Section 13 of Trademark Act, 1999 prohibits the registration of trademarks consisting of or containing names of chemical elements or international non-proprietary names (INNs) declared by the World Health Organization (WHO) and notified by the Registrar of Trademarks. It also bars marks that are likely to be confused with such names. The purpose is to prevent misleading or confusing trademarks, particularly in the pharmaceutical industry where clarity in naming is important for public safety. This section ensures that trademarks do not exploit or create ambiguity around standardized chemical or medicinal names, protecting consumers and maintaining market integrity.
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What Does Section 13 of Trademark Act Say?
Section 13 of Trademark Act prevents specific words from being registered as trademarks to keep them available for public use. It focuses on:
Names of chemical elements or compounds (like “Oxygen” or “Sodium Chloride”).
International Non-Proprietary Names (INNs) for medicines, set by the World Health Organization (WHO), or names that are too similar to them.
Here’s the simplified version of the law’s text:
“No word can be registered as a trademark if it is:
A commonly used name of a single chemical element or compound (not a mixture), or
An INN declared by the WHO, or a name so similar it could cause confusion.”
If someone registers such a name by mistake, it can be challenged and removed under Section 57 of the Act.
The goal is to prohibit companies from owning generic names and ensuring that they’re free for use in science and healthcare.
Importance of Section 13 of Trademark Act
Section 13 of Trademark Act balances the rights of businesses with the public’s need for clear, accessible terms in science and medicine.
For Chemicals: Keeping element names free supports research and education by ensuring no one can control basic scientific terms.
For Healthcare: Protecting INNs ensures medicines have consistent names worldwide which reduces confusion and keeps drugs affordable.
Global Alignment: Section 13 follows international rules, like the Paris Convention, to maintain consistent trademark laws across countries.
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Chemical Names in Section 13 of Trademark Act
Section 13(a) bans trademarking common names of chemical elements or compounds (but not mixtures). This keeps basic scientific terms open for everyone.
Examples: You can’t trademark “Helium” for gas or “Ethanol” for alcohol.
Reason