The Trade Marks Act, 1999: Insights into Essential Sections on Registration, Infringement, and Remedies

ABSTRACT
This article provides a comprehensive analysis of the Trade Marks Act, 1999, focusing on its
pivotal provisions and their implications for trademark protection in India. Grounded in the
definition of a trademark under Section 2(1)(zb), the Act encompasses an expansive framework
safeguarding the identity and distinctiveness of goods and services. The discussion highlights
critical sections, including Sections 9, 11, and 12, which establish grounds for the registration
and coexistence of trademarks, and Sections 18, 27, and 29, which delineate procedural and
substantive aspects of trademark registration and infringement. The article also examines
Sections 134 and 135, addressing jurisdictional considerations and remedies for trademark
disputes.
Enriched with notable judicial interpretations, such as Tata Sons Ltd. v. Manu Sharma and
Coca Cola Company v. Bisleri International Pvt. Ltd., this analysis underscores the interplay
between statutory provisions and commercial realities. Emphasizing the role of trademarks in
fostering consumer trust and market competitiveness, the paper concludes with reflections on
the Act’s enduring relevance in the Indian legal landscape. This exploration not only highlights
the efficacy of the existing legal framework but also underscores its adaptability in addressing
emerging challenges in intellectual property rights.

1. INTRODUCTION
   The Trade Marks Act, 19991, is a cornerstone of intellectual property legislation in India,
   designed to protect trademarks, ensure their distinctiveness, and uphold the rights of
   proprietors. Trademarks have a long history, with their roots traced back to ancient civilizations
   where craftsmen used unique symbols to identify their creations. In modern times, trademarks
   have evolved into vital commercial tools that build brand identity and foster consumer trust.
   According to Section 2(1)(zb)2 of the Act, a trademark is defined as a mark capable of being
   graphically represented and distinguishing the goods or services of one person from those of
   others. This broad definition includes shapes, colors, packaging, and any combination thereof,
   emphasizing the importance of a trademark in identifying the source and quality of goods or
   services. This article delves into crucial sections of the Act—namely Sections 9, 11, 12, 18, 27,
   29, 134, and 135—and highlights notable judicial decisions that have shaped its interpretation.

2. Absolute Grounds for Refusal of Registration (Section 9)
   Section 93 outlines the absolute grounds on which a trademark application may be refused. A
   trademark is deemed unregistrable if:
    It lacks distinctiveness and cannot distinguish the applicant’s goods or services from
   others.
    It solely consists of descriptive marks indicating the type, quality, or geographical
   origin of the goods or services.
    It has become customary in the industry or common language.
   Case Reference: In Tata Sons Ltd. v. Manu Sharma (2014)4, the court emphasized the
   necessity of a trademark’s distinctiveness for it to qualify for registration under Section 9,
   rejecting generic terms as trademarks.
3. Relative Grounds for Refusal of Registration (Section 11)5
   Section 11 prevents the registration of trademarks that are:
    Identical or confusingly similar to existing trademarks.
    Likely to harm the reputation or distinctiveness of a well-known trademark.
   The Registrar considers earlier trademarks, public confusion, and potential damage to an
   established trademark’s reputation when evaluating applications.
   Case Reference: The Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta (1963)6
   applied the “likelihood of confusion” test to determine whether trademarks were similar.
4. Honest Concurrent Use (Section 12)
   Under Section 12, identical or similar trademarks may be registered for different proprietors
   in cases of honest concurrent use. Factors such as the duration and nature of use and
   potential consumer confusion are considered before approval.
   Case Reference: Goenka Institute of Education and Research v. Anjani Kumar Goenka
   (2009)8 established that trademarks could coexist if they were used independently and
   honestly over time.
5. Application for Registration (Section 18)
   3The Trade Marks Act, No. 47 of 1999, § 9 (India)
   4Tata Sons Ltd. v. Manu Sharma, (2014) 57 PTC 129 (Del.).
   5The Trade Marks Act, No. 47 of 1999, § 11 (India).
   6Amritdhara Pharmacy v. Satya Deo Gupta, (1963) 1 SCR 353 (SC).
   7The Trade Marks Act, No. 47 of 1999, § 12 (India).
   8Goenka Institute of Education and Research v. Anjani Kumar Goenka, (2009) 2 SCC 574 (India).

Section 189 provides the procedure for applying for trademark registration. Applicants
must:
 Submit a written application claiming proprietorship of the trademark.
 Specify the classes of goods or services the trademark applies to.
The Registrar has the authority to accept, refuse, or impose conditions on applications,
recording reasons for any refusal.

6. No Action for Unregistered Marks (Section 27)
   Section 2710 precludes infringement suits for unregistered trademarks but does not bar
   passing off actions, which protect the goodwill associated with an unregistered trademark.
   Case Reference: In Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories
   (196511), the court ruled that passing off protects the goodwill of unregistered trademarks
   from misrepresentation.
7. Infringement of Registered Trademarks (Section 29)
   Section 2912 defines infringement as the unauthorized use of a registered trademark in a
   manner likely to confuse or exploit its reputation. Infringement includes:
    Using identical or deceptively similar marks for similar goods or services.
    Exploiting the trademark’s reputation for unrelated goods or services.
   Case Reference: Coca Cola Company v. Bisleri International Pvt. Ltd. (2009)13 reaffirmed
   the principle that trademark reputation must be protected across jurisdictions.
8. Jurisdiction in Trademark Disputes (Section 134)
   Section 13414 mandates that trademark infringement or passing off suits must be filed in a
   District Court with jurisdiction over the plaintiff’s residence, business, or place of work.
9. Remedies in Trademark Cases (Section 135)

9 The Trade Marks Act, No. 47 of 1999, § 18 (India).
10 The Trade Marks Act, No. 47 of 1999, § 27 (India).
11 Durga Dutt Sharma v. Navaratna Pharm. Labs., (1965) 1 SCR 737 (SC).
12 The Trade Marks Act, No. 47 of 1999, § 29 (India).
13 Coca Cola Co. v. Bisleri Int’l Pvt. Ltd., (2009) 157 (2009) DLT 405 (Del.).
14 The Trade Marks Act, No. 47 of 1999, § 134 (India).

Section 13515 specifies the remedies available in trademark infringement or passing off
cases, which include:
 Permanent and temporary injunctions.
 Damages or an account of profits.
 Delivery of infringing goods or marks for destruction.
Conclusion
The Trade Marks Act, 1999, exemplifies India’s commitment to creating a robust
framework for the protection of intellectual property. By addressing registration,
enforcement, and remedies, the Act ensures that trademarks remain a vital tool for
fostering business growth and consumer confidence. Its provisions, supported by
landmark judicial decisions, highlight the delicate balance between protecting
proprietary rights and serving public interest. As commerce evolves and challenges
emerge, the Act’s adaptability and comprehensive nature position it as a cornerstone of
intellectual property law in India, safeguarding both innovation and fair competition for
years to come.