In a significant ruling, the Delhi High Court has issued a permanent injunction against trademark infringement involving Ramada International Inc. The Court has restrained Clubramada Hotels And Resorts Private Limited (the defendant) from unauthorized use of the RAMADA trademark and awarded ₹10 lakh in damages to the plaintiff.

Background of the Case

Ramada International, a globally recognized hotel chain, was established in 1954 with its first hotel in Arizona, USA. Over the years, the brand has expanded its presence to over 900 hotels across more than 60 countries, including India.

The plaintiff alleged that Clubramada Hotels And Resorts Private Limited had unlawfully incorporated the “Ramada” trademark into its corporate name. Additionally, the defendant had registered domain names using the disputed trademark without authorization.

Legal Notice and Defendant’s Response

Upon discovering the trademark infringement, Ramada International issued a legal notice to the defendant. In response, the defendant admitted to using the trademark but refused to transfer the rights of the disputed domain names to the plaintiff.

Recognizing the continued misuse of its brand identity, Ramada International approached the Delhi High Court, seeking legal intervention to stop the infringement.

Court Proceedings and Key Observations

Ex Parte Ad Interim Injunction (2021)

On December 14, 2021, the Delhi High Court passed an ex parte ad interim injunction, prohibiting the defendant from using the RAMADA name and trademarks. Despite this order, the defendant continued its infringing activities.

Repeated Violation of Court Orders

Ramada International filed two interim applications after observing that the defendant had failed to comply with the Court’s injunction order. The Court reiterated its ruling and instructed the Managing Director of the defendant company to appear in person to explain the continued infringement.

On August 17, 2023, the Court reviewed the MD’s explanation and found it unsatisfactory. The Court recorded that the defendant had shown blatant disregard for judicial orders and directed them to deposit ₹5 lakh as a provisional penalty.

However, despite the Court’s directives, the defendant failed to pay the amount. This further demonstrated willful non-compliance and contemptuous conduct in the case.

Court’s Findings on Trademark Infringement

The Delhi High Court emphasized that Ramada International had been using the RAMADA trademark extensively and continuously across multiple countries, including India. The plaintiff holds at least eight trademark registrations for the “Ramada” brand in India and operates 39 hotels across 30 cities under the Ramada name.

The Court referred to a previous decision by the World Intellectual Property Organisation (WIPO) in Ramada International, Inc. v. Degui Wang, which recognized Ramada International’s exclusive rights over the trademark and ordered the transfer of the infringing domain names to the plaintiff.

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Defendant’s Bad Faith and Unjustified Use of the Trademark

The Court observed that the defendant had full knowledge of the Ramada brand’s reputation but intentionally adopted the disputed mark to exploit the goodwill of the plaintiff. It held that the defendant’s actions were mala fide and stated:

“The defendant’s adoption of the infringing marks cannot be deemed bona fide or honest. The defendant was fully aware of the plaintiff’s registered trademarks and their established reputation, making any plea of ignorance untenable. Further, the defendant has failed to provide any credible justification for adopting the plaintiff’s trademark, clearly intending to exploit the plaintiff’s goodwill and reputation for its own benefit.”

The Court criticized the defendant for deliberate misrepresentation and bad faith use of the trademark, which amounted to a blatant disregard of Ramada International’s statutory and proprietary rights.

Final Ruling and Compensation Awarded

In view of the continued trademark infringement, the Delhi High Court passed a permanent injunction restraining the defendant from:

• Using the RAMADA name in any form, including corporate branding, advertisements, and websites.
• Operating under domain names containing the infringing marks.

Additionally, the Court ordered the defendant to pay ₹10 lakh in damages to Ramada International for unauthorized usage of its trademark.

The Court also ruled that the plaintiff was entitled to recover actual litigation costs and directed it to submit the bill of costs within three months.

Significance of the Judgment

This ruling reinforces the importance of protecting well-established trademarks and sets a strong precedent against companies attempting to misuse reputed brand names. The Delhi High Court’s decision highlights:

• The stringent approach towards willful trademark infringement.
• The importance of compliance with Court orders.
• The financial consequences of bad faith adoption of registered trademarks.

This case serves as a warning to businesses attempting to capitalize on established brand names and reaffirms the legal protections available under Indian trademark law.

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What is a Trademark?

A trademark is a unique sign or mark used to identify the source or origin of a product or service. It serves as a tool for consumers to make informed purchasing decisions by recognizing specific qualities associated with the product. For manufacturers, trademarks incentivize investment in quality and brand reputation, acting as a commercial tool for maximizing economic efficiency.

According to Section 2(1)(m) of the Trademarks Act, 1999, a “mark” encompasses a wide range of identifiers, including devices, brands, headings, labels, tickets, names, signatures, words, letters, numerals, shapes of goods, packaging, or a combination of colors. Additionally, Section 2(1)(zb) defines a “trademark” as a mark capable of graphical representation and possessing distinguishing characteristics that set the applicant’s goods or services apart from others. For a mark to qualify as a trademark under the Act, it must first meet the criteria of a “mark” and then satisfy the requirements of being distinctive.

Importance of Trademark Registration

The process of trademark registration provides legal recognition and protection to a brand. It begins with filing an application before the Trademark Registry. The Registrar examines the application and, within 30 days, issues a report, either rejecting or conditionally approving the application based on Sections 9 and 11 of the Act.

Once registered, trademarks grant exclusive rights to the proprietor under Section 28 of the Act. Key benefits include:

1. Exclusive Rights: The owner has exclusive rights to use the trademark for the goods or services it represents.
2. Legal Remedies: In case of infringement, the proprietor can file a lawsuit to protect their rights.
3. Brand Recognition: Registration enhances brand value, fostering consumer trust and loyalty.

Grounds for Refusal of Trademark Registration

While trademarks are essential for distinguishing a manufacturer’s goods or services, not all marks qualify for registration. The Trademarks Act outlines absolute and relative grounds for refusal. Absolute grounds, as specified in Section 9, address issues inherent to the mark itself, while relative grounds, covered under Section 11, focus on potential conflicts with existing registered trademarks.

Absolute Grounds for Refusal

The absolute grounds for refusal aim to uphold public policy, safeguard the interests of consumers, and protect the goodwill of manufacturers. Section 9 prohibits registration in the following cases:

1. Lack of Distinctive Character: Marks that fail to distinguish the applicant’s goods or services from others are not eligible for registration.
2. Descriptive Marks: Marks that solely describe the quality, quantity, intended purpose, value, or geographical origin of goods or services cannot be registered.
3. Customary Marks: Marks that have become generic or customary in the trade or language are excluded.
4. Deceptive Marks: Marks likely to deceive or confuse the public, or those that are scandalous or contrary to law, are barred from registration.

Relative Grounds for Refusal

Under Section 11, trademarks that are identical or similar to existing registered marks may be refused registration if they are likely to cause confusion among consumers. This ensures the protection of established trademarks and prevents unfair competition.

The Global Perspective: India’s Innovation Index Ranking

India’s standing in the global trademark landscape reflects its innovation potential. As per the 2023 Global Innovation Index, India ranked 40th overall and 54th in the category of trademarks by origin. Among the top three innovation economies in Central and Southern Asia, India secured the first position, followed by Iran and Kazakhstan. In the lower middle-income group, India again ranked first, highlighting its competitive edge in innovation and intellectual property development. However, these rankings underscore the need for continued improvements in trademark awareness and registration practices.

Consequences of Non-Registration

Failure to register a trademark can have significant repercussions, including:

1. Lack of Legal Protection: Unregistered trademarks lack legal recognition, leaving the proprietor vulnerable to infringement.
2. Loss of Exclusivity: Without registration, the trademark owner cannot prevent others from using identical or similar marks.
3. Reputational Damage: Unauthorized use of an unregistered trademark can harm the brand’s reputation and dilute its value.

Section 9(1) of the Trademarks Act, 1999

Section 9(1)(a): Lack of Distinctiveness

Clause (a) of Section 9(1) of the Trademarks Act, 1999, outlines the grounds for refusal of trademark registration due to a lack of distinctive character. The term “devoid of any distinctive character” signifies that the trademark cannot effectively differentiate the goods or services of the applicant from those of others. A trademark’s distinctiveness is essential for identifying the origin of goods or services.

