INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
revoke/withdraw the acceptance of the applica - tion may arise. Well-Known Trade Marks Beyond jurisdictional protection of trade marks, Indian courts have taken into consideration fac - tors such as transborder reputation and good - will in protecting a trade mark that is used or registered in foreign countries, its reputation in foreign jurisdictions, and knowledge and infor - mation of the same within the public at large in India due to spill-over of its reputation through travel, the internet, advertisement or any other means. Indian courts have consistently objected to the unlawful gain or profit from the reputation built by third parties around the world. Further, Indi - an courts have also objected to passing off of unregistered trade marks, including foreign trade marks. In addition to declaration of trade marks as well known through courts, the Trade Marks Act 1999 has special provisions which allow for declara - tion of trade marks on the basis of evaluation of evidence by the TMO. 2.2 Essential Elements of Trade Mark Protection A mark is prohibited for registration as a trade mark under the following conditions: • If it comprises any matter that is likely to offend the religious sensibilities of any class or segment of Indian residents. • If it “comprises or contains scandalous or obscene matter”. • If its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950.
• If it is a word which is the commonly used and accepted name of any single chemical element or compound in respect of chemical substances or preparation. Also, the law pro - hibits registration of a word which is declared by the World Health Organization and notified by the Registrar of Trade Marks as an inter - national non-proprietary name, or which is deceptively similar to such name. If an international non-proprietary name is erro - neously accepted for registration in respect of pharmaceutical preparations, or if a prohib - ited or non-registrable trade mark is errone - ously accepted for registration, the necessity to revoke/withdraw the acceptance of the applica - tion 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 (according 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 confu - sion; • use of the mark can offend the religious views of persons in India; • the mark contains obscene or scandalous elements; 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
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