Rule 21 of Trade Mark Rules, 2017 2025

This article is contributed by Janvi Badiyani. To regard, the article presents a comprehensive discussion of Rule 21 of Trade Marks Rules, 2017. It gives a proper explanation and it also uses certain case laws as object examples to enable readers to better understand one of the critical aspects in the course of trade marks registration.

This article has been published by Shashwat Kaushik.

A trade mark is a word, phrase, symbol, or design that an organization uses to distinguish its products from those of other businesses to differentiate the available products from those of other business organisations. A good example is that it establishes a unique image for a brand or product class, and has a positive influence on the perception of the product by experts, buyers, and users.

Trade mark law in India is ruled under  The Trade Marks Act, 1999 (hereinafter referred to as Act of 1999) and Trade Mark Rules, 2017 (hereinafter referred to as Rules of 2017). These laws are in submissions to treaties like the Paris Convention, 1883, the TRIPS Agreement, 1995, and the Madrid Agreement, 1891. The Act of 1999 offers trade mark owners basic rights and a clear procedure on how such rights can be enforced by the owners regardless of the status of registration of a trade mark.

The Act of 1999 and Rules of 2017 have enhanced the trade mark registration and modernisation of trade mark examination, classification, publication and opposition in India. These rules define legal procedures regarding trade mark infringement hence helpful to legal and business practitioners.

We all now move on to the subsequent section of this column, which will deal with the provisions and how they are related.

Provisions shaping trade mark applications and procedures in India

The regulations as to compliance with the provisions on the use of a trade mark for goods and services in respect of which registration has been sought are Section 133 (1)  Act of 1999 and Rule 20 of  Rules of 2017. These provisions provide a framework for standardisation of trade mark evaluations, with a view of classifying goods and services so that the mark may be sufficiently different when being registered for the specific product or service.

Section 133(1) of the Trade Marks Act, 1999

By virtue of Section 133 Act of 1999, the Registrar has the responsibility of declining any application for registration of a trade mark in certain circumstances. This section remains to remind us that if the trade mark application does not meet the requirement of Act of 1999 or infringing on the earlier trade marks, the Registrar may refuse registration.

It strives to maintain the quality of the trade mark register that will only register (distinctive non misleading trade marks) that will help protect the consumer as well as the businessman. This section is very indispensable in the trade mark registration since the applicants are encouraged to undertake searches and analysis before applying for registration.

Section 133(1)  Act of 1999 provides for seeking advice in advance and the Rule 21  Act of 1999, prescribes the manner of the same. This provision provides a guarantee that the registration of a trade mark has been done with due diligence and in equal regard to the laid down process. It allows the Registrar to give preliminary indications on the level of readiness of the trade mark for registration especially in the goods and services aspects classified and declared under the trade marks classification system as required.

There is a direct relationship between Section 133(1) and Rule 21 for the registration of the trade marks and its application to the Registrar about its conformity with the classification made under the Act of 1999, which in turn builds up the framework of the judicial rights for the intellectual property in India.

Rule 20(2) of Trade Marks Rules, 2017

Rule 20(2) relates to classification of goods and services under the Nice Classification System to register trade marks under the prescribed guidelines. This system of classification is very useful in processing trade mark applications since it sorts all the applications under classes, meaning one is in a position to critically analyze and publish.

This is relevant in the sense that, when goods and services are classified under the Nice Classification which is used in the registration of trade marks, everything is in order in regard to a standard practice, which guides those involved in the determination of how the trade mark in question will operate in its corresponding zone of trade or commercial category.

The preliminary assessment may only be made in relation to the registered trade marks of the goods and services which are classified and published in a manner that fits the classification with that recognized by the Registrar internationally.

The list of the goods and services that have been published also makes important reference documents for a third party who may have an intention to oppose the registration of a particular trade mark on the basis of prior use.

