Chapter 4: The Trade Marks Act, 1999

Section 27: No action for infringement of unregistered trade mark

This is one of the most important sections in the entire Act. It defines the “WHY” of registering a trademark.

• Section 27(1):
  • What it says (Simple English): You cannot sue someone for “infringement” of your trademark if your trademark is not registered. The right to sue for “trademark infringement” is a specific legal power that is only granted by this Act to the owners of registered marks.
  • What it means (Real-world Example): You have been running “Honest Burgers” (unregistered) for 10 years. A new competitor opens “Honest Burgers” in the next town. You cannot file a lawsuit for “trademark infringement.” That legal option is simply not available to you.
• Section 27(2):
  • What it says (Simple English): This is the crucial exception. Just because you can’t sue for “infringement” (which is a statutory right), this Act does not take away your older, common law right to sue someone for “passing off.”
  • What it means (Real-world Example): For your “Honest Burgers” (unregistered), you can still sue the competitor for “passing off.”
  • “Infringement” vs. “Passing Off”:
    • Infringement (for registered marks): Is simple. You just have to show the court your Registration Certificate and show the other person’s mark is the same. Your ownership is already proven.
    • Passing Off (for unregistered marks): Is much harder. You must first prove to the court that you have a reputation and goodwill in the name “Honest Burgers.” Only after you prove that can you argue that the competitor is deceiving the public and damaging your reputation.

Section 28: Rights conferred by registration

This section explains the exact legal rights you get with your registration certificate.

• Section 28(1):
  • What it says (Simple English): A valid registration gives the registered proprietor (owner) the “exclusive right” to use that trademark in relation to the goods or services for which it is registered. It also gives them the right to “obtain relief” (i.e., sue for infringement).
  • What it means (Real-world Example): You register “AMUL” in Class 29 for “milk and dairy products.” You now have a legal monopoly on using “AMUL” for those products in all of India. Your registration certificate is your “title deed” to the brand, proving your ownership.
• Section 28(2):
  • What it says (Simple English): Your “exclusive right” is limited by any conditions and limitations that are entered on the register.
  • What it means (Real-world Example): You register “PUNJAB SWEETS” but the Registrar adds a limitation to your registration: “For sale in the state of Maharashtra only.” Your “exclusive right” is now limited to Maharashtra. You cannot use this registration to sue someone for “infringement” who is using “PUNJAB SWEETS” in Delhi.
• Section 28(3):
  • What it says (Simple English): If two or more people are both registered owners of identical (or similar) marks (e.g., from an “honest concurrent use” case under Sec 12), they cannot sue each other for infringement. But both of them have the full right to sue any third person (a new faker) who tries to use the mark.
  • What it means (Real-world Example): Following a legal case, Company A (North India) and Company B (South India) are both registered proprietors of the “STAR” brand. Company A cannot sue B, and B cannot sue A. But if a new Company C starts selling “STAR” products anywhere, both A and B have the legal right to sue Company C for infringement.

Section 29: Infringement of registered trade marks

This is the core “attack” section, defining all the ways someone can infringe your registered mark.

