees for start-ups
Fee: lower fees for individuals and small firms
Link: compare with Copyrights
Link to policy: see National Intellectual Property Rights Policy
Trade Marks Registry: the Registry examines and registers marks and keeps the register
Non-use: a registered mark can be removed if it is not used for five years and three months after registration
Honest concurrent use: two parties may register similar marks where both have used them honestly
Deceptive similarity: marks that are phonetically or visually alike for similar goods can be refused
Famous Indian cases: courts have protected brands such as Tata and Bata against copying
Licensing and assignment: a trademark can be sold or licensed, with quality control by the owner
Customs: customs can seize counterfeit goods at the border
Online sales: e-commerce platforms face duties to remove counterfeit listings
Statistics: India receives several lakh trademark applications every year
Fee structure: online filing carries lower fees

Why Does It Matter for the Exam?

Act and year: 1999, in force 2003
Term: 10 years renewable
International: Madrid Protocol 2013
Current affairs link: well-known mark declarations
Common errors: giving a fixed 20 year term or saying registration is compulsory

As an analytical point, trademarks protect the trust consumers place in brands and so lower search costs. Strong enforcement against counterfeits and quick online registration help small firms.

Why Is This Topic Important?

Law 1999 Act
Term Renewable
Remedies Passing off

What Came Next?

The next topic covers patents. Next topic: Patents.

Key People and Terms

Trademark Distinguishing mark
Passing off Misrepresentation tort
Well-known mark Widely recognised mark
Nice Classification 45 classes
Madrid Protocol International registration system
Distinctiveness Ability to identify source

Exam Corner

Points to Remember

Act: 1999, in force 2003.
Term: 10 years, renewable.
Madrid Protocol: 2013.
45 Nice classes.
Registry HQ: Mumbai.

Do Not Confuse With

Trademark and copyright Brand identifier versus creative work
Registered and unregistered Infringement action versus passing off
Trademark and GI Single owner versus collective regional right

Memory Hook

Ninety-nine Act, ten years renewed; Mumbai registers, Madrid carries abroad.

Mains Angle

Questions ask for the Act, term and treaties. These points help.

Purpose Brand trust
Process Registration
Enforcement Counterfeits

A Question You May Face

An original practice question, not a past paper question.

“Discuss the legal framework for protection of trademarks in India and the role of passing off in protecting unregistered marks.”

How to Answer

Concept Marks.
Law 1999 Act.
Remedies Infringement, passing off.
Reform Enforcement.

GS Relevance

Prelims: Act, term, Madrid Protocol, passing off, classes. GS Paper 3: IPR.

Frequently Asked Questions

What is a trademark?

A trademark is a mark such as a word, logo, name, shape, colour combination or sound that identifies the goods or services of one business and distinguishes them from those of others. It helps consumers recognise the source and quality of a product, and gives the owner the exclusive right to use it.

What is the validity of a trademark registration in India?

A trademark registered under the Trade Marks Act, 1999 is valid for ten years from the date of application, and can be renewed again and again for further periods of ten years on payment of the renewal fee. A mark can be removed if it is not used for five years.

What is passing off?

Passing off is a common law remedy that protects the goodwill of a business when another trader misrepresents his goods or services as being those of the original business. It applies even to unregistered marks and requires proof of reputation, misrepresentation and damage.

What is the Madrid Protocol?

The Madrid Protocol is an international system run by WIPO that allows a trademark owner to apply for protection in many member countries through a single application and one set of fees. India joined it on 8 July 2013, so Indian firms can seek protection abroad more easily.

What is a well-known trademark?

A well-known trademark is a mark which has become so famous among a substantial section of the public that its use on any goods or services would suggest a connection with the owner. It gets broad protection, even against use on unrelated goods, and the Registrar can list such marks.

PYQ Practice — Statement Analysis

1 A registered trademark is valid for 10 years and renewable.

True

Under the 1999 Act.

2 India joined the Madrid Protocol in 2013.

True

On 8 July 2013.

3 Unregistered marks get no protection in India.

False

Passing off protects them.

4 The Trade Marks Registry head office is in Chennai.