In conclusion, the rules advanced under Rules 20(2) and Rule 21 of  Rules of 2017 complement the simplified model of registration by means of proper classification of goods and services on the one hand and by adherence to the due time limit for submission of priority documents on the other. These provisions enhance the formulation of a much ordered and efficient environmental protection of the rights to trade marks in India.

Having understood the provisions, let’s delve into the explanation of Rule 21 and Entry 14 for better clarity.

Explanation of Rule 21 of Trade Mark Rules, 2017

Any applicant under the Act of 1999 or Rules of 2017 may seek an advisory from the Registrar as to whether certain trade marks proposed by the applicants are ‘distinctive or not’. Under this legislation Section 133 (1) of the Act is provided where applicants could be informed whether the trade mark application has been made for is likely to be registered or not.

It is important to note that any application made under Rule 21 should be made with an association to goods or services as listed by the Registrar under Rule 20(2).

This section deals with details regarding the formalities involved in consulting the Registrar of Trade marks, how to do it, and some pertinent facts about trade mark registration. Also, a copy of the trade mark must be produced with the fees as spelled in Entry 14 of the First Schedule relating to rule 21 of the 2017 Rules.

Now let’s head towards the next part, which is Entry 14 of the first schedule of trade mark rule, 2017

Explanation of Entry 14 of the First Schedule of Trade Mark Rules, 2017

Entry 14 of the Act generally deals with the specific fees required for particular trade mark related actions or services.

This entry also provides the disclosure of the amount chargeable for a request for speedy processing of the trade mark application compared to a regular charge. This option gives applicants the ability to accelerate the examination process and increase the chances that their trade mark will be reviewed faster than in the normal cycle.

It is especially useful for clients that require a fast action for the trade mark to protect it owing to business or competition reasons. More details of the fee and conditions are provided in the schedule and upon payment of this, fee the trade mark office gives the application priority.

Now we are moving forward and discussing the purpose of preliminary advice.  When we gathered information about the purpose of preliminary advice we came to know about the benefits and problems.

Let’s now move forward and discuss the purpose of preliminary advice.

Purpose of preliminary advice

1. Preliminary advice and Rule 21

Rule 21 requires the applicant to seek prior advice which will provide information on the likely objections to a trade mark and the chance of its registration. The main course of the aforementioned advice is to provide applicants with certain information and, primarily, with potential challenges that may be encountered by them, such as issues concerning the identity of trade marks proposed by them. It assists the applicants of the trade mark to have an initial perception of how strong or weak their trade mark application is going to be before they file it.

2. Understanding distinctiveness

This is important in trade mark law meaning that it is easier for one to understand what is on the market by having a way to distinguish them. The law also recognizes that for a mark to be registrable it has to be inherently distinctive, it cannot be merely descriptive. Section 9 Act of 1999 initiates that Marks lacking inherent distinctive character are barred, hence, businesses should consult the legal counsel to ascertain the comprehensiveness of the marks’ distinctive character.

3. Importance of specificity and legal advice

A different and rare logo can be defended in court more easily while the target market will easily identify the brand. Seeking the assistance of a lawyer when developing a trade mark helps as it minimizes chances of engaging in legal battles, and it is time-consuming and costly, and most importantly, it solves qualified disputes at an early stage. It also enhances the legal status of a brand and helps to maintain a sound legal profile that will be of benefit not only to the business but its consumers as well.

In Abu Dhabi Global Market vs. The Registrar Of Trade marks, Delhi (2023), the Registrar rejected the application of Abu Dhabi Global Market (hereinafter referred to as ADGM) on the grounds that the mark was geographically descriptive and had no distinctiveness which could confuse average purchaser regarding the origin of goods or services.

ADGM has challenged this alleging that its uses had rendered the trade mark popular and distinguishable across the globe as a bear of financial services. The Delhi High Court gave a verdict of decision in favour of ADGM to register the trade mark and defined that acquired distinctiveness and international goodwill may overcome geographical descriptiveness. This judgement – as it was stated above – affirmed that trade marks that were associated with geographic regions could be registered in case these trade marks promoted independence and recognition.