Although the Act does not directly define “distinctiveness,” courts have consistently interpreted it to mean that a trademark must enable the public to clearly and immediately associate the mark with the specific manufacturer or service provider.

Relevant Case Laws

Muneer Ahmad vs. Registrar of Trade Marks (2023)

In this case, the applicant sought to register the word ‘Bharat,’ styled alongside a slanted paintbrush figure, for products such as paintbrushes and roller brushes. The Registrar refused registration, citing the trademark’s highly descriptive nature, which indicated the quality and purpose of the goods.

Trademarks lacking distinctiveness can fall into two categories:

1. Inherently Lacking Distinctiveness: These marks cannot differentiate between the goods or services of one entity and another due to their generic or descriptive nature.
2. Common Usage: Trademarks commonly used for specific goods or services fail to act as identifiers of the product’s source. Such marks are frequently rejected unless substantial evidence supports their distinctiveness.

The court emphasized the need to assess the trademark as a whole under Section 9. Ultimately, it concluded that while the word ‘Bharat’ might lack distinctiveness, the overall device mark was distinctive and registrable.

Geep Flashlight Industries Ltd. vs. Registrar of Trade Marks (1972)

This case involved the proposed registration of the trademark ‘Janta’ for electric torches. The Registrar rejected the application, asserting that the mark was not distinctive. The applicant attempted to prove distinctiveness through extensive sales data and advertisements. However, the term ‘Janta’ was deemed descriptive, suggesting affordability and mass-market appeal, which made it unsuitable for exclusive use.

The court held that:

• A low price alone does not ensure product popularity; factors like utility and quality also influence consumer decisions.
• Despite the applicant’s evidence of market reputation, the term ‘Janta’ remained non-distinctive and could not serve as a unique identifier.
• Words commonly used in everyday language, such as ‘Janta,’ should remain accessible for general descriptive or trading purposes. Granting a monopoly over such terms would be unjust.

The court ultimately upheld the Registrar’s decision, stating that ‘Janta’ could not be registered as it lacked the capacity to distinguish the applicant’s goods from others.

Section 9(1)(b): Descriptive Marks and Trademark Registration

Section 9(1)(b) of the Trademarks Act imposes restrictions on registering marks that are purely descriptive in nature. The primary rationale is to prevent the monopolization of common terms that describe the qualities or characteristics of goods and services. However, if a descriptive mark has, over time, acquired a secondary meaning uniquely associated with a specific product or brand, it may become eligible for registration.

Characteristics That Bar Trademark Registration

The subsection outlines specific characteristics of trademarks that may lead to refusal of registration:

1. Kind: Marks that denote the type or category of a product cannot be registered. For instance, the term “SUV” for a car cannot be trademarked.
2. Quality: Words indicating the standard of a product, such as “Best” or “No.1,” are not registrable.
3. Quantity: Terms indicating weight, volume, or number, like “500g” or “dozen,” cannot be trademarked.
4. Intended Purpose: Descriptions of the product’s use, such as “floor cleaner” or “shampoo,” are non-registrable.
5. Values: Terms like “Celsius” or “degree” are generally not registrable unless used in a creative or arbitrary manner. For example, the brand “62 Degrees East” creatively incorporates a numerical value, making it distinctive.
6. Geographical Origin: Names of countries, cities, or regions indicating the source of the product—e.g., “Shimla Apple”—cannot be registered.
7. Time of Production or Service: Terms like “24×7” referring to service availability are not registrable.
8. Other Characteristics: Generic terms associated with specific goods or services, such as “teeth” for dental products or “football” for sports gear, are not eligible for trademark registration.

Relevant Case Laws on Descriptive and Geographical Marks

Foreign Cases

1. Liverpool Electric Cable Co Ltd (1929)
   • The court denied trademark registration for “Liverpool,” stating that it was the name of a significant commercial center. Even if a geographical term acquires distinctiveness for specific goods, it may still face refusal.
2. Sir Titus Salt, Bart., Sons and Co.’s Application XI (1894)
   • The term “Eboline,” derived from “Eboli” (a town), was refused registration. The court emphasized that adding a suffix like “ne” does not transform a geographical name into an invented term.

Indian Cases

1. Muneer Ahmad vs. Registrar of Trade Marks (2023)
   • The trademark examiner initially refused to register “Bharat” with a paintbrush design, citing its descriptive nature. The Delhi High Court ruled that the mark, viewed as a whole, was distinctive and allowed registration.
2. Hi-Tech Pipes Ltd. vs. Asian Mills Pvt. Ltd. (2006)
   • The plaintiff used “Gujarat” for steel pipes, and the court held that despite being a geographical term, the company could protect it if distinctiveness and the likelihood of confusion were established.
3. Imperial Tobacco Co. of India Ltd. vs. The Registrar of Trademarks (1986)
   • The term “Simla” was refused registration for cigarettes as it indicated geographical origin. The court highlighted that trademarks using significant geographical terms must prove long-standing and distinctive use to qualify for registration.

Exceptions and Distinctiveness

Geographical terms generally lack inherent distinctiveness. However, exceptions may apply in cases where:

• The geographical term is creatively used without indicating the source or origin of goods.
• The term refers to a small or insignificant place with no commercial significance.
• Substantial evidence of long-term, exclusive use establishes the term’s distinctiveness for specific goods or services.

For major industrial cities or commercially significant locations, registration remains challenging unless overwhelming evidence of acquired distinctiveness is provided.

Read Meanwhile: Understanding Collective Trademarks: A Comprehensive Guide

Bar on Registration of Descriptive Trademarks: Legal Precedents and Implications

Trademark laws aim to distinguish brands while preventing unfair monopolies over commonly used terms. Section 9(1) of the Indian Trade Marks Act prohibits registering marks that are descriptive of the quality or character of goods. Below, we examine notable cases addressing this principle.

M/s Hindustan Development Corporation Ltd. vs. The Deputy Registrar of Trade Marks (1955)

In this case, the Calcutta High Court debated the registrability of the term “Rasoi” as a trademark for hydrogenated oils. The court emphasized evaluating the public’s perspective rather than the term’s literal meaning. Since “Rasoi” directly relates to cooking and hydrogenated oils are primarily used for this purpose, the court deemed it descriptive of the product’s character. Consequently, the registration was denied.

Marico Limited vs. Agro Tech Foods Limited (2010)

Marico registered “LOSORB” and “LO-SORB” for edible oils and related products. Agro Tech used the term “low absorb technology” on its “Sundrop” sunflower oil packaging, indicating reduced oil absorption during frying. The Delhi High Court ruled that “low absorb” is a descriptive phrase, barring exclusive ownership under Section 9(1). However, distinctiveness through usage could allow registration, though it would not prevent competitors from descriptive use.

Cadila Healthcare Ltd. vs. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors (2009)

This case revolved around the trademark “sugar free.” The court observed that “sugar free” merely describes the product’s characteristic. Without acquired distinctiveness beyond the artificial sweetener category, Cadila could not claim exclusivity. Section 30(2) clarifies that descriptive use of registered trademarks does not constitute infringement. The court concluded that generic descriptive terms cannot receive absolute protection unless distinctiveness is proven.

Info Edge (India) Pvt. Ltd. and Anr. vs. Shailesh Gupta and Anr. (2002)

The Delhi High Court examined “naukri.com” and “naukari.com.” The court recognized that descriptive terms, even if generic, could acquire distinctiveness through extensive use, resulting in goodwill. Misusing such terms to mislead consumers was deemed dishonest, and an injunction was granted to protect Info Edge’s interests.

Online India Capital Co. Pvt. Ltd. vs. Dimensions Corporate (2000)

The Delhi High Court denied protection to the domain name “mutualfundsindia.com,” deeming it a generic descriptor for financial services. The absence of evidence for acquired secondary meaning was critical to this decision, reaffirming the requirement for distinctiveness in descriptive marks.

