What the Trade Marks Act 1999 Really Requires for Your Brand

Legal basis: Trade Marks Act, 1999 (Act No. 47 of 1999), Sections 9, 11, 18, 21, 25, 47, and 103; Trade Marks Rules, 2017 (GSR 238(E), 6 March 2017) — Effective: ongoing. Source: https://ipindia.gov.in/tm-act-1999. Last updated: September 2026.

A Bengaluru‑based D2C startup incorporated GreenHarvest Pvt Ltd with the MCA, printed “Registered” on every label, and spent two years building a retail channel. The Trade Marks Registry then issued a 15‑page examination report refusing the mark under Section 9(1)(b) because “GreenHarvest” merely describes a characteristic of its organic produce. The filing fee is lost, and the brand must be rebuilt.

Key point: Company registration under the Companies Act does not grant trademark rights; you must satisfy the Trade Marks Act’s absolute and relative grounds before a mark can be registered.

What the law actually requires

Section 9 – Absolute grounds for refusal

Devoid of distinctive character – The mark must be able to distinguish your goods/services from others. Single letters, plain geometric shapes, or generic terms that consumers associate with a product category fail this test.

Descriptive – Marks that merely describe the kind, quality, quantity, purpose, value, geographical origin, or any other characteristic of the goods/services are barred (Section 9(1)(b)). Examples: “COLD BREW” for coffee, “QUICK COURIER” for logistics, “MUMBAI SPICE” for a restaurant.

Customary in language or trade – Generic terms that have become standard usage in the sector cannot be monopolised.

Acquired distinctiveness exception – If the mark has, before the filing date, acquired a secondary meaning through extensive use, it may be registered despite being descriptive. Evidence such as advertising spend, sales data, and consumer surveys is essential.

Section 9(2) also bars marks that are deceptive, likely to offend religious sentiments, scandalous, or prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950.

Section 9(3) prevents registration of shapes that are dictated by the nature of the goods, are necessary to achieve a technical result, or give substantial value to the goods.

Section 11 – Relative grounds for refusal

Conflict with an earlier mark – If the proposed mark is identical or similar to an earlier registered, pending, or well‑known mark for identical or similar goods/services, the Registrar will refuse registration (Section 11(1)). A comprehensive trademark search is therefore the first practical step.

Well‑known marks – Even for unrelated classes, a new mark that takes unfair advantage of or harms the reputation of a well‑known mark is refused (Section 11(2)).

Common‑law rights – Unregistered marks that have built goodwill can block a later application under the law of passing‑off (Section 11(3)).

Practical implications for founders

• Government fees are non‑refundable. Under the First Schedule of the Trade Marks Rules 2017, filing Form TM‑A costs ₹4,500 per class for individuals, DPIIT‑recognised startups, and Udyam‑registered MSMEs filing online, and ₹9,000 per class for other companies and LLPs. A three‑class filing therefore costs ₹27,000 with no refund on a Section 9 or Section 11 refusal.
• Criminal liability for infringement – Section 103 provides for imprisonment of six months to three years and a fine of ₹50,000 to ₹2,00,000. Repeat offences attract higher penalties (Section 105).
• No registration = no statutory presumption. Without registration you can only rely on a passing‑off action, which is fact‑intensive and costly.
• Non‑use cancellation – A registered mark unused for five continuous years plus three months can be cancelled under Section 47.

Step‑by‑step: what to do

• Conduct a trademark search. Use the CGPDTM’s public search portal (https://tmrsearch.ipindia.gov.in) to look for identical, phonetically similar, and visually similar marks in every class you intend to file.
• Select the correct Nice Classification. India follows the international Nice Classification (45 classes). Choose all classes that cover current and foreseeable product/service lines.
• Run the Section 9 checklist. Verify that the mark is not purely descriptive, scandalous, or prohibited by the Emblems Act. If it is descriptive, gather evidence of acquired distinctiveness.
• File Form TM‑A online. Submit through the IP India e‑filing portal. The filing date becomes your priority date. Pay the applicable fee per class.
• Respond to the examination report (Section 18). You have one month (extendable) to file a written reply to any objections. A well‑drafted reply with supporting evidence can resolve the matter without a hearing.
• Publication and opposition (Section 21). Once cleared, the mark is advertised in the Trade Marks Journal. Any party may oppose within four months by filing Form TM‑O (₹2,700 per class).
• Registration and renewal. If no opposition succeeds, the Registrar issues a certificate. The registration lasts ten years from the filing date (Section 25) and can be renewed indefinitely for further ten‑year periods using Form TM‑R.
• Let HRA handle it for you. Our HRA team can manage the entire trademark search, filing, objection response, and renewal process for a flat‑fee, ensuring you stay on schedule and avoid costly re‑filings.

I'm CA Harun Raaj. If this affects your company's compliance calendar, reach out.

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