In United Iron And Steel Works vs. Government Of India Trade marks (1966), the Registrar had refused the application being a descriptive mark having no distinct character. United Iron and Steel Works, it was disappointing the mark since the petitioner claimed that it had acquired secondary meaning or acclaimed distinctiveness through many years of usage the High Court of Appeal supported the Registrar and held that a trade mark must be inherently distinctive and cannot be descriptive.

In N.R. Dongre And Ors vs. Whirlpool Corporation And Anr on (30 August 1996), Whirlpool felt threatened when N.R Dongre started selling washing machines under Whirlpool’s name, Whirlpool sought an injunction under the principle of passing off on the ground that its global reputation on the trade marks would protect it.

The appellate court pointed to clauses in the  Act of 1999 in giving its decision which benefited Whirlpool, stating that even though the trade mark ‘Whirlpool’ was unregistered in India but the brand reputation and customer goodwill enjoyed outside India carried through to the country. The high court explained that the trade mark that is famous all over the world can be protected in India even if the said trade mark has not been registered in India.

These cases demonstrate the importance of individuality in trade mark law and the business need for legal consultation before an application for trade mark registration is made.

There are some benefits of seeking preliminary advice. Let’s move forward to know about it.

Benefits of seeking preliminary advice

Seeking the first advice when filing for trade mark registration has several important processes and it is considered fundamentally to harness the trade mark laws. This in turn helps the applicants to minimise legal problems right from the time of applying for trade mark registration and its process of registration. It makes the process simpler and less time-consuming. Here is an expanded look at the importance and benefits of seeking preliminary advice:

Cost and time efficiency will afford the applicants an opportunity to cut down on time as well as costs that they have incurred especially when consulting the authorities. Trade mark registration takes a long period of time and this process is normally very expensive legally as well as administratively. If the Registrar’s advice is of such a view, then it means that trade mark applicants can modify the said approach without necessarily investing effort and cash into the process. This helps the applicant to avoid lawyers fees, additional fees, or being forced to seek higher-level examinations that may be costly.

Symbols may create grounds for refusal of an application for registration due to a lack of distinctive character or to the identity of trade marks registration could minimise possible objections upon the enactment of the formalities for trade marks registration.

A rejection often greatly impacts the process of developing a new product or a new service. This in turn transistors business calendars and marketing plans. The applicants should therefore endeavor to look for anything that can point towards legal issues that will enable the applicants to change the trade marks in compliance with legal requirements within the law to increase the chances of registration.

•  Strategic decision-making

Suggestions are provided before the trade marks are registered, allowing business to adjust their trade mark plans. Instead of guessing if a trade mark meets legal requirements, the applicant gets guidance from the registrar during the initial evaluation. This gives them enough time to change their approach if needed.

Outside, the given guidance may be useful not only for the registration of the given name-brand but also for other aspects of the form TM -M in terms of virtual brand identification simultaneously with legal regulation of trade mark procedures staking market demands.

For example, the applicant may decide to enhance the distinctiveness of the trade mark for which the logo represents, which in turn will enable the logo to compete effectively for the market share of the existing trade marks, as well as appeal to the legalities of distinctiveness.

Some of the factors that may be experienced while using the laws of trade marks are Some of them are One can be trapped while in the process of registration especially if the person involved is involved in the court case.

Such problems may emerge because of the absence of distinguishing features or their resemblance with other marks which the applicant cannot avoid to make the situation worse with if they consult a lawyer.

Disputes may arise throughout such a process and while they never are favorable when they happen, their prevention means that their effect cannot be extremely severe. This is perhaps very true especially, where the business is carrying out activities in industries, which are considered sensitive in the business world as they permit holders to launch trade mark litigations that could be costly, and time-consuming.

• Improving brand positioning

That is why obtaining initial guidance goes beyond promoting legal benefits as an investment in branding initiatives. A trade mark that is chosen strategically is one of the most important components of the image of a particular company.