Bharathiya Coffee Workers Catering vs. Indian Coffee Workers Co-Operative (1998)

This dispute involved the use of “Indian Coffee House.” The Kerala High Court noted that the name was generic and commonly used by former employees of the Indian Coffee Board. While goodwill existed, it did not grant exclusive rights. The court ruled that others could use the term without infringing.

Christian Louboutin SAS vs. Abubaker & Ors (2018)

Christian Louboutin sought exclusivity over its “red sole” design. The Delhi High Court clarified that single colors do not qualify as trademarks under the Trade Marks Act. While distinctive use of a color could support a trademark claim, it cannot prevent others from employing the same feature descriptively or decoratively. The court emphasized that trademarks must signify origin, not simply enhance product appeal.

Section 9(1)(c): Refusal of Registration for Customary Terms

Section 9(1)(c) of the Indian Trade Marks Act, 1999, serves as a ground for refusing trademark registration. It applies to marks that:

1. Have become customary in the current language, or
2. Are commonly used in bona fide trade practices.

Customary Terms and Their Implications

When evaluating a trademark, the public’s perception of the mark in relation to the goods or services it represents is critical. A trademark should not monopolize symbols or terms associated with universal ideas or common usage. For instance:

• A red cross universally signifies medical services or hospitals.
• Traffic signs have pre-established meanings.

Such symbols cannot be registered as trademarks, as they are neither distinctive nor capable of distinguishing one brand from another. A trademark’s core purpose is to differentiate goods or services of one entity from others. Allowing registration of customary terms would undermine this principle.

Section 9(1) Proviso: Acquired Distinctiveness as an Exception

Despite the restrictions under Section 9(1), the proviso allows a trademark to be registered if:

1. It has acquired a distinctive character through extensive usage before the application date, or
2. It is recognized as a well-known trademark.

Role of Acquired Distinctiveness

The primary function of a trademark is to identify the source of goods or services. Over time, extensive and exclusive use can embed the trademark into the minds of consumers, associating it with a specific brand. This acquired distinctiveness provides an exception to the prohibition on registering descriptive or customary marks.

When assessing whether a trademark has acquired distinctiveness, courts consider factors such as:

• Market share of the goods bearing the mark.
• Duration and geographical extent of the mark’s usage.
• Investment in advertising and promotions.
• Consumer recognition of the mark as indicative of a specific source.
• Reputation of the goods in trade circles.

If evidence confirms that the public identifies the trademark with a specific source, it satisfies the condition for registration under the proviso.

Judicial Precedents on Acquired Distinctiveness

1. Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories (1965)
   The Supreme Court held that trademarks in continuous use, even with minor changes, could qualify for registration if they retain their identity and acquired distinctiveness.
2. Marico Limited vs. Agro Tech Foods Limited (2010)
   The court clarified that a descriptive trademark could achieve distinctiveness if exclusively used over a prolonged period without interruption or competition.
3. Mrs. Ishi Khosla vs. Anil Aggarwal (2007)
   The Delhi High Court ruled that a new or innovative product associated with an appealing trademark could gain popularity and distinctiveness quickly. The court emphasized that no fixed time frame is required for a trademark to acquire distinctiveness.

Challenges in Proving Acquired Distinctiveness

Acquiring distinctiveness is a complex process. While the duration of use is an essential factor, it is not decisive. For example:

• Some trademarks may gain distinctiveness within a short span due to unique appeal.
• Others might fail to achieve it even after years of use.

The burden of proof lies on the applicant to demonstrate that their mark is recognized by the public as indicative of their goods or services. Furthermore, distinctiveness must be proven for all products bearing the mark, not just one.

Trademark Registered in Breach of Section 9(1): Key Insights

Section 32 of the Trade Marks Act, 1999, addresses situations where a trademark has been registered in violation of Section 9(1). According to this provision, a trademark that breaches Section 9(1) will be considered invalid unless it acquires a distinctive character for the goods or services it represents after registration. Before any legal challenge to its validity, the trademark owner can present evidence proving the mark’s acquired distinctiveness.

This provision safeguards trademarks that lacked distinctiveness at the time of registration but gained distinctiveness later, thereby aligning with the fundamental purpose of trademarks—distinguishing goods or services of one entity from another.

When to Assess Acquired Distinctiveness?

A critical question arises when registering inherently descriptive trademarks under the proviso to Section 9(1): at what point should acquired distinctiveness be evaluated?

Provisions Governing Acquired Distinctiveness

1. Section 9(1) Proviso
   A trademark barred by Section 9(1) can still be registered if it acquires a distinctive character or achieves the status of a well-known trademark before the application date.
2. Sections 31(2) and 32
   Under these sections, evidence of acquired distinctiveness must generally be submitted as of the application filing date. However, Section 31 allows this period to extend until the actual date of registration.
3. Section 57
   In cases where a third party challenges a trademark’s validity, the owner may submit evidence of acquired distinctiveness even after registration. However, this provision applies only to cancellation proceedings, not civil suits for trademark infringement.

Impact of Registering Descriptive Trademarks with Acquired Distinctiveness

While descriptive trademarks may achieve registration due to acquired distinctiveness, their registration does not grant the proprietor absolute exclusivity.

Supreme Court Clarifications

The Supreme Court of India has consistently ruled that descriptive trademarks cannot be monopolized, even after registration. For instance:

• If a registered trademark is descriptive of the goods’ characteristics, the proprietor cannot prevent others from using the mark descriptively.
• This ensures that manufacturers or sellers can use descriptive terms as features of their products, provided they do not use the term as a trademark.

Example

The term “24/7,” when registered as a trademark, cannot restrict others from using it descriptively to indicate around-the-clock service.

Features and Functional Aspects of Goods

Descriptive trademarks often reflect the functional or appealing characteristics of goods. Such traits may include:

• Product functionality.
• Descriptions related to product quality or use.
• Generic terms that are essential for consumer understanding.

When a descriptive term is registered as a trademark, Section 30 of the Trade Marks Act prevents the proprietor from barring others from using the term descriptively. This approach encourages fair competition and discourages monopolizing descriptive or generic terms.

Objective of Section 32(1)

Section 32(1) ensures that descriptive trademarks remain available for public use. By requiring acquired distinctiveness for registration, the provision discourages the adoption of trademarks based solely on generic or descriptive terms. This protects the rights of other manufacturers and promotes equitable access to descriptive language in trade.

Section 9(2) of the Trademarks Act, 1999: An In-Depth Guide

Section 9(2) of the Trademarks Act, 1999, imposes absolute restrictions on the registration of certain trademarks based on their potential to deceive, offend, or violate public decency. These provisions ensure that trademarks adhere to societal values and do not harm public interests.

Section 9(2)(a): Trademarks That Are Deceptive or Confusing

This clause prohibits the registration of trademarks that may mislead or confuse the public. Such trademarks fail to serve their primary purpose of distinguishing goods or services and identifying their origin. Examples include:

• A trademark with the phrase “ANIMAL FREE” for products containing meat.
• Marks closely resembling well-known brands with minor differences.

Relevant Case Law

Sunder Parmanand Lalwani vs. Caltex (India) Ltd (1969)

• The dispute revolved around the trademark “Caltex,” applied for by the appellants in 1958 for watches and components.
• The respondents opposed the registration, arguing that they had used the “Caltex” mark for industrial oils and fuels in India since 1937.
• The Bombay High Court held that while the goods were different, the respondents’ mark had widespread recognition, and the similarity could confuse the general public. The court rejected the appellants’ application, noting that the respondents’ established reputation might lead consumers to assume the same origin for the goods.

Section 9(2)(b): Trademarks That Hurt Religious Sentiments

Trademarks that contain words or symbols offensive to religious sentiments of any group in India cannot be registered.

Relevant Case Law

Controller General of Patents vs. Additional (2013)

• The case involved a trademark featuring the Attukul deity and the phrase “Sabarimala of women.”
• Opponents argued that using religious symbols for commercial purposes violated religious sentiments and constitutional rights under Articles 25 and 26.
• The Kerala High Court ruled that while religious imagery is commonly used in trademarks, its application must not offend public sensibilities. Using such symbols for inappropriate goods (e.g., footwear or tobacco) would be deemed offensive. However, in this case, the trademark was allowed since it was not inherently offensive or exploitative.

