Validity is the foundation upon which the business viability and enforceability of a trademark are ascertained. A valid trademark identification/origin of product or service it provides, which allows companies to establish their reputation and allows the consumer to make an informed decision. But what is the “validity” of a trademark? In this article, we examine the legal principles, procedure, and changing principles that ascertain a trademark’s validity under Indian law.
All these substantive and procedural aspects are subsumed in the overarching question: What constitutes a valid trademark, and when is it enforced or challenged under the law? Along with helping brand owners protect their assets, knowledge of this guarantees the trademark system functions properly in striking a balance between commercial interests and consumer protection.
Types of Marks and the Spectrum of Distinctiveness
The first step in understanding the validity of any trademark is to ascertain its distinctiveness. The distinctiveness of a trademark determines if customers can distinguish between several different traders selling the same goods or services. A distinctive trademark assists the customer in distinguishing the origin of particular goods and services. However, distinctiveness can be spread out in a spectrum as not all marks may be inherently distinctive. It is therefore important to note the different types of marks found in the market before establishing whether a trademark is valid. In Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), the U.S. Second Circuit Court of Appeals formulated the “Abercrombie spectrum,” a pioneering model used to ascertain trademark distinctiveness. Even though this categorization was formulated in the United States, the model is commonly applied in comparative analysis, such as in the case of India and the European Union, to determine whether a trademark is distinct enough to be protected under the law. The spectrum divides markings into five categories:
- Generic Marks – General names of goods/services (e.g. “Soap” for soap). These can never function as trademarks and are invalid per se, since they cannot distinguish the goods of one trader from the goods of another.
- Descriptive Marks – Express a quality, attribute, function, or purpose of the products (e.g. “Cold and Creamy” for ice cream). They are not distinctive on their own and are usually invalid except if they have become distinctive (secondary meaning).
- Suggestive Marks – Suggest a feature or quality of the product but engage imagination to connect (e.g. “Netflix” for online video viewing services).
- Arbitrary Marks – Common words used in an unrelated context (e.g. “Apple” for electronics). These marks are highly distinctive and valid.
- Fanciful Marks – Newly created words without dictionary meaning (e.g. “Kodak”). They are the strongest marks in validity, being unique by nature.
In Indian law, the prohibition against the registration of marks “lacking any distinctive character” under Section 9(1) of the Trade Marks Act, 1999, is the exemplar of this model in Indian trademark Principles. Section 9(1)(b) and 9(1)(c) also bar generic or descriptive marks unless it is possible to demonstrate that they have acquired distinctiveness by long and continuous use.
Intrinsic Distinctiveness
Fanciful, arbitrary, or suggestive marks are inherently distinctive; this would mean that they do not need proof of consumer acknowledgement. The validity of the above-mentioned marks shall be presumed, as they have the distinctive function of indicating origin. Moreover, as held in ITC Limited v. Britannia Industries Ltd., 2016 SCC OnLine Del 5005, the Delhi High Court reaffirmed that invented or coined words (in the instant case, packaging design and product shape) are registerable as trademarks if they are distinctive and non-functional. The Court also emphasised that the threshold of distinctiveness must be tested with regard to consumer perception.
Acquired Distinctiveness (Secondary Meaning)
However, for descriptive marks to be registrable and valid, they should gain distinctiveness due to long and continuous usage. The proviso to Section 9(1) of the Trade Marks Act itself recognises this theory, also referred to as secondary meaning. Again, according to Delhi High Court in Godfrey Phillips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257, elucidated that descriptive marks become valid and registrable by gaining long and continuous use even though the same mark was otherwise not registrable. Descriptive marks in such a case would have gained distinctiveness because the general public would associate them with a particular source. In such a case burden of proof would be on the Applicant to determine that the descriptive mark has gained secondary meaning by way of advertisement, identification by consumers, and market share
Thus, the legal validity of a trademark goes beyond acquired and inherent distinctiveness. The onus of proof that the applicant needs to fulfil varies with the category of the mark on the Abercrombie continuum. Whereas descriptive marks have to prove their acquired secondary meaning before they can be enforceable under Indian law, fanciful, arbitrary, and suggestive marks are inherently distinctive and therefore can have immediate validity.
Usage in Procedure: Examination, Opposition & Hearing
After the trademark has passed the stage where it’s either distinctive or acquired distinctiveness, the trademark Registry examines the marks for various irregularities. This is tested mainly at two procedural levels:
- Examination Stage – In a bid to search for any conflicts with previously-registered or pending trademarks, the Trademark Office examines and searches trademark applications pursuant to Section 11. Legal reasons and supporting evidence must be given by the applicant to overcome the objection as soon as a report of refusal on related grounds is issued if such conflicts are found.