• Section 29(1):
  • What it says (Simple English): This is the classic, most direct form of infringement. You are infringing if you use a mark that is identical or deceptively similar to a registered trademark, on the exact same goods or services for which it is registered.
  • What it means (Real-world Example): “NIKE” is registered for “Footwear.” You start selling your own shoes under the brand “NIKE” or “NIKEY.” This is textbook infringement.
• Section 29(2):
  • What it says (Simple English): Infringement also occurs if the marks and goods/services are a “likelihood of confusion” mix-and-match:
  • (a) Identical Mark + Similar Goods: (e.g., Using “SONY” for laptops, when “SONY” is registered for televisions).
  • (b) Similar Mark + Identical/Similar Goods: (e.g., Using “SAMUL” for butter, when “AMUL” is registered for milk and dairy).
  • (c) Identical Mark + Identical Goods: (e.g., Using “NIKE” for shoes).
• What it means (Real-world Example): The law’s main goal is to stop public confusion. Any combination of “similar/identical mark” and “similar/identical goods” that is likely to cause confusion is infringement.
• Section 29(3):
  • What it says (Simple English): In a case of Identical Mark + Identical Goods (like 29(2)(c)), the court shall presume that it is likely to cause confusion.
  • What it means (Real-world Example): If you sue someone for selling fake “ROLEX” watches, you do not have to prove that the public is confused. The court automatically presumes confusion because the mark and goods are identical. This is a very powerful legal shortcut for brand owners.
• Section 29(4):
  • What it says (Simple English): This is the “dilution” rule. It applies to famous marks. A mark is infringed even if the goods are not similar, if:
    • (a) The infringing mark is identical or similar to the registered mark;
    • (b) The registered mark has a “reputation in India” (i.e., it’s well-known); AND
    • (c) The infringer’s use (without a good reason) takes unfair advantage of or is harmful to the distinctive character or reputation of the registered mark.
  • What it means (Real-world Example): “MERCEDES” has a reputation for luxury cars. You start selling “MERCEDES” brand chocolates. The goods are not similar. But you are infringing because you are taking unfair advantage of the luxury reputation built by the car company to sell your product.
• Section 29(5):
  • What it says (Simple English): A registered trademark is infringed if someone uses it as their “trade name” (company name) or part of their trade name, if their business deals in the same goods or services.
  • What it means (Real-world Example): “INFOSYS” is a registered trademark for IT services. You are not allowed to register a new company called “Infosys Web Solutions Pvt. Ltd.” Using “Infosys” in your company name is infringement.
• Section 29(6):
  • What it says (Simple English): This section clarifies what “use” of a mark means. It includes:
  • (a) Affixing it to goods or packaging (e.g., stitching a fake “Levi’s” tag on jeans).
  • (b) Offering for sale or stocking goods, or supplying services under the mark (e.g., running a restaurant called “Subway” without permission).
  • (c) Importing or exporting goods under the mark (e.g., importing a container of fake “Apple” iPhones).
  • (d) Using it on business papers or in advertising (e.g., printing “We are an authorized TITAN dealer” on your letterhead when you are not).
• Section 29(7):
  • What it says (Simple English): You are infringing if you apply a registered trademark to material intended for labeling or packaging (like labels, tags, boxes), knowing that you don’t have authorization.
  • What it means (Real-world Example): This targets the “middle-man.” Even if you don’t make the fake shoes, if you print 10,000 “Adidas” shoeboxes for counterfeiters, you are also guilty of infringement.
• Section 29(8):
  • What it says (Simple English): A registered trademark is infringed by advertising (like comparative advertising) if that ad:
    • (a) Takes unfair advantage of the mark’s reputation; OR
    • (b) Is detrimental to (harms) its distinctive character; OR
    • (c) Is against the reputation of the trade mark.
  • What it means (Real-world Example): An ad that says “Our ‘Sparkle’ detergent cleans better than ‘Tide'” is probably allowed. But an ad that says “Don’t use ‘Tide’ , it damages your clothes! Use ‘Sparkle’!” is against the reputation of the “Tide” mark and is infringement.
• Section 29(9):
  • What it says (Simple English): Infringement is not just visual. The “spoken use” of the words also counts.
  • What it means (Real-world Example): If you run a radio jingle that says, “Why go to McDonald’s? Come to our burger shop!”—the spoken use of the “McDonald’s” mark in that ad can be infringement.

Section 30: Limits on effect of registered trade mark

This is the core “defense” section. It lists all the situations where using someone else’s registered trademark is NOT considered infringement.