Section 9(2)(c): Trademarks That Are Scandalous or Obscene

Trademarks containing scandalous or obscene content are barred from registration. Determining what qualifies as scandalous or obscene depends on societal standards.

Relevant Case Law

1. Ranjit D. Udheshi vs. State of Maharashtra (1964)
   • The Supreme Court applied the Hicklin Test to define obscenity as any material that corrupts minds exposed to immoral influences, regardless of artistic merit.
2. Aveer Sarkar vs. State of West Bengal (2014)
   • Introduced the “community standard test,” which evaluates the overall societal impact of material deemed obscene.
3. Myntra Logo Controversy
   • Myntra was compelled to redesign its logo after allegations that it resembled an offensive image of a woman. The case highlights how public perception and societal standards influence trademark validity.

Section 9(2)(d): Trademarks Prohibited by Law

This clause restricts trademarks containing emblems, names, or symbols prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. Examples of prohibited symbols include:

• National flag of India.
• Official emblems of the United Nations (UN) or World Health Organization (WHO).
• Names or seals of prominent individuals like Shri Lal Bahadur Shastri.
• Logos of international organizations like FIFA.

Under Section 4(1)(b) of the Act, trademarks featuring such elements are deemed invalid, ensuring that such symbols remain protected and free from commercial misuse.

Section 9(3) of the Trademarks Act, 1999: Shape-Based Trademarks

Section 9(3) of the Trademarks Act, 1999, specifically addresses trademarks that consist of shapes. According to Section 2(zb) of the Act, trademarks may include shapes that distinguish goods or services from one another. A shape mark refers to a three-dimensional representation that serves as a unique identifier for a particular product or brand.

This section ensures that shape-based trademarks adhere to distinctiveness and are not merely functional or technical elements. It also aligns with the concept of trade dress, encompassing packaging, color schemes, and unique product designs.

Section 9(3)(a): Shapes Arising From the Nature of Goods

Trademarks cannot be registered if the shape of the product is derived solely from the nature of the goods themselves. For example:

• A standard chocolate bar or an ice cream sandwich.
• Common shapes like mugs, glasses, or vases that inherently relate to their functionality.

Section 9(3)(b): Shapes Necessary to Achieve a Technical Result

Trademarks that consist of shapes essential to achieve a technical function are also ineligible for registration. Examples include:

• The shape of a straw designed for optimal fluid intake.
• The tread design on car tires necessary for grip and stability.

Relevant Case Law

Delta Sport Handelskontor vs. EUIPO – Lego (2024)

• Background: The Danish company Lego owned a trademark for its interlocking brick design. A German competitor, Delta Sport, challenged the validity of this trademark, arguing that the design was purely functional.
• Ruling: The European Court of Justice held that the design’s smooth upper surface was a distinctive feature unrelated to its functionality. This ruling confirmed that the interlocking brick design could be trademarked, as it had aesthetic and distinctive attributes beyond its technical purpose.

Section 9(3)(c): Shapes Providing Substantial Value to Goods

Trademarks consisting of shapes that add significant value to goods, making them more appealing or functional, are restricted. The test for substantial value involves assessing whether the shape compels customers to choose the product over alternatives.

Examples:

• Functional shapes like straws, cups, or tires that improve usability.

Relevant Case Law

1. Apollo Tyres Ltd. vs. Pioneer Trading Corporation (2017)
   • The case centered on tread patterns in tires. While the treads serve functional purposes, the tread pattern itself was deemed unique and eligible for trademark registration, as it distinguished the manufacturer’s products.
2. Whirlpool of India Ltd vs. Videocon Industries Ltd (2014)
   • The plaintiff sought protection for the unique design of their semi-automatic washing machine, arguing that its shape and configuration were purely aesthetic. The Bombay High Court upheld the claim, confirming that the shape served as a distinguishing feature and had no functional purpose.
3. Koninklijke Philips Electronics Ltd. vs. Remington Consumers Products Ltd (2000)
   • The European Court of Justice ruled against registering the shape of a rotary electric trimmer, stating that its essential features were inherently linked to achieving a technical result.

Shape Marks and Consumer Confusion

Unique shapes can act as identifiers for brands, provided they are not functional or technical. Courts have frequently protected shape-based trademarks to prevent consumer confusion.

Key Cases

1. Zippo Manufacturing Company vs. Anil Moolchandani (2011)
   • The Delhi High Court protected the unique shape of Zippo lighters, noting that replication of the shape could mislead consumers into believing the counterfeit product was authentic.
2. Gorbatschow Wodka KG vs. John Distilleries Limited (2011)
   • The Bombay High Court recognized the distinctive shape of the vodka bottles as a trademark. The court observed that the shape was imaginative and not functional, thereby granting protection to the plaintiff’s design against imitation.

Conclusion

Throughout history, people have prioritized the protection of their possessions. In today’s world, the concept of ownership has expanded to include intellectual property, safeguarding the creativity and innovations of individuals from replication and misuse. Among these, trademarks play a crucial role in protecting a brand’s identity and ensuring exclusivity. However, the right to register and exclusively use a trademark is subject to certain restrictions, guided by public policy and legal frameworks.

The primary purpose of a trademark is to help consumers identify the origin or source of a product or service. If a trademark fails to meet this purpose, its registration may be denied. Section 9 of the Trade Marks Act, 1999, outlines several absolute grounds for refusal. These include:

• Lack of distinctiveness.
• Descriptive or generic terms.
• Potential to deceive or confuse consumers.
• Obscene or scandalous content.

Despite these restrictions, trademarks that initially lack distinctiveness may still qualify for registration if they acquire distinctiveness over time through consistent use and consumer recognition.

The Trade Marks Act, 1999, strikes a careful balance between protecting the rights of trademark applicants and safeguarding public interests. By ensuring that trademarks fulfill their purpose of distinguishing products and maintaining ethical standards, the Act upholds fairness for businesses and consumers alike.

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What is a Collective Trademark?

Section 2(g) of the Indian Trademark Act, 1999, defines a collective trademark as a mark that distinguishes the goods or services of members of an association from those of others. Unlike regular trademarks, which represent individual brands, collective marks highlight the collective identity of an organization or its members.

In simpler terms, a collective trademark represents the goods or services provided by members of an organization. These marks can take the form of words, letters, symbols, logos, or names.

Key Features of Collective Trademarks

1. Owned by an Organization, Used by Members
   Collective trademarks are registered under the name of an organization but can be used by its members.
2. No Individual Use
   These marks are distinct because they cannot be used by individuals for personal purposes. Instead, any member of the organization can utilize the mark to signify their association. For instance, the CS qualification logo is a collective mark used by qualified Company Secretaries registered with the Institute of Company Secretaries of India (ICSI).
3. Represents Quality and Origin
   Collective trademarks signify specific qualities, qualifications, or geographical origins, helping the public recognize the standards maintained by the group.

Purpose of Collective Trademarks

The primary objectives of collective trademarks include:

• Differentiating goods and services associated with a particular group or organization.
• Promoting a sense of trust and reliability among consumers regarding the quality or origin of the products or services.
• Protecting the collective interests of the members.

Types of Collective Trademarks

Collective marks are categorized based on their use and registration:

1. Marks Used by Association Members
   These trademarks are utilized by the members of an association to highlight their affiliation.
2. Geographical Indications
   A significant type of collective mark, geographical indicators (GIs), highlight the specific origin of goods, enhancing their value and global demand. For example, Darjeeling Tea is recognized for its geographical authenticity.

Filing Conditions for Collective Trademarks

When applying for a collective trademark, specific information is required:

• Basic details of the association, including its name and office address.
• The organization’s purpose or mission.
• Membership details and eligibility criteria for using the trademark.
• Guidelines for usage and measures against misuse or unauthorized use.