- Opposition Stage – The application is advertised in the Trade Marks Journal after examination. The third party can oppose the Application at this stage of publication under Section 21, even on the same grounds. One of the most frequent arguments taken is the risk of confusion with the opponent’s previously registered or used mark. The Registrar holds a hearing after both parties have completed their pleadings. (under Rules 45–47).
Nevertheless, this process is a continuous test of the mark’s validity. Where opposition is successful, registration of the mark is declined. Even after registration, the validity of a trademark can be challenged by way of rectification or actions for infringement.
Deceptive or Misleading Marks
Section 9(2)(a) deals with the issue of deceptiveness, which is akin to confusion. In the absence of a prior conflicting trademark, a mark likely to cause confusion or mislead the public as to the character, quality, or origin of the goods or services has been held to be refused registration. A mark like “Himalayan Pure” for water bottled and packaged and not from the Himalayas, for instance, has been held to be refused because it is basically deceptive.
The likelihood of confusion is a procedural safeguard in this sense, preventing new registrations from undermining the distinctiveness or exclusivity of earlier-registered, valid trademarks. It also prevents customers from being deceived in the marketplace. The opposition and examination procedures are therefore central to the ultimate determination of trademark validity because, even where a mark is distinctive, validity also turns on not infringing on prior rights.
Relative Grounds of Refusal: Risk of Confusion and Procedural Safeguards
The distinctiveness of a mark also ought to be able to endure comparison with other marks registered, whether this is on a basis of inherent uniqueness or acquired secondary distinctiveness. Relative grounds for refusal are now the foremost consideration. Regardless of whether a mark is otherwise distinctive or not, its use is liable to lead to confusion or association with an earlier trade mark, and this is a reason for the refusal of registration under Section 11 of the Trade Marks Act, 1999.
This provision firmly links the validity of a mark to the surrounding context, i.e., to the earlier rights of other trademark owners. A mark may be distinctive but nevertheless not valid if it encroaches upon an earlier owner’s right in such a way that it will confuse consumers.
Section 11(1) bars registration where:
- The mark is similar to an earlier trademark and is being applied for for identical goods/services; or
- The mark is almost the same as a prior mark and the goods/services are similar too, resulting in a likelihood of confusion, for instance, the likelihood of association with the prior mark.
In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, wherein Supreme Court clarifies that public interest and consumer protection shall be given priority. The Court laid emphasis on the fact that an unsuspecting buyer possessing ordinary intelligence and defective memory must be used to test confusion. The Court also provides an elaborate list of parameters to ascertain similarity, i.e., Mark type (visual, phonetic, structural), Nature of the goods, Class of purchasers, Mode of purchasing, Level of similarity, No real confusion is required; only a likelihood or chance of confusion will suffice to invalidate a mark at the opposition or examination stage.
Registered and Unregistered Trademarks: Legal Status and Impact on Validity
In India, trademark rights may arise either by statutory registration or by use-based reputation in the common law. Either may lead to valid trademarks, but the legal basis for their validity and the protection made for them is varied. The difference needs to be understood in order to consider how the validity of a trademark is actually determined.
Statutory registration in India is used to refer to use-based reputation at common law as the two means by which trademark rights can arise. The two types can create valid trademarks, but there are wide differences in the legal grounds for establishing their validity as well as protection. In order to assess the validity determination of a trademark in practice, an understanding of this difference is required.
Registered Trademarks: Presumed Validity and Statutory Rights
It is known that a registered owner of a registered mark acquires certain statutory rights under the Trade Marks Act 1999. Under Section 31(1), a mark will be valid as soon as the registration is effected and the registration will be initial evidence of the validity in all proceedings. The rights conferred on a registered owner are as follows:
- The right to use the mark exclusively in relation to the goods or services for which it is registered (Section 28);
- Right to sue for passing off without establishing goodwill or confusion (Section 29);
- The ease with which the mark can be licensed out, outsourced, or made profitable;
- National security no matter what the actual geographic area of application.
In essence, registration raises a presumption of validity in law, and therefore, anyone who objects to the mark must establish why it should not be protected. Registration is not a guarantee of validity, though. As discussed in the next section, a registered mark can still be directed to be invalid by way of rectification proceedings (under Section 57) or cancellation for non-use (under Section 47).
