Registrability of trademarks – Trademark Registration in Tirupur

Registrability of Trademarks -Legislative Approach

The legislative intent regarding registrability of marks is to be gathered from the combined reading of the preamble, definition of “trademark”, “mark” and sections 9, 11, 12, 13 and 14. The definitions of “mark” and “trademark” are quite comprehensive. To constitute a trademark, it should be both-

  1. a mark capable of being represented graphically; and
  2. capable of distinguishing the goods or services of one person from those of others.


The definitions of “mark” and “trademark” are intended to be interpreted broadly. It does not, for example, exclude the possibility of even sounds being considered a trademark, provided they are represented graphically and meets the stipulation of capacity to distinguish. The definition would appear to exclude only “smell” marks, which may not be capable of graphic representation for the purpose of being put on the Register of Trademarks. However, graphic representation of hologram marks on paper form, may satisfy the definition of “trademark”.

Article 2 of the Trademarks Law Treaty makes the Treaty applicable to marks consisting of visible signs and explicitly declares that it “shall not apply to hologram marks and to marks not consisting of visible signs, in particular, sound marks and or olfactory marks”.

The TRIPS agreement mandates that “any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.” It will be relevant to state Britain’s approach in this matter as spelt out in the White Paper on the Reform of Trademarks Law (1990). “The test for registrability under the new law will, in general, be similar to that which applies at present to trademark registration in Part B of the Register. A mark will have to be capable of distinguishing the goods or services of its proprietor. In some respects, however, the test will be eased. At present, it is possible for it to be established beyond doubt that a particular trademark is distinctive in fact and yet for it to be held in law to be not capable of distinguishing. Examples are geographical names and laudatory epithets. This position has been described as unattractive, but the Registry and the Courts have considered themselves bound by a long history of case law, much of it dating from a period in which trading conditions were very different from today. The Government intends to take the opportunity offered by the new law to clarify the position so that any trademark which is demonstrated to be distinctive in fact will, in future, be regarded as distinctive in law and therefore, registrable. In some cases of course, the applicant may have an uphill task in demonstrating, for example, that a common word or name has become distinctive of his goods or services in the mind of the purchasing public, but if he succeeds, then he will be entitled to protect his mark by trademark registration“. The Trademarks Act, 1999 also proceeds on the same lines to keep the substantive law in harmony with the international trend.

General propositions


It is obvious that the provisions of the new Act will apply to all applications for registration of trademarks filed after the commencement of the Act. In terms of section 159(3), the Act will also apply to any application for trademark registration pending at the commencement of the Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof. It is to be noted that by virtue of sub-section (2) of Section 159, the provisions of the Act will apply to all trademarks registered under the earlier laws, so that the validity of registration may become subject to scrutiny under the relevant provisions of the new law. A trademark is not an essay. It is not a thing that it is necessary people should read and construe. It is no doubt important to protect fair-trading but it is at least as important to prevent the acquisition of a monopoly in matters that are common to everyone. In all cases of trademark, no doubt, the court has to judge on the facts before it and the decision in another case, based on the facts of that case, can be of little value in arriving at a conclusion on the facts of the particular case before the court. But the principles laid down as to the appreciation of the facts are of the same importance and of the same value in all these cases. Trademarks are the only means by which the manufacturer and the merchant are enabled to inspire and retain public confidence in the quality and integrity of things made and sold, and the only means by which the public is protected against frauds and impositions of the crafty and designing who are always alert to appropriate to themselves the fruits of the reputation of others. It is correct to say that there is no exclusive ownership of the symbols which constitute a trademark  registration apart from the use or application of them; but the word “trademark” is a designation of these marks or symbols as and when applied to a vendible commodity and the exclusive right to make such use or application is rightly called property.

The right which a manufacturer has in his trademark registrability is the exclusive right to use it for the purpose of indicating when, or by whom or at which manufactory; the article to which it is affixed was manufactured. If the word “property” is aptly used with reference to copyright, I see no reason for doubting that it may with equal propriety be a trademark. There can be no right of exclusive ownership of any symbols or marks universally in abstract. The use of a mark must be as a trademark to indicate trade origin sees Hospital World TM.

It has never been the law that the mark must be universally recognized as distinctive. If it were otherwise, the rights of traders would be dependent on the views of the ignorant and illiterate. What is necessary, in the words of the Act and the directive, is that the word or mark should “distinguish the goods or services of one undertaking from those of other undertakings”, so as to “to guarantee the trademark registration as an indication of origin.” If to a real or hypothetical individual a word or mark is ambiguous in the sense that it may be distinctive or descriptive, then it cannot comply with the requirements of the Act for it will not provide the necessary distinction or guarantee. It is in that sense that a common or descriptive meaning must be placed.

Graphic representation of the mark:


For registrability, the trade mark must first, be capable of being represented graphically and, second, capable of distinguishing the goods or services of one person from those of others. The graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. Such an interpretation is required to allow for the sound operation of the trademark registration system. First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators. Look Sieckmann versus Duetsches Patent Und Markenamt, where the Court of Justice of European Court held that olfactory marks (smell marks) are not considered to be capable of being represented graphically.

Types of marks, which may be registrable


For purpose of registrability, therefore, the definition of trademark would seem to be wide enough to cover any of the following elements within its ambit, namely-

  1. Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
  2. Invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
  3. Letters or Numerals or any combination thereof,
  4. Devices, including fancy devices or symbols
  5. Monograms
  6. Combination of colors or even a single color in combination with a word or device
  7. Shapes of goods or their packaging
  8. Marks constituting a 3-dimensional sign
  9. Sound marks when represented in conventional notation or described in words for being graphically represented.

The requisite for registrability of the mark is thus apparent from the definition of the expression “trade mark” contained in section 2(1)(zb), read with section 9, which sets out the absolute grounds for refusal of trademark registration, namely, objections arising out of the mark itself or the use of the mark being against public interest or being contrary to the specified law. In addition, the objection to the mark may also arise under section 11, which sets out the ‘relative grounds’ based on prior third party rights.

In order to be registrability, briefly the mark shall be-

  • Capable of being represented graphically
  • Capable of distinguishing the goods or services of one person from those of others
  • Used or proposed to be used in relation to the goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have in the right to use the mark, with or without the identity of that person. For more clarification about Trademark Registration in Tirupur, kindly visit our site and feel free to contact us.. Thanks for reading!!!

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