Factors Influencing Collective Trademark Registration

The registration of a collective trademark must meet specific conditions:

1. The mark must not be misleading, deceptive, or likely to cause confusion in the market.
2. It should clearly indicate its collective nature.
3. A trademark application can be rejected if it fails to adhere to these guidelines.

Grounds for Removal of Collective Trademarks

According to Section 68 of the Trademark Act, a collective trademark can be removed from the register for reasons such as:

• Non-usage as per Section 47 of the Act.
• Misleading the public.
• Being descriptive in nature, as defined under Section 36.

Read Meanwhile: Frequently Asked Questions About Trademark Registration

Legal Action in Case of Infringement

If a collective trademark is infringed, the registered proprietor can file a lawsuit under Section 67 of the Trademark Act, 1999. The court may take into account the damages caused to all authorized users and impose penalties to compensate for the losses.

Benefits of Collective Trademarks

Collective trademarks offer several advantages:

1. Exclusive Rights: Members gain the right to use the trademark, ensuring exclusivity.
2. Brand Reputation: Enhances the goodwill and credibility of the organization.
3. Quality Assurance: Indicates the value and uniqueness of products or services.
4. Protection Against Infringement: Safeguards the interests of the organization and its members.
5. International Recognition: Helps in gaining global acceptance and demand.

Documents Required for Filing a Collective Trademark

Applicants must provide the following documents to file a trademark application:

• Proof of the applicant’s name, address, and nationality.
• Details of the organization or partnership, including incorporation certificates.
• A list of goods or services for trademark registration.
• Evidence of prior trademark applications in other countries, if applicable.
• Proof of usage, such as advertisements or invoices.
• A notarized affidavit confirming usage of the mark.

Conclusion

Collective trademarks are an essential tool for associations and organizations, enabling them to safeguard their identity and quality standards. By representing the collective efforts of a group, these marks create a trusted image in the eyes of consumers. Understanding the nuances of collective trademarks, from filing conditions to benefits, ensures compliance with legal requirements and maximizes their value for organizations.

Check your trademark on the Register

In India, the rise of entrepreneurial ventures and the growing awareness of intellectual property rights have significantly boosted trademark registrations. With an increasing number of startups and One Person Companies (OPCs) entering the market, protecting unique brand identities through trademark registration has become essential. This guide outlines the step-by-step process of registering a trademark for an OPC in India, its benefits, associated costs, and tips for a seamless experience.

Key Trends Driving Trademark Registration in India

Emerging Startups and OPCs: India’s startup ecosystem has witnessed rapid growth, with entrepreneurs recognizing the importance of safeguarding their brand identity. Many OPCs are now actively registering trademarks to maintain a competitive edge.

Streamlined Legal Processes: The Indian government has simplified the trademark registration process by reducing timelines and digitizing applications, making it more accessible for small businesses and OPCs.

Technological Advancements: The integration of AI in examining trademarks and automating processes has expedited the registration workflow while minimizing errors.

Improved Global IP Index Ranking: India’s enhanced position on the Global Intellectual Property Index underscores the country’s emphasis on intellectual property rights, encouraging businesses to secure their trademarks.

Step-by-Step Guide to Trademark Registration for an OPC

Choose a Unique Trademark

Selecting a distinctive trademark is the first and most crucial step. Ensure that your trademark:

1. Represents your brand effectively.
2. Is not generic or overly descriptive.
3. Has no conflicts with existing trademarks (you can verify this on the IP India website).

Example: An OPC named “Eco Growth Innovations Pvt. Ltd.” plans to trademark its tagline “Sustain the Future.” Before proceeding, the company must confirm that the tagline is unique and unregistered.

Identify the Relevant Class

Trademarks are categorized into 45 classes based on the nature of goods or services. Identifying the appropriate class for your business is essential.

Examples:

1. Class 9: Software or technology-related services.
2. Class 25: Clothing or fashion products.

For instance, if “Eco Growth Innovations Pvt. Ltd.” offers eco-friendly technology solutions, it should register under Class 9.

Conduct a Trademark Search

Perform a comprehensive search on the IP India website to ensure the chosen trademark is not already registered or pending approval. This step is critical to avoid potential disputes.

File the Application

Submit the trademark application (Form TM-A) through the IP India online portal or at the Trademark Registry Office. Provide key details such as:

1. Applicant’s name and address.
2. Date of application.
3. Relevant class of goods/services.
4. Applicant Name: Eco Growth Innovations Pvt. Ltd.
5. Address: 123 Green Street, Bengaluru, Karnataka.
6. Class Applied For: Class 9.
7. Date: December 10, 2023.

Examination by the Trademark Registrar

The Registrar examines the application for compliance. If any discrepancies or conflicts are identified, an Examination Report is issued, requiring a response within 30 days.

Publication in the Trademark Journal

Once approved, the trademark is published in the Trademark Journal, inviting objections from the public. If no objections are raised within four months, the application proceeds to the next stage.

Receive the Registration Certificate

If there are no objections, the trademark is officially registered, and the applicant receives a Trademark Registration Certificate. This grants the OPC exclusive rights to the trademark.

1. Costs Involved in Trademark Registration
2. Government Fees:
3. Individual/OPC: Rs. 4,500 (online) / Rs. 5,000 (offline).
4. Corporates: Rs. 9,000.
5. Professional Charges: Additional fees may apply if hiring a trademark attorney.

Benefits of Trademark Registration for OPCs

1. Stronger Market Position: A registered trademark helps establish a unique identity, differentiating the OPC in a competitive market.
2. Customer Trust and Loyalty: A recognizable and protected brand fosters consumer confidence and loyalty.
3. Enhanced Revenue Potential: Trademarked products or services often command premium pricing.
4. Investment Opportunities: Investors are more inclined to support businesses with trademark protection, perceiving them as low-risk ventures.

Challenges in Trademark Registration

1. Lengthy Process: The registration process can take 8–12 months.
2. Objections: Third-party objections may delay approval.
3. Renewal Requirements: Registered trademarks must be renewed every 10 years to maintain protection.

Tips for Smooth Trademark Registration

1. Hire Experts: Legal professionals can navigate complexities and prevent errors.
2. Choose Unique Marks: Avoid using generic or descriptive names.
3. Plan for Future Growth: If you plan to expand your offerings, register trademarks under multiple relevant classes.

Case Study: Nykaa’s Trademark Success

Company: NykaaTrademark: “Nykaa” (Class 3 for cosmetics)Impact: Nykaa’s trademark registration played a pivotal role in establishing it as a leading beauty brand. The protected brand identity also contributed to the company’s IPO success, illustrating how trademarks can drive corporate growth.

Frequently Asked Questions (FAQs)

Can an OPC register multiple trademarks?
Yes, an OPC can register multiple trademarks for different products or services under the relevant classes.

What is the validity of a registered trademark?
A registered trademark is valid for 10 years and can be renewed indefinitely.

Can trademarks be transferred?
Yes, trademarks can be transferred or assigned through legal agreements.

Is trademark registration mandatory for an OPC?
No, but it is highly recommended for legal protection and brand building.

How long does the trademark registration process take?
Typically, it takes 8–12 months, depending on approvals and objections.

Can applications be filed online?
Yes, applications can be filed online via the IP India portal.

Read Further: Frequently Asked Questions About Trademark Registration

Conclusion

Securing a trademark is a strategic investment for OPCs aiming to protect their brand, build credibility, and unlock growth opportunities. With the growing importance of intellectual property rights in India, trademark registration is more relevant than ever for ensuring long-term success.

Check your trademark on the Register.

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In a significant ruling, the Madras High Court upheld Lenovo’s exclusive rights over the “THINK” family of trademarks, ordering the cancellation of the respondent company’s “THINBOOK” trademark registration. Justice Abdul Quddhose emphasized that Lenovo’s long-standing usage and widespread recognition of the “THINK” branding have established its distinctiveness, making it a well-known mark in the industry. The court concluded that the respondent company’s use of a deceptively similar mark could lead to public confusion and harm Lenovo’s brand reputation.

