What is a Trademark?

A trademark is a sign that a business uses to identify its goods or services and to distinguish them from those of other businesses. In everyday terms, it is the identity of a business in the marketplace the name, logo, symbol, label or any other mark that tells a consumer who is behind the product or service they are choosing.

When you see the word “Amul” on a packet of butter or the logo of Tata on a vehicle, you immediately know the source. That instant recognition and the trust it carries is what trademark law exists to protect.

In India, trademarks are governed by the Trade Marks Act, 1999 and administered by the Trade Marks Registry under the Office of the Controller General of Patents, Designs and Trade Marks.

Legal Definition under the Trade Marks Act, 1999

Section 2(zb) of the Trade Marks Act, 1999 defines a “trade mark” as:

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.

The definition has two core requirements:

1. Graphical representability the mark must be capable of being depicted visually in a clear, precise and objective manner on the Register of Trade Marks.
2. Distinctiveness the mark must be capable of distinguishing the goods or services of one trader from those of another.

Section 2(m) defines “mark” to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

What Can Function as a Trademark?

One of the most practically important questions for businesses and creators is: what kinds of signs can be registered as trademarks in India?

Note on sound marks: India recognises sound marks as registrable. An applicant must submit the sound in MP3 format along with a graphical representation in the form of a musical notation. Registration has been granted for distinctive sound marks in India.

The Core Concept – Distinctiveness

Distinctiveness is the heart of trademark law. A mark that cannot distinguish one trader’s goods from another’s cannot function as a trademark, no matter how creative or attractive it is.

The Spectrum of Distinctiveness

Indian courts and the Trade Marks Registry assess distinctiveness along a well-recognised spectrum:

Why does this matter practically? A startup naming its food delivery app “FastFood” would face serious difficulty registering it as a trademark the name is directly descriptive. A name like “Zomato” (an invented word) is far easier to protect. This is why investing in a distinctive brand name from the outset has significant legal value.

Acquired Distinctiveness (Secondary Meaning)

A mark that is initially descriptive may become registrable if it acquires distinctiveness through long, continuous and extensive use in the market. This is called secondary meaning consumers begin to associate the mark not with the product category, but with a specific trader.

Section 32 of the Trade Marks Act recognises acquired distinctiveness. Evidence such as sales figures, advertising expenditure, duration of use and consumer surveys can be submitted to establish it.

Absolute Grounds for Refusal – What Cannot Be Registered (Section 9)

Section 9 of the Trade Marks Act sets out absolute grounds on which a mark cannot be registered, regardless of who applies:

• Marks devoid of any distinctive character
• Marks that consist exclusively of signs or indications that designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods
• Marks that consist exclusively of signs or indications that have become customary in the current language or in bona fide trade practices
• Marks that are likely to deceive the public or cause confusion
• Marks that contain or comprise any matter likely to hurt the religious susceptibilities of any class or section of citizens of India
• Marks that contain scandalous or obscene matter
• Marks whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 this includes the national flag, the name and emblem of the Government of India and names of international organisations

Relative Grounds for Refusal – Conflicts with Earlier Marks (Section 11)

Even if a mark passes the absolute grounds test, it may still be refused registration if it conflicts with an earlier mark. Section 11 of the Trade Marks Act sets out these relative grounds:

• The mark is identical to an earlier mark and the goods or services are identical confusion is presumed
• The mark is similar to an earlier mark and the goods or services are identical or similar likelihood of confusion must be shown
• The mark is identical or similar to an earlier well-known trademark, even if the goods or services are different if use would take unfair advantage of or be detrimental to the distinctive character or repute of the well-known mark

This third point is particularly important for brand owners. Well-known trademarks receive cross-class protection meaning a hotel cannot register a mark identical to a famous automobile brand, even though hotels and cars are in entirely different categories, if it would dilute or take unfair advantage of the famous brand.

Registered vs. Unregistered Trademarks

A fundamental distinction in Indian trademark law is between registered and unregistered marks. Both receive legal protection, but the nature and strength of that protection differs significantly.

Note on the ™ and ® symbols: The ™ symbol can be used by anyone claiming trademark rights in a mark, whether registered or not. The ® symbol can only be used once a mark is actually registered with the Trade Marks Registry. Using ® on an unregistered mark is a misrepresentation and can attract legal consequences.

First-to-Use vs. First-to-File – India’s Approach

India follows a first-to-use principle, not a first-to-file principle. This means that the party who can prove prior honest and continuous use of a mark in the Indian market has superior rights over a party who merely files for registration first even if the filing party registers the mark before the prior user applies.

This principle protects genuine traders who have built real market presence over time. It was applied by the Supreme Court of India in Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd. (2004) 6 SCC 145, where the Court affirmed that use and reputation in the market are the foundation of trademark rights in India.

This has a critical practical implication: a business should maintain clear, documented records of when and how it first used its mark invoices, packaging, advertisements, business correspondence because this evidence becomes essential in disputes.

The Registration Process –

Understanding the trademark registration process helps businesses plan their IP strategy effectively.

The date of registration relates back to the date of filing of the application. This means that once registered, the proprietor’s rights are treated as having commenced from the filing date which can be important in priority disputes.

Nice Classification – Classes of Goods and Services

Trademarks in India are registered in respect of specific classes of goods and services, following the International (Nice) Classification of Goods and Services. There are 45 classes in total Classes 1 to 34 cover goods and Classes 35 to 45 cover services.

A trademark registration only protects the mark in the specific class(es) for which it is registered. A business operating across multiple categories say, clothing (Class 25) and retail services (Class 35) should consider filing in each relevant class.

Practically relevant classes for common businesses:

Well-Known Trademarks in India

Section 2(zg) of the Trade Marks Act defines a “well-known trade mark” as a mark that has become so well-known to the substantial segment of the public which uses such goods or 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 between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

The Trade Marks Registry maintains a list of marks declared as well-known in India. Once declared well-known, a mark receives protection across all classes of goods and services not just those for which it is registered.

Indian courts have also recognised trans-border reputation, extending protection to internationally famous marks even where the mark owner had limited or no direct commercial presence in India, if the Indian consumer base is aware of the mark. This was discussed in cases involving marks like Whirlpool N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714) where the Supreme Court recognised the principle of trans-border reputation.

Trademark vs. Other Forms of IP

FREQUENTLY ASKED QUESTIONS

Q: Can a startup use the ™ symbol before its trademark is registered?

Yes. The ™ symbol indicates a claim to trademark rights and can be used by anyone who is asserting such rights, regardless of whether registration has been obtained. It is a signal to competitors and the public that you are claiming the mark as your own. The ® symbol, however, can only be used after registration is complete.

Q: If I registered my business name as a company with the Registrar of Companies, is my name automatically protected as a trademark?

No. Company name registration under the Companies Act and trademark registration are entirely separate. A company name registered with the MCA does not give you exclusive trademark rights over that name. Without trademark registration, you may only have common law passing off rights which are harder to enforce and require proof of goodwill.

Q: Someone has registered a trademark that is similar to my unregistered mark. What can I do?

If you have been using your mark prior to their registration date and can prove it, you have two options: (a) file an opposition against their application if it is still in the opposition period; or (b) file a rectification petition under Section 57 of the Trade Marks Act to have their registration cancelled on the ground of prior use. Indian law protects prior users even against registered proprietors.

Q: Can two businesses use the same trademark for completely different goods?

In general, yes if the marks are registered in different classes and there is no likelihood of confusion, two different businesses may co-exist with similar marks. However, well-known marks are an exception they are protected across all classes. For ordinary marks, whether confusion is likely depends on how closely the goods or services are related in the minds of consumers.

Q: How long does the trademark registration process take in India?

The timeline varies depending on whether objections are raised and whether the application is opposed. If no objections are raised and the mark is not opposed, registration can take approximately 12 to 18 months from filing. If objections are raised or opposition proceedings are initiated, the process may take considerably longer.

Q: Can a colour alone be registered as a trademark?

In India, a single colour alone is very difficult to register as a trademark because it is generally considered to lack distinctiveness. However, a specific combination of colours may be registrable if it has acquired distinctiveness through long and extensive use. Such claims require strong evidence of consumer association. Courts have recognised colour combinations as marks in limited circumstances where they have become exclusively identified with a particular trader.

Resources:

• WIPO Nice Classification (12th Edition); Office of the Controller General of Patents, Designs and Trade Marks, Government of India.
• Trade Marks Act, 1999; Trade Marks Rules, 2017
• N.R. Dongre & Ors. v. Whirlpool Corporation & Anr. (1996) 5 SCC 714 (Supreme Court of India)
• Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd. (2004) 6 SCC 145 (Supreme Court of India)