• Section 30(1):
  • What it says (Simple English): This is the “Nominative Fair Use” defense. You are allowed to use a registered trademark to identify the brand owner’s own goods or services, provided your use is:
    • (a) In accordance with “honest practices”; and
    • (b) Not taking unfair advantage of, or being harmful to, the mark’s reputation.
  • What it means (Real-world Example): A local car mechanic puts up a sign: “We Service MARUTI, HYUNDAI & TATA Cars.” He is using those registered trademarks, but it is not infringement. It is “honest practice” to simply state which cars he is able to repair. However, if his sign said, “The Official MARUTI Service Center,” that would be dishonest and would be infringement.
• Section 30(2):
  • What it says (Simple English): A registered mark is not infringed when:
  • (a) “Descriptive Fair Use”: A person is just using the word to indicate the kind, quality, quantity, intended purpose, value, or geographical origin of their own goods.
    • Example: Apple Computers owns the trademark “APPLE.” This does not stop a fruit seller from putting up a sign that says “Fresh, Delicious APPLES for sale.” The fruit seller is using the word descriptively, not as a brand.
  • (b) “Outside of Scope”: The mark is used in a way that is outside the “conditions or limitations” of the registration.
    • Example: A mark is registered with the limitation “for export only.” If you use that mark on products sold only in India, you are not infringing that specific registration.
  • (c) “Exhaustion / First Sale Doctrine”: The mark is used on genuine goods that the brand owner (or their licensee) already sold and put on the market.
    • Example: You buy a genuine “Harry Potter” book. After you read it, you sell it at a second-hand bookstall. The publisher (who owns the “Harry Potter” trademark) cannot sue you for infringement. Their right to control the sale of that specific copy was “exhausted” after they sold it the first time.
  • (d) “Spare Parts / Compatibility”: The mark is used to indicate that goods are spare parts for, or compatible with, the branded goods (and it’s reasonably necessary to do so).
    • Example: You sell unbranded ink cartridges. You are allowed to print on your box: “This cartridge is compatible with HP LaserJet Printer Model 1020.” You are using the “HP” trademark, but it is not infringement because it’s necessary to inform the customer what your product is for.
  • (e) “Co-existence”: The person using the mark is also a registered proprietor of it (as in the “honest concurrent use” cases under Sec 12).
    • Example: The “STAR” brand owner in South India is not infringing the “STAR” brand registration owned by the North India company.
• Section 30(3):
  • What it says (Simple English): This reinforces the “Exhaustion / First Sale” doctrine. Once genuine goods are “lawfully acquired” by someone and have been “put on the market” by the brand owner (or with their consent), the new owner can sell or deal in those goods without it being infringement.
  • What it means (Real-world Example): An authorized “SAMSUNG” dealer in Delhi (who “lawfully acquired” the phones) sells 100 genuine phones to a smaller shop in a rural town. Samsung cannot sue that smaller shop for infringement. The goods are genuine, and their right to control them was “exhausted” when they sold them to the main dealer.
• Section 30(4):
  • What it says (Simple English): This is the exception to the exception. The brand owner can stop the re-sale of their genuine goods if they have “legitimate reasons” to oppose it. In particular, this applies if the condition of the goods has been changed or impaired (i.e., damaged or tampered with) after they were put on the market.
  • What it means (Real-world Example): You buy 1,000 genuine “Parachute” coconut oil bottles . You then open them, dilute the contents with a cheaper oil, and re-seal them to sell. Parachute can sue you for infringement. Even though the bottles are genuine, your “impairment” of the product gives them a “legitimate reason” to stop you from damaging their reputation.

Section 31: Registration to be prima facie evidence of validity

This section explains the immediate legal advantage a registration certificate gives you in court.