Lenovo’s Petition to Protect Its “THINK” Trademark

Lenovo initiated legal proceedings to seek the removal of the “THINBOOK” trademark, arguing that its usage was infringing upon Lenovo’s rights. The tech giant highlighted that it has been using the “THINK” family of marks since 1992 for various products, including laptops, notebooks, and tablets. Over the decades, the “THINK” branding has become synonymous with Lenovo, securing widespread recognition and goodwill in the global market.

The company contended that its trademarks are protected under Section 2(1)(zg) of the Indian Trademarks Act, which recognizes well-known marks. Lenovo further asserted that it held prior rights over the trademark, which the respondent’s “THINBOOK” branding was deceptively similar to, creating a risk of confusion among consumers.

Allegations of Registry Oversight

Lenovo criticized the Trademark Registry for granting the “THINBOOK” registration to the respondent company without due diligence. According to Lenovo, the Registry failed to account for Lenovo’s prior usage and reputation of the “THINK” family of marks, thus violating the provisions of Section 11(1) of the Trademarks Act. This section prohibits the registration of trademarks that are identical or similar to well-known marks if such use is likely to cause confusion.

Lenovo argued that the approval of the “THINBOOK” trademark was a result of non-application of mind by the Registry. The company claimed that this oversight directly infringed upon Lenovo’s rights and undermined the protections granted to well-known trademarks.

Respondent’s Defense

The Trademark Registry defended its decision, asserting that the “THINBOOK” registration had been granted after following all the necessary procedures outlined in the Trademarks Act. The respondent company also claimed that there was no deliberate attempt to misrepresent or deceive the public with its branding.

However, the court found Lenovo’s arguments to be more compelling, citing the company’s established reputation and the potential for consumer confusion due to the similarity of the marks.

Court’s Observations and Verdict

After examining the evidence, the court concluded that Lenovo’s “THINK” branding had gained significant recognition and goodwill, both in India and internationally. Justice Abdul Quddhose noted that the respondent company’s “THINBOOK” mark was deceptively similar and that its registration violated the provisions of the Trademarks Act.

The court also observed that the Registry had erred in granting the trademark to the respondent company, as it failed to adequately consider Lenovo’s prior usage and the potential for public confusion.

Based on these findings, the court directed the second respondent—the Trademark Registry—to cancel the registration of the “THINBOOK” trademark (bearing No. 3558396 under Class 9). The court ordered the removal of the mark from the Register of Trademarks within four weeks of receiving the court’s order.

Read Meanwhile: Frequently Asked Questions About Trademark Registration

Key Takeaways

This judgment underscores the importance of protecting well-known trademarks and the responsibilities of the Trademark Registry to ensure that registrations are granted in compliance with the law. It also highlights how businesses with established trademarks can seek legal remedies to safeguard their brand identity against infringing or deceptively similar marks.

Lenovo’s victory in this case not only reinforces its rights over the “THINK” family of marks but also sets a precedent for the protection of intellectual property in India’s competitive market. The ruling sends a clear message to companies attempting to adopt similar trademarks that infringe upon established brands, emphasizing the need for originality and compliance with trademark laws.

By successfully defending its trademark rights, Lenovo has reaffirmed its position as a global leader in the tech industry, ensuring that its “THINK” branding remains distinctive and free from unauthorized use. The case also serves as a cautionary tale for businesses and emphasizes the critical role of due diligence in trademark registration and brand protection strategies.

This landmark decision by the Madras High Court not only vindicates Lenovo’s stance but also reinforces the legal framework protecting intellectual property rights in India.

Check your trademark on the Register.

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When building a business, one of the most critical decisions you’ll face is choosing the right trademark. A well-chosen trademark not only protects your brand legally but also solidifies its identity in the minds of consumers. As courts increasingly focus on the strength and distinctiveness of trademarks, selecting an appropriate one has become more important than ever.

In recent cases, the strength of a trademark has often determined the outcome of disputes. For instance, a case involving the use of the word “Imperial” for alcoholic beverages highlighted this principle. It was ruled that exclusivity could not be claimed over the term as it was widely used by manufacturers and carried a laudatory meaning. Such cases underscore how essential it is to choose a trademark that stands out in the market.

The High Stakes of Trademark Selection

Creating a brand is an expensive and time-intensive process. Companies invest millions in developing their brand identity, marketing strategies, and product recognition. Imagine the financial and reputational damage if a trademark is deemed non-exclusive or invalid. Such situations can render years of effort futile, forcing businesses to start over with a new identity.

This makes it imperative to consider not only the creative aspects of a trademark but also its legal strength and distinctiveness. A strong trademark ensures that your brand is well-protected and reduces the likelihood of disputes or legal complications down the line.

Understanding Trademarks: A Legal Perspective

The Indian Trademark Act, 1999, defines a trademark broadly. According to Section 2(1)(m), a trademark can be a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or a combination of colors. While this definition offers flexibility, Section 9 of the same Act imposes certain restrictions. For instance, a trademark must possess a distinctive character and must not directly describe the goods or services it represents.

However, the Act doesn’t explicitly define what makes a mark distinctive. For guidance, we can turn to the U.S. Trademark Law, particularly the landmark case of Abercrombie & Fitch Co. v. Hunting World Inc., which provides a hierarchy of trademarks based on their distinctiveness.

The Abercrombie & Fitch Hierarchy of Distinctiveness

This classification system categorizes trademarks into five types, listed below in increasing order of distinctiveness:

1. Generic Marks
   Generic marks refer to a category or genus of products and lack distinctiveness. They are not eligible for trademark protection because they are too commonly used to represent a specific brand.
   Example: The term “Xerox” is often used generically for photocopying, even though it was originally a trademarked term.
2. Descriptive Marks
   Descriptive marks directly convey information about the quality, quantity, or characteristics of a product or service. They are only protectable if they acquire distinctiveness through extensive use.
   Example: “Café Coffee Day” describes a coffee shop chain, relying on acquired distinctiveness for protection.
3. Suggestive Marks
   Suggestive marks imply characteristics of a product or service but require a leap of imagination to connect the mark to its meaning. These marks are inherently distinctive and qualify for trademark protection.
   Example: “7-11” suggests a store’s operating hours (7 a.m. to 11 p.m.), requiring a degree of mental association.
4. Arbitrary Marks
   Arbitrary marks use common words in an unrelated context, making them highly distinctive. There is no logical connection between the mark and the goods or services it represents.
   Example: “Apple” for computers is an arbitrary use of a common word.
5. Fanciful Marks
   Fanciful marks are entirely invented or coined terms with no dictionary meaning. They are the most distinctive and receive the highest level of trademark protection.
   Example: “Kodak” is a coined term with no prior meaning, making it highly distinctive.

Read Meanwhile: Why Trademark Registration is Necessary in India?

Key Takeaways for Selecting a Trademark

To create a strong and legally protectable trademark, businesses should prioritize distinctiveness. A good trademark should not only be memorable and appealing but also satisfy legal requirements. Here are some actionable tips:

1. Avoid Generic Terms: Generic names can never serve as trademarks, no matter how popular they become.
2. Be Cautious with Descriptive Marks: If you choose a descriptive mark, be prepared to prove its acquired distinctiveness through prolonged and exclusive use.
3. Opt for Suggestive, Arbitrary, or Fanciful Marks: These categories offer the best combination of creativity and legal protection.
4. Conduct a Thorough Search: Before finalizing your trademark, conduct a comprehensive search to ensure it’s not already in use or too similar to an existing mark.
5. Seek Legal Expertise: Engage a trademark attorney to evaluate the strength and registrability of your chosen mark.

Balancing Creativity and Legal Principles

While creativity is essential in crafting a trademark that resonates with your audience, legal considerations are equally critical. A strong trademark should capture the essence of your brand while adhering to the principles of distinctiveness and exclusivity.

By understanding the nuances of trademark law and the importance of distinctiveness, businesses can protect their investments and build a brand that stands the test of time. So, whether you’re launching a new product or rebranding an existing one, make your trademark decision wisely—it could determine the future of your brand.

Check your trademark on the Register.