Unregistered Trademarks: Validity by Common Law through Use
Furthermore, in case a trademark has not been registered but still has been in use for long, while having acquired goodwill and reputation, Indian law upholds the common law action of passing off for unregistered trademarks as enforceable, even though protection of registration is provided by law.
Nothing in the Trade Marks Act prevents an action for passing off goods or services for an unregistered mark, under Section 27(2) of the Act. However, for there to be a successful action, the unregistered trademark owner must establish:
- Goodwill
- Misrepresentation
- Damage
This was reaffirmed in the milestone case of S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, where the Supreme Court held that the rights of a prior user are not ousted by statutory registration. The Court laid great stress on the principle that use will over-ride registration in determining whether or not a trademark was valid, observing that an unregistered prior user of a mark has stronger rights even over a later registered proprietor.
This concept of registration-independent validity is also supported by the “prior use” doctrine, as provided for in Section 34 of the Act. Nothing in the Act will prevent a person who has already been using a trademark before the registered proprietor from continuing so, according to Section 34.
This implies that a former unregistered user who can demonstrate habitual and bona fide use can invalidate even a lawfully registered mark. Essentially, the validity of a mark in India can be attained by first and subsequent use in trade and not merely by registration.
In order to ensure that the validity concept in trademark law is applicable both to those who register their marks on the register and those who build goodwill in the actual world, Indian courts have continued to require the applicability of prior use.
Rectification and Cancellation
As explained earlier, registration of a trademark raises a presumption of validity in law however, registration is not a guarantee of validity. A mark can still be examined, rectified, and removed even after being legally registered if it no longer fulfills legal criteria. A registered trademark can be removed by a variety of mechanisms under the Trade Marks Act of 1999, most notably correction under Section 57 and removal for non-use under Section 47.
These provisions leave only legally used, distinctive, and non-competing marks enforceable, preserving the purity of the trademark register.
Cancellation for Non-Use (Section 47)
The actual usage of a trademark in trade is a key requirement for the validity of the trademark to subsist. Section 47 provides for the cancellation of a registered mark from the register where the mark is registered without any honest intention of use, and no use was ever made until three months prior to application for removal [Section 47(1)(a)]. Further, the mark has not been used continuously for five years from the date of registration, and such non-use continues up to three months prior to filing for cancellation [Section 47(1)(b)].
The purpose is to remove “deadwood” trademarks from the register so they do not take up space and exclude legal rivals from markets. The registration owner can still prevent cancellation on grounds of non-use caused by exceptional factors (i.e., importation prohibitions or regulatory obstacles), provided that these can be properly justified.
Rectification Proceedings (Section 57)
In addition, any registered trademark is liable to a challenge to its invalidity by way of rectification. Under Section 57, “any person aggrieved” may apply to the Registrar for rectification or cancellation of a trademark on the grounds stated below:
- The registration was acquired fraudulently or through deception.
- The mark has inappropriately been kept on the register.
- The mark is generic or has become generic.
Even without opposition to the initial registration, this allows for the possibility of prior users or rivals invalidating marks that should not have been registered. Even disregarding non-use, a registered mark can be filed for rectification for invalidity by way of registration being rectified. Under Section 57, “any person aggrieved” may make an application to the Registrar or to the High Court for removal or rectification of a mark on grounds that:
Conclusion
Therefore, as Trademark law is about protecting symbols that signal the origin of goods or services, validity is the key to the law that determines which of these marks need to be protected.
The Indian trademark validity is founded on distinctiveness, lawful adoption, and the ability to act as a source identifier. The validity is either inherent or acquired through repeated use and popular identification. Distinctiveness alone is not sufficient. The mark also needs to withstand procedural sifts such as likelihood of confusion, Registry scrutiny, and opposition by current users or right owners.
In particular, Indian law safeguards both statutory (registered) and common law (unregistered) trademarks, taking into consideration the fact that commercial experience typically precedes formal registration. The judicial system weighs such interests against the doctrine of prior use, opposition provisions, and rectification processes. As a result, trademark validity is neither a rigid nor an once-and-for-all name, it is a dynamic status, acquired and sustained through both lawful origin and constant commercial relevance. For businesses, the validity of trademark is not a question of law—it is a question of strategy. When launching a new brand, entering a new market, or defending IP rights, an understanding of what constitutes a valid trademark is required in order to gain brand longevity, enforceability in court, and business success.
