Home » Relative grounds for refusal of Trademark Registration in India

Relative grounds for refusal of Trademark Registration in India

by registrationwala
trademark registration

A trademark cannot be registered if it identifies with an earlier trademark and the similarity of its goods/services is covered by the trademark registration. The Registrar cannot register a trademark if there exists a likelihood of confusion on the part of the general public, which includes the likelihood of an association with the earlier Logo.

Different Trademark Proprietorship

The Registrar cannot register a trademark identical to or similar to an earlier trademark. The Registrar also cannot register for goods or services that are not similar to those trademarks for which it registers for the earlier Logo in the name of a different trademark proprietor. Such a trademark cannot be registered if or to the extent the earlier Logo is a well-known trademark in India. Also, using the later Logo without due cause would take advantage of the distinctive character and fame of the earlier Trademark.

Legal Prohibitions in Trademark Registration

The Registrar cannot register a trademark if its use in India if the Law prevents it in any one of the following incidences:

  • Under any law or particular Law passing off protecting an unregistered trademark logo used in the course of trade
  • Under the Law of Copyright


One cannot prevent the registration of a trademark where the proprietor of the earlier Logo or other earlier rights consents to the trademark registration. In such a case, the Registrar can register the mark under exceptional circumstances.

Also Read: Import License in India

What is an Earlier Trademark in Trademark Registration?

An earlier Trademark can be one of the following:

A trademark or an application under section 18 bearing any one of the following:

  • Date of filing
  • International Registration
  • Convention Application

The Registrar mentioned all of these in section 154, which has a date of application earlier than that of the Logo in question, also taking account of the priorities in respect of the trademarks.

On the date of the registration application of the Trademark or the priority in respect of the registration application, the Registrar entitles the Trademark to security and protection as a well-known trademark.

Objections in Opposition Proceedings

The Registrar cannot register a trademark on the grounds specified in sub-sections  2 and 3. Unless objection on any of those relative grounds is raised in trademark opposition proceedings by the proprietor of the earlier Trademark.

Also Read: RBI-issued regulations for running a P2P Lending Platform

Brand Determination by the Registrar for Trademark Registration

The Registrar can determine whether a brand is a well-known brand. But he must consider the relevance of determining a logo as a well-known trademark logo, including the following:

(i) Recognition of the Trademark in the relevant section of the general public. This includes knowledge of the country obtained from promoting the trademark logo.

(ii) Duration, range, and geographical area of any use of the Trademark logo

(iii) Duration, range, and geographical area of promotion of the Logo, including the following:

  • Advertising
  • Publicity
  • Presentation

at the exhibitions of the goods or services to which the Trademark applies.

(iv) the Timeline and geographical area of any registration or application for that brand logo registration. This must be  under the Trademark Act to the extent that they reflect the recognition of the concerned Trademark

(v) Record of successful enforcement of the rights in that Logo. It is, in particular, to the extent to which the Logo has been recognized as a well-known brand symbol by the Registrar under that record.

Related Posts

Leave a Comment