The assumption worth testing
A firm has traded under a name for eleven years. It has a GST registration in that name, a shop-and-establishment licence in that name, a bank account, a signboard, invoices, and customers who know it by that name.
Someone else registers the same name as a trademark.
The firm’s owner is usually astonished to learn that none of the documents above is trademark protection. They are evidence of trading. Trademark law is a separate statutory system, and it has its own register.
What a trademark is
A trademark is a mark capable of distinguishing the goods or services of one person from those of others — a word, a device, a label, a shape, a combination. The point of it is origin: it tells a buyer where the thing came from.
Registration is made under the Trade Marks Act 1999, read with the Trade Marks Rules 2017, in respect of specified classes of goods or services. This is the part most often misunderstood. You do not register a name at large. You register a mark for specified goods or services, and protection is anchored to that specification.
The practical consequence is that a mark registered for coaching services does not, by that registration alone, cover the same word used on packaged sweets. Getting the class and the specification right at filing is the single most consequential decision in the process.
™ and ® — and why they are not interchangeable
™ is a claim. Anyone can put it beside a mark they are using or asserting. It signals a claim to trademark rights; it does not establish them, and it carries no statutory consequence of its own.
® signifies a mark registered on the register maintained under the Act. It follows registration; it does not create it.
The distinction is worth policing internally, because the wrong symbol on packaging is both inaccurate and unhelpful in later proceedings.
The two kinds of objection
An application is examined against two sets of grounds.
Absolute grounds — Section 9. These concern the mark in itself. Marks devoid of distinctive character; marks consisting exclusively of indications serving to designate kind, quality, quantity, intended purpose, values or geographical origin; marks that have become customary in the trade; and marks that would deceive or cause confusion.
This is where descriptive names fail. A name that simply describes what is sold is, on this analysis, a weak choice precisely because it is a natural one. Distinctiveness — invented words, arbitrary words, distinctive devices — is what survives examination.
Relative grounds — Section 11. These concern conflict with earlier marks. Identity or similarity with an earlier trademark, coupled with identity or similarity of goods or services, where there exists a likelihood of confusion on the part of the public.
This is the ground on which the searching done before filing pays for itself.
The route from application to registration
Application — Section 18. Any person claiming to be the proprietor of a trademark used or proposed to be used may apply. That the mark is only proposed to be used is not a bar to applying.
Examination. The Registry examines against Sections 9 and 11 and issues an examination report; objections are answered, and a hearing may follow.
Advertisement — Section 20. An accepted application is advertised in the Trade Marks Journal.
Opposition — Section 21. Once advertised, a third party may oppose. Opposition proceedings run on pleadings and evidence and are the stage at which a contested application can become a long matter.
Registration. If unopposed, or if the opposition fails, the mark proceeds to registration.
⚠️ No timeline is stated here. How long any stage takes depends on the Registry’s workload, whether objections are raised and whether the application is opposed.
What registration actually buys
Section 28 — the exclusive right. Registration, if valid, gives the registered proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered, and to obtain relief in respect of infringement in the manner provided by the Act.
Section 29 — infringement. Registration is what makes an infringement action available. The Act sets out the circumstances in which unauthorised use of a mark amounts to infringement of a registered trademark.
Sections 134 and 135 — forum and remedies. The Act provides for suits for infringement and for the reliefs available.
Stated plainly: registration converts a commercial reputation into a statutory right, enforceable by reference to the register.
And what an unregistered user has instead
Not nothing — but something harder.
Section 27(2) preserves the common-law action for passing off. No proceeding lies to prevent or recover damages for infringement of an unregistered trademark; but nothing in the Act affects rights of action against passing off, or the remedies for it.
The difference is evidential, and it is substantial. In an infringement action, the registration is the foundation of the right. In passing off, the claimant must establish the elements of the action — including goodwill or reputation attaching to the mark, and misrepresentation leading to confusion. That is a case built from sales figures, advertising spend, invoices, market evidence and often survey material. It is slower, more expensive and less certain.
That is the whole answer to “we’ve traded under this name for years, why register?”
Which brings us back to the GST registration
A GST registration, a shop-and-establishment licence, a trade licence, a company or LLP name on the MCA register, and a domain name are each granted under their own statute or system, for their own purposes. None of them is a registration under the Trade Marks Act, and none confers the Section 28 right.
They may be evidence — of use, of continuity, of the date from which trading began — and in a passing-off action that evidence matters. But evidence of use is not a statutory right in the mark.
What this note does not do
- It states no timeline for registration and no fee figure.
- It does not indicate whether any particular mark will be accepted. Examination and opposition outcomes depend on the mark, the class, the state of the register and the objections raised.
- It is a note on the statutory scheme, not an assessment of any mark.
FAQ
Do I have to be using the mark before I apply? No. Section 18 permits an application by a person claiming to be the proprietor of a mark used or proposed to be used.
Does registering my company name at the MCA protect the brand? No. That is a registration under company law. Trademark rights arise under the Trade Marks Act and its register.
What is the difference between infringement and passing off? Infringement is the statutory action available to a registered proprietor (Sections 28, 29). Passing off is the common-law action preserved by Section 27(2), available to an unregistered user but requiring proof of goodwill, misrepresentation and damage.
Does one registration cover everything I sell? No. Registration is for specified goods or services in specified classes. Scope is a function of the specification filed.
What happens if someone opposes? The application enters opposition proceedings under Section 21, decided on pleadings and evidence. Outcomes depend entirely on the marks, the classes and the material filed.
Is ™ worth using if I am not registered? It signals a claim. It confers nothing by itself. ® should only be used for a mark actually on the register.
📎 Statute relied on
Trade Marks Act 1999 — s.9 (absolute grounds for refusal), s.11 (relative grounds), s.18 (application by proprietor, mark used or proposed to be used), s.20 (advertisement of application), s.21 (opposition), s.27(2) (nothing in the Act affects rights of action for passing off; no infringement action for an unregistered mark), s.28 (rights conferred by registration — exclusive right and relief for infringement), s.29 (infringement of registered trade marks), ss.134 and 135 (suit and reliefs) · Trade Marks Rules 2017 (classes, forms, fees).
Verification: ss. 9, 11, 18, 20, 21, 27, 28, 29, 134 and 135 were checked against the bare Act; the content stated for each is as verified. No fee figure and no timeline appears anywhere in this piece.
This is general legal awareness, not legal advice. Legal outcomes depend on facts, documents, law, forum, evidence, limitation and judicial discretion — no outcome is guaranteed. Consult a qualified advocate on your own facts.
Adv. Prakhar Gupta — enrolled with the Bar Council of Rajasthan, Enrolment No. R/2196/2020. This page shares legal awareness/education only; it is not advertisement or solicitation of work.
Parts of this content (images/voice/summary) were created or edited using AI tools.