When businesses set their standards of compliance with the legal framework and market tendencies there and then, they establish themselves as a strong brand identity that creates customer familiarisation and devotion in the long run.

• Facilitating international registration

For companies that are aspiring to expand into new regions, seeking prior advice is good because it creates a pretext for future trade mark registration. Marks that have been granted clearance for distinctiveness in one country may still be problematic in another country but getting some initial guidance may suggest how much one may have twisted such a mark.

As a result of this early impression, firms can position themselves right for operations in other countries, they do not have to be taught this the hard way through rebranding or being refused registration in foreign countries.

• Building legal confidence

The preliminary advice enables the applicants to reach the correct legal perspective for complete trade mark registration. Perhaps it will be useful to have this knowledge consciously because the proposed trade mark may be easily recognizable as sufficiently different from other trade marks. This confidence simplifies the process for the applicants by making sure that the action taken to register creates a legal framework for the brand.

Now we are going to discuss some problems and limitations of preliminary advice.

Problems and limitations of preliminary advice

As discussed here, preliminary provided advice on distinctiveness has many advantages though there are some time restrictions and disadvantages. They are as follows:

• Non-binding nature: Taken from the advice given during the preliminary examination, many of the observations are non-binding; thus even if the Registrar affirms the trade mark, it can easily meet objections or refusals during the formal examination stage.

On the other hand, a negative advisory opinion does not purport to sterilise the action of the applicant and cannot restrain an applicant from seeking registration. This lays a burden on the applicant to better prepare for further examination and they should seriously ponder upon the advice rendered at the time of choosing to go ahead with the trade mark registration.

• Additional costs: Although it reduces future costs since one gets a quotation for the overall treatment, it may sometimes require one to incur a token charge before getting
• an initial consultation. Applicants are required to pay a fee when resubmitting Form TM-M which is perceived as another expense and hence may be burdensome to small businesses or startups and may put a lot of strain on their financial muscle.Now we are going to discuss the role of the Registrar in providing preliminary advice.

Role of Registrar in providing preliminary advice

When an applicant files a trade mark application simultaneously with a preliminary clearance search, the Registrar assesses the propensity of the trade mark to cause confusion with existing trade marks or products in the market thus affording the applicant a distinctive badge of origin of their product.

Though the official at the Registrar’s office doesn’t present it as an official legal opinion or a legal document, it is very beneficial to the applicants, especially foreign applicants. Again, if the feedback which is provided is negative in the sense that the trade mark is not original enough to be registered then the applicant can either try and change it or try and broaden the protection or else simply withdraw the application.

This enables the elimination of the likelihood of the emergence of hitches in the progress of the formal registration. It can help the applicant on the remaining steps of the registratio if only the preliminary guidelines are taken into consideration.

For the sake of emphasis, one needs to understand that this nature of advice is non-compulsory, and despite that, if they receive a negative response, the applicant is absolutely at liberty to apply for the registration of the trade mark without any alteration or amendment as advised by the applicants. It is up to the applicant to choose for him or herself.

On the other hand, when the Registrar has passed positive remarks, the applicant can proceed and apply for formal registration fearlessly. This preliminary advice is also useful when one wants to file international applications. The guidance helps the applicant to modify the approach and increase the chances of receiving trade mark protection in a number of other jurisdictions as well.

Now we are going to discuss the steps for seeking preliminary advice.

Steps for seeking preliminary advice

Here are the general rules and steps an applicant has to follow in order to receive the preliminary advice:

When applying for the trade mark, applicants are required to fill and file Form TM-M to seek preliminary advice as envisaged under the Rules of 2017. This form is crucial for the first evaluation regarding the conformity of the trade mark.

When completing Form TM-M, the applicants are required to furnish specifics concerning themselves together with the proposed trade mark and goods/service association with the trade mark. It helps the Registrar determine whether the trade mark complies with legal requirements and is in a position to be registered.

• Relevant goods and service

Seeking advice refers to goods and services that are listed and advertised by the Registrar and is guided by Rule 20(1). This way the trade mark passes through checks and balances where it is assessed against the right class of goods or services in the Indian Trade Marks Journal.

In filing Form TM-M there is the provision that the applicant is supposed to pay a fee in terms of what was prescribed in Entry 14 of the First Schedule of the Rules of 2017. It should be noted that the present fee depends on the category of the applicant, a small business or a big business, or an individual. The differential fee is also charged to ensure that as far as the cost and the law are concerned, different categories of learners are celebrated.

• Submission of trade mark representation

Another requirement when applying for preliminary advice is the submission of a representation of the trade mark issue. This enables the Registrar to catch for himself the aesthetic nature of the trade mark, that is, its appearance, design, and style. Thus, its distinctiveness and qualifications to be registered can be identified by the Registrar in compliance with the legal requirements.

While moving to the conclusion it will be helpful to reflect on the role of these provisions for constructing the legal environment and protecting the objects of intellectual property.  They are responsible for stimulating innovations at the same time as for preserving the fairness of competition.

Conclusion

It will be relevant for all the businesses that intend to safeguard their trade marks through registration under the Act of 1999, to obtain initial advice in relation to distinctiveness. It gives the applicant at an early stage a hint that their proposed trade mark will be registered or rejected depending on the similarity of the trade mark to the products or services that the trade mark represents.

Applicants seeking assistance on how to avoid or alter their trade marks to be able to meet the legal requirements needed before registration can be done so from the Registrar. This is less likely to cause conflicts and also is less time consuming and less costly than having to defend an application that has been rejected.

Furthermore, early guidance also allows businesses to develop sound strategic directions about their trade marks and the laws on the respective products that prevail in both local and global markets.

The existing Rules of 2017 have tried to make the trade mark registration procedure easier in India to be more modern. These rules remove imperfections of the Rules of 2002 by consolidating procedures, minimizing papers, and embracing electronic means for trade mark registration and applicants. This modernisation also brings efficiency for the same purpose of improving registration in a way that will smooth the process for everyone wishing to register as one.

Frequently Asked Questions (FAQs)

What is the meaning of acquired distinctiveness?

The concept of acquired distinctiveness means that where a trade mark originally bore a descriptive or generic meaning, it will be used in relation to one particular product or service, to the extent that the trade mark has become uniquely linked to the particular product or service in question and this certainly was the position here.

How long does it take to receive preliminary advice from the Registrar?

The response time with respect to receiving preliminary advice, may differ, depending on the traffic the trade mark Registry undertakes However, the target response time should be reasonable, starting from when the application is filed.

What happens if the trade mark is found to lack distinctiveness, as per the preliminary advice?

If the Registrar informs that the trade mark is not distinctive enough, the applicant can either have the trade mark changed so as to increase its distinctiveness, or go ahead with the filing of the trade mark formally with the knowledge that the trade mark will encounter difficulties during the examination.

Can an appeal be made against the preliminary advice?

No appeal can lie against a preliminary advice, because the advice is non-binding and purely advisory. Regardless, the applicant is given advice on whether or not to proceed with the application, if he/ she is not in agreement with the decision, he/ she can proceed to file the actual trade mark application.

Whether the preliminary advice of the Registrar binding?

No, the advice that is initially provided by the Registrar in terms of Rule 21 of The Trade Marks Rules, 2017 is not final and binding in nature. It is only consultative and does not prohibit anybody from filing a formal application for registration of the trade mark. It also does not definitely predict whether the application will be accepted or rejected.

Can an applicant request a hearing if they disagree with the Registrar’s objections?

Yes, applicants are allowed to ask for a hearing if they are not satisfied with the objections given by the Registrar in the examination report. This hearing affords applicants an opportunity to explain to the examining attorney why he/she should not refuse registration of their trade mark and they can also explain any aspect of the application in detail that has caused confusion. They represent probably one of the key features of the trade mark registration process that allows applicants to promote their interests and request fair consideration of their applications.

References