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The Delhi High Court recently issued an interim order to protect the rights of RKSV Securities India Pvt. Ltd., the parent company of the online trading platform Upstox. The order restrains unknown parties from misusing the company’s intellectual property, including trademarks, word marks, and copyrighted materials. This move underscores the judiciary’s role in safeguarding the integrity of digital platforms and protecting users from fraud.

Background of the Case

RKSV Securities India Pvt. Ltd., a prominent stockbroking firm in India, operates the Upstox platform, which facilitates trading, investment, and financial activities. These services are regulated by esteemed bodies like the Securities and Exchange Board of India (SEBI), Pension Fund Regulatory and Development Authority (PFRDA), and Insurance Regulatory and Development Authority (IRDAI).

The company has built a reputation for trust and transparency, supported by significant investments in branding and marketing. With a customer base exceeding one crore, Upstox has established itself as a reliable name in the financial sector. However, the brand’s success has also attracted malicious entities attempting to exploit its goodwill.

Allegations of Fraudulent Activities

The company alleged that unknown parties, referred to as “John Does,” were engaging in trademark violations, copyright infringement, and fraudulent impersonation. These entities allegedly created fake websites, domain names, and social media accounts to deceive users by offering false incentives related to stock trading and IPOs.

Complaints indicated that these fraudulent activities not only misused the Upstox brand but also resulted in monetary losses for unsuspecting customers. Domains linked to these violations were reportedly registered with companies such as Gname, BIZCN, and JUMING.

Court Observations and Interim Injunction

Justice Mini Pushkarna, after reviewing the evidence provided by RKSV, observed a strong case for granting an injunction. The court noted that unauthorized use of Upstox’s intellectual property was being used to deceive the public. It further highlighted that the absence of immediate action could lead to irreparable harm to the brand and its customers.

In her order, Justice Pushkarna stated, “The balance of convenience lies in favor of the plaintiff, as it stands to suffer significant losses without an injunction.”

Key Directives Issued by the Court

To curb these fraudulent practices, the court issued several important directives:

1. Domain Name Suspension: Registrars of the infringing domains were ordered to suspend these websites and disclose details of their registrants, including KYC and payment information.
2. Freezing Bank Accounts: Major banks, including SBI, HDFC Bank, and Indian Overseas Bank, were instructed to freeze accounts linked to the fraud and provide account holder details.
3. Social Media Action: Telegram was directed to suspend all groups, profiles, and channels associated with the fraudulent activities.
4. Copyright Protection: The defendants were prohibited from reproducing or publishing any copyrighted material, such as images associated with the Upstox brand.

Implications for Digital Safety

The court’s decision is a significant step toward combating intellectual property theft and online fraud. It highlights the importance of legal frameworks in protecting businesses and consumers in the digital age. Companies operating online platforms often face challenges from counterfeiters and scammers, making robust legal measures essential for safeguarding their reputation and user trust.

This case also serves as a reminder for users to exercise caution while engaging with online platforms. Verifying the authenticity of websites and social media channels is crucial to avoid falling prey to scams.

Moving Forward

The court has scheduled the next hearing for May 20, 2025, providing an opportunity for the defendants to respond to the allegations. Meanwhile, the interim injunction remains in place, offering immediate relief to RKSV and its customers.

Read Meanwhile: Sun Pharma’s RACIRAFT Vs JB Pharma’s RANRAFT

Conclusion

The Delhi High Court’s interim order against trademark and copyright violations reflects the judiciary’s commitment to protecting intellectual property and preventing digital fraud. By taking swift action, the court has not only safeguarded the interests of RKSV but also reinforced the importance of legal protections in the rapidly evolving digital landscape.

For businesses like Upstox, this decision underscores the need for continuous vigilance and investment in brand protection strategies. It also emphasizes the role of regulatory and legal mechanisms in maintaining trust and integrity in financial markets.

Check your trademark on the Register.

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1. What is a Trademark?

A trademark serves as a unique identifier for a brand, logo, or symbol. It can be a word, design, logo, tagline, packaging, or a combination of these elements. Trademarks help businesses distinguish their products or services from competitors and are exclusive to a single entity. When effectively used and promoted, a trademark can become a business’s most valuable asset.

It’s important to note that trademarks differ from trade names. While trade names may also act as trademarks, registering a company or business name under the Companies Act does not protect it from others using similar marks.

2. Benefits of Trademark Registration

• Legal ownership proof: Confirms ownership of the trademark.
• Business asset: Builds goodwill and strengthens your business identity.
• Enforcement rights: Provides legal tools to stop others from unauthorized usage.
• Transferable asset: Can be sold, licensed, or assigned.
• Nationwide coverage: Offers protection across India.

3. Why Register a Trademark if My Company Name is Already Registered?

While company, business, or domain name registrations provide legal recognition, they do not grant exclusive ownership rights. Trademark registration offers monopoly rights and safeguards your brand identity.

4. How to Check if a Trademark is Already Registered in India?

You can conduct a trademark search on the Indian Trademark Registry database to identify similar or identical marks. Visit the official portal: Indian Trade Mark Registry Search.

5. Trademark vs. Copyright for a Logo

Both trademark and copyright can protect logos but serve different purposes:

• Trademark: TM, ® Secures the brand name and logo representation.
• Copyright: © Offers exclusivity for the artistic design of the logo.

For comprehensive protection, securing both trademark and copyright registration is recommended.

6. Trademark Registration Validity

A trademark registration remains valid for 10 years from the application date. It can be renewed indefinitely by paying renewal fees every decade.

7. Trademark Registration Timeline

The process takes approximately 18–24 months for straightforward cases without objections or oppositions. However, the application number is issued within 1–2 days of submission.

8. Usage of the ® Symbol

You can use the ® symbol after your trademark registration is officially approved and the certificate is issued. Misusing the symbol before registration is a punishable offense. Until then, use the symbol to claim rights over your mark.

9. Trademark Application Status: “Send to Vienna Codification”

This status indicates the trademark includes a logo or figurative element, and the Vienna Code is being assigned. The Vienna Codification helps categorize and search trademarks with visual components.

10. Trademark Application Status: “Formalities Chk Pass”

This status confirms that basic requirements, like filing a POA or translation/transliteration, have been met. If requirements are incomplete, the status will reflect as “Formalities Chk Fail.”

11. Trademark Application Status: “Formalities Chk Fail”

This status arises from incomplete filings, such as missing POA or incorrect classification. Addressing these issues promptly is essential for the application to proceed.

12. Trademark Application Status: “Marked for Exam”

When this status appears, the application has been assigned to an examiner. The examiner evaluates its eligibility under trademark laws and issues an examination report.

13. Trademark Application Status: “Exam Report Issued” or “Accepted”

This status indicates the trademark is approved for publication in the Trade Marks Journal. If no objections arise, it moves to the final registration stages.

14. Trademark Application Status: “Objected”

Objections occur when the examiner raises concerns about registrability. Applicants must respond with a written reply within one month of receiving the examination report.

15. Trademark Application Status: “Advertised” or “Accepted & Advertised”

This status appears when the trademark is published in the Trade Marks Journal. During the four-month opposition period, third parties can challenge the application.

16. Trademark Application Status: “Opposed”

If opposed, the applicant must file a counter-statement within two months. Failure to do so results in abandonment of the application.

17. Trademark Application Status: “Send Back to EDP”

This status reflects data entry errors or document digitization issues. The EDP section rectifies these problems before the application progresses.

18. Trademark Application Status: “Send to PRAS”

PRAS (Pre-Registration Amendment Section) handles amendments related to proprietor details, address, or goods specifications made before registration.

Read Further: Delhi High Court Grants IKEA Relief in Trademark Infringement Case

In the dynamic and competitive business environment of India, protecting your brand identity is more crucial than ever. A trademark serves as a distinctive symbol, word, phrase, logo, or design that sets your business apart from competitors. It represents your company’s reputation, quality, and goodwill in the market. However, merely using a unique identifier is not enough; registering your trademark is essential to safeguard it from infringement and unauthorized use. This article explores why trademark registration is necessary in India and the benefits it offers to businesses.