• Section 31(1):
  • What it says (Simple English): In any legal proceeding (like an infringement lawsuit), the court will accept your registration certificate as “prima facie” evidence that your trademark is valid. “Prima facie” means “on the face of it.” This puts the burden of proof on the other party to prove your mark is invalid.
  • What it means (Real-world Example): You sue a counterfeiter for using your registered “ZEPHYR” logo. You walk into court and show your registration certificate. The judge starts from the position that your mark is 100% valid and you are the rightful owner. The counterfeiter can’t just say, “I don’t think his mark is valid.” They now have the difficult task of proving to the judge why your registration should be cancelled.
• Section 31(2):
  • What it says (Simple English): In a lawsuit, a defendant might try to cancel your registration by arguing it was “descriptive” (under Section 9) and shouldn’t have been registered. This rule states that such an argument will fail if you can prove that, through heavy use and advertising, your mark had already acquired distinctiveness by the date it was officially registered.
  • What it means (Real-world Example): You applied for “Priya’s Book Store” in 2018. At that time, it was arguably non-distinctive (a name + descriptive words). Your application is delayed for years. By the time it is finally registered in 2024, you have 50 stores and are famous. A competitor tries to cancel your registration, arguing it was “descriptive back in 2018.” This section allows you to defeat them by proving that by the date of registration (2024), the mark was no longer just descriptive; it had become distinctive of your brand.

Section 32: Protection of registration on ground of distinctiveness in certain cases

This section provides a powerful defense for a mark that becomes famous after it was registered.

• What it says (Simple English): Even if a trademark was registered in breach of Section 9 (meaning it was descriptive or non-distinctive, and the examiner made a mistake by allowing it), it cannot be declared invalid if it has, after registration, acquired a distinctive character through use.
• What it means (Real-world Example): You somehow manage to register the trademark “FRESH VEGETABLES” in 2020. This was a “breach” of Section 9(1)(b), as the mark is totally descriptive. For the next five years (2020-2025), you spend crores on advertising and create a huge, nationwide app-based delivery service. The public now associates the brand “FRESH VEGETABLES” exclusively with your company. In 2025, a competitor tries to cancel your registration. You can use this section to argue: “Yes, it was descriptive in 2020, but now, after 5 years of use, it has acquired distinctiveness.” This section saves an “improper” registration that has become famous through use.

Section 33: Effect of acquiescence

This is the “you snooze, you lose” rule of trademark law.

• Section 33(1):
  • What it says (Simple English): If you are the owner of an earlier trademark, and you become aware that a later person has registered a similar trademark, you must act. If you “acquiesce” (passively stand by and do nothing) for a continuous period of five years, you lose your right to:
    • (a) Apply to cancel the later mark’s registration; or
    • (b) Oppose the use of the later mark.
  • What it means (Real-world Example): You have owned “SHARMA SWEETS” (registered in 2010). A new company, “SHARMA’S DELIGHTS,” registers its mark in 2015. You know about them, you see their shops, but you decide they are too small to sue. You do nothing. Five years pass. By 2021, “SHARMA’S DELIGHTS” is a big brand. You cannot now try to cancel their 2015 registration or sue them for infringement. You acquiesced to their existence by staying silent for 5 years.
• Proviso to Section 33(1):
  • What it says (Simple English): The only exception is if the later mark was registered in “bad faith.” If the infringer was a copycat, this 5-year rule doesn’t protect them.
  • What it means (Real-world Example): Your ex-manager quits and deliberately registers “SHARMA’S DELIGHTS” knowing it will confuse your customers and steal your business. This is “bad faith.” Even if you wait 6, 7, or 10 years, you can still sue them and cancel their registration. The bad faith registration is never safe.
• Section 33(2):
  • What it says (Simple English): This rule cuts both ways. If you (the “SHARMA SWEETS” owner) have lost your right to sue them (because you waited 5 years), they also do not get the right to sue you.
  • What it means (Real-world Example): Because you acquiesced, “SHARMA’S DELIGHTS” is now safe from you. But this doesn’t mean they can now sue you (the original, earlier mark) and try to stop your business. The law forces a co-existence.

Section 34: Saving for vested rights

This section protects the rights of the “first user.” It is a cornerstone of trademark law.

