INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
cal preparations, or if a prohibited or non-registrable trade mark is erroneously accepted for registration, the necessity to revoke/withdraw the acceptance of the application may arise. Absolute Grounds for Refusal The TMO can object to or refuse an application on either absolute or relative grounds. Absolute grounds, which disqualify a mark from being registered (accord - ing to Section 9 of the Trade Marks Act 1999), include: • the mark is not distinctive; • the mark is descriptive of associated goods and services; • use of the mark has become customary and is bona fide used in established practices; • the mark is deceptive and will cause confusion; • use of the mark can offend the religious views of persons in India; • the mark contains obscene or scandalous ele - ments; and • the shape of a mark is a result of the nature of the goods themselves or is required for functional use. In order to overcome TMO objections raised under Section 9 (1), the applicant may submit that the mark has acquired a distinctive character by virtue of its prior use. The use of a trade mark must be established by adequate evidence. Relative Grounds for Refusal Relative grounds for refusal of registration (according to Section 11 of the Trade Marks Act 1999) include: • deceptive similarity of the mark in question with the opponent’s registered mark; • similarity of the mark in question with a mark which has prior use; and • adoption of the mark in bad faith. Objections raised under Section 11 can be overcome by the applicant by: • removing the conflicting goods or services by way of amendment; • obtaining consent from the proprietor of the cited mark(s) under Section 11 (4);
• filing evidence to establish honest concurrent use to secure registration under Section 12; • securing rectification of the register excluding such goods or services of the same description from the specification of the cited mark under Section 57; or • dividing the application and allowing the objec - tions-free part of the application to proceed further. 2.3 Trade Mark Rights Section 28 of the Trade Marks Act 1999 states as fol - lows: 28. Rights conferred by registration (1) Subject to the other provisions of this Act, the reg - istration of a trade mark shall, if valid, give to the reg - istered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is reg - istered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any condi - tions and limitations to which the registration is sub - ject. (3) Where two or more persons are registered proprie - tors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registra - tion of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.” Section 65A and Section 65B of the Copyright Act 1957 allow for the same, and the sections are repli - cated below: 65A. Protection of technological measures
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