Understanding Trademarks

A trademark is a form of intellectual property that identifies and distinguishes a business’s products or services from those of others. It can include:

Logos and symbols (e.g., Nike’s swoosh or Apple’s logo)

Words and phrases (e.g., “Just Do It” by Nike)

Colors and sounds (e.g., the specific tune associated with a brand)

In India, trademarks are governed by the Trademarks Act, 1999, which provides a robust legal framework for their protection and enforcement.

Why Trademark Registration is Necessary

Legal Protection

A registered trademark grants the owner exclusive rights to use the mark for the goods or services it represents. It also provides legal grounds to sue anyone who uses it without permission. This is particularly critical in a market like India, where counterfeiting and brand imitation are prevalent.

Brand Recognition and Trust

Consumers often associate a trademark with a certain level of quality and trust. Registering your trademark enhances your brand’s credibility and recognition. It assures customers that your brand is authentic and reliable, building long-term loyalty.

Exclusive Rights

Trademark registration gives you the exclusive right to use the mark across India. It also prevents others from using similar marks that could confuse consumers. This exclusivity ensures your brand retains its unique identity.

Asset Creation

A registered trademark is an intangible asset that adds value to your business. It can be sold, licensed, or franchised, creating additional revenue streams. Investors and stakeholders also view a registered trademark as a sign of a business’s stability and market presence.

Deterrent Against Infringement

Once registered, your trademark is listed in the Trademarks Registry, making it easier for you to take action against infringers. It also acts as a deterrent, as potential infringers are less likely to misuse a registered trademark.

Global Expansion Opportunities

If you plan to expand your business internationally, a registered trademark in India can be used as a basis for registration in other countries under the Madrid Protocol. This simplifies the process of protecting your brand globally.

Protection Against Cybersquatting

In the digital age, trademarks are often used in domain names. Registering your trademark helps prevent cybersquatting—a practice where individuals register domain names similar to well-known trademarks to extort money or divert traffic.

The Trademark Registration Process in India

The process of trademark registration in India involves the following steps:

Trademark Search: Conduct a thorough search to ensure your desired mark is not already registered or in use.

Filing the Application: Submit an application with the required details, including the mark, its class, and a description of goods or services.

Examination: The Registrar examines the application to ensure it complies with the law and is unique.

Publication: If the application is accepted, it is published in the Trademark Journal for public objection.

Registration: If no objections or oppositions are raised, the trademark is registered, and a certificate is issued.

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Costs and Duration

The cost of trademark registration in India depends on various factors, including the type of applicant (individual, company, or MSME) and the number of classes in which the trademark is registered. Typically, the process takes 6-12 months if no objections are raised.

Conclusion

Trademark registration is not just a legal formality; it is a strategic investment in your brand’s future. In a market as vast and diverse as India, where competition is fierce, protecting your intellectual property is essential for long-term success. A registered trademark provides legal protection, enhances brand value, and opens doors to global markets. Whether you are a budding entrepreneur or an established business, securing your trademark is a vital step toward building a robust and reputable brand identity.

Summary

Trademark registration in India is vital for protecting a brand’s identity, ensuring exclusive usage rights, and deterring infringement. It enhances consumer trust, adds asset value, and facilitates global expansion. Governed by the Trademarks Act, of 1999, the process involves application filing, examination, and registration. Though it requires time and investment, the benefits far outweigh the costs, making it an essential step for businesses aiming to thrive in a competitive market.

Check your trademark on the Register.

The Delhi High Court recently examined whether the word ‘wow’ could be trademarked exclusively in a series of legal cases initiated by the popular Indian fast-food chain, Wow! Momo. The court’s decision has sparked widespread interest, as it touches upon the intersection of intellectual property law and the common use of generic words in the business domain.

The Dispute Between Wow! Momo and Wow Burger

In a notable case, the Delhi High Court declined a request by Wow! Momo for an injunction against Hong Kong-based Wow Burger. The Indian momo chain sought to prevent Wow Burger from operating in India, alleging trademark infringement. The dispute centers on using the word ‘wow,’ which Wow! Momo claims as an essential part of its trademark.

While presiding over the case, Justice Amit Bansal observed that ‘wow’ is a commonly used word in the restaurant industry and may be too generic to monopolize. The court expressed reservations about restraining a global brand like Wow Burger from using its trade name and has scheduled the matter for further hearing on January 31, 2025. Meanwhile, Wow Burger, which plans to expand operations across Delhi, Hyderabad, Mumbai, and Bangalore, has been directed to respond to the claims.

What Is a Trademark and Its Protection?

A trademark is a unique symbol, design, word, or phrase that identifies a business’s goods or services. According to the Trademarks Act of 1999, once a trademark is registered, its owner has exclusive rights over its use for a period of 10 years, renewable thereafter. Any unauthorized use of a registered trademark or a mark that is “deceptively similar” can lead to infringement claims.

Trademark infringement arises when the usage causes confusion among consumers, especially when two marks are visually, structurally, or phonetically similar. Courts can provide relief in such cases by issuing interim or permanent injunctions to stop the unauthorized use and awarding damages to the aggrieved party.

Previous Cases Filed by Wow! Momo

The ongoing dispute with Wow Burger is not an isolated instance for Wow! Momo. The brand has filed multiple trademark infringement cases against various businesses, with five significant cases still pending before the Delhi High Court. Three of these cases—against Wow Burger, Wow Mom Foods, and Speciality Restaurants Limited—are listed before Justice Bansal and are expected to be heard between late January and February 2025. Two other cases, involving Wow Calcutta and Wow Delicious, are listed before Justice Mini Pushkarna.

Read Meanwhile: Trademark Registration in Jaipur

Temporary Relief in Trademark Infringement Cases

In prior instances, the Delhi High Court has granted temporary relief to Wow! Momo in its trademark disputes. For example, on March 22, 2024, Justice Anish Dayal issued an interim injunction restraining a food outlet from using the name ‘WOW PUNJABI’ after Wow! Momo alleged that the outlet had adopted the dominant feature of its trademark, including a similar yellow background, font style, and the distinctive red-filled ‘O.’

The court’s interim order prohibited the defendant from using any goods or services under the trademarks ‘WOW,’ ‘WOW PUNJABI,’ or any other name deceptively similar to Wow! Momo’s registered trademark. Such ex-parte ad interim orders, issued in the absence of the defendant, provide temporary protection until the next hearing.

Similarly, on December 11, 2023, the court restrained Gurgaon-based Wow Delicious from using a mark similar to Wow! Momo’s trademark. Justice Pushkarna’s ex-parte order provided temporary relief to the plaintiff, and the matter is slated for further hearing on April 15, 2025.

Another case involved Franchisebyte, a website accused of misusing Wow! Momo’s trademark by advertising unauthorized franchises. In October 2023, Justice Hari Shankar ordered the website to stop using or copying the trademark. However, the protection granted was limited to the next hearing date, and the case remains unresolved.

Broader Implications of the Trademark Dispute

The current legal battle raises an important question: Can a commonly used word like ‘wow’ be trademarked exclusively by one business? Justice Bansal’s observations indicate that generic words frequently used in specific industries might not be eligible for exclusive trademark protection. While Wow! Momo has successfully obtained temporary injunctions in several cases, the broader question of whether it can claim monopoly rights over ‘wow’ remains unresolved.

Moreover, the Delhi High Court’s cautious approach highlights the balance between protecting intellectual property rights and ensuring fair competition. By denying an injunction against Wow Burger, the court has signaled that it may not support monopolization of generic terms, particularly when such terms are widely used in the industry.

Conclusion

The outcome of Wow! Momo’s cases against Wow Burger and other businesses will set a significant precedent in Indian trademark law. The court’s decisions will determine whether brands can claim exclusivity over commonly used words in their trademarks. As businesses increasingly rely on branding to differentiate themselves in competitive markets, the resolution of these cases will shape the boundaries of trademark protection and enforcement in India. For now, the dispute over the word ‘wow’ continues, with the next hearing scheduled in early 2025.

Source Trademark Act: ACT