• What it says (Simple English): A registered trademark cannot be used to stop someone who has been continuously using the same (or similar) mark since a date before the registered owner. The law protects the person with “prior use” (also called “vested rights”).
• The “prior date” is whichever isearlier:
  • (a) The date the registered owner first used the mark; OR
  • (b) The date the registered owner filed the application for the mark.
• What it means (Real-world Example):
  • You (a big company) file an application for “NATURE’S BASKET” on Jan 1, 2020, and get it registered.
  • However, a small, local shop owner has been continuously running “NATURE’S BASKET” (unregistered) in her city since 2015.
  • Because her use (2015) is prior to your registration date (2020), your registration gives you no right to stop her from using the name in her area. Her “vested rights” as the first user are protected.

Section 35: Saving for use of name, address or description of goods or services

This section outlines several “good faith” defenses. A trademark registration cannot be used to create an unreasonable monopoly on common language.

• What it says (Simple English): A trademark registration cannot stop anyone from the “bona fide” (honest) use of:
  1. Their own name: (e.g., a person’s full name).
  2. Their place of business name: (e.g., “Bikaner Sweets”).
  3. The name of their predecessor in business: (e.g., “Founded by Mr. Lal”).
  4. A description of the character or quality of their goods/services: (i.e., descriptive fair use).
• What it means (Real-world Example):
  1. Own Name: The “RELIANCE” group (registered mark) cannot sue a small mechanic named “Reliance Sharma” who opens a garage called “Reliance Sharma’s Auto Shop,” as long as he is using his own name honestly and not trying to look like the giant corporation.
  2. Bona Fide Description: You own the registered trademark “PERFECT” for blenders. You cannot sue a competitor who puts on their box, “Makes a perfect smoothie every time!” They are using the word honestly to describe the quality, not as a brand.

Section 36: Saving for words used as name or description of an article or substance or service

This is a very important section that deals with the risk of “genericide”—what happens when a brand name becomes so famous that the public starts using it as the generic name for the product itself (like “Thermos” for vacuum flasks or “Xerox” for photocopies).

• Section 36(1):
  • What it says (Simple English): Just because a word in your registered trademark (or the word that is your trademark) becomes the common name of an article or service, your registration doesn’t automatically become invalid.
  • What it means (Real-world Example): You have a registered trademark “CLEANO” for vacuum cleaners. If people start saying, “I’m going to buy a new cleano,” your trademark doesn’t just die. However, this section has a huge exception…
• Proviso to Section 36(1):
  • What it says (Simple English): Your registration will be challenged if it is proven that:
  • (a) There is a “well known and established use” of that word as the name of the article by other people in the trade (who aren’t connected to you); OR
  • (b) The article was once protected by a patent, that patent has been expired for two years or more, and the word is now the only practicable name for that article.
• What it means (Real-world Example):
  • (a) “Generic” Use: “Escalator” was once a brand name. But all other companies started using “escalator” as the name for their moving stairs. This established use by the trade meant it was no longer a valid trademark.
  • (b) “Patent” Expiry: An inventor creates a new drug, patents it, and registers the trademark “Aspirin.” The patent expires. For the next 2+ years, “Aspirin” is the only name anyone uses for the chemical compound. At that point, the word “Aspirin” can be challenged as generic, allowing other companies to sell the drug under the name “Aspirin.”
• Section 36(2):
  • What it says (Simple English): This details the consequences if the situations in the proviso (a or b) are proven:
  • (a) For Rectification (Cancellation): If the trademark consists solely of that word (e.g., your mark is just “ASPIRIN”), the registration will be deemed “an entry wrongly remaining on the register” and can be cancelled (rectified under Sec 57).
  • (b) For Other Legal Proceedings:
    • (i) If the mark is the word (e.g., “THERMOS”), all your exclusive rights to use that mark cease.
    • (ii) If the mark contains the word (e.g., “THERMOS Brand Flasks”), all your exclusive rights to use just that word part (“THERMOS”) cease.
  • What it means (Real-world Example): Once “Aspirin” becomes generic, Bayer (the original owner) loses all rights to stop other pharma companies from putting the word “Aspirin” on their bottles. Their registration for the word “Aspirin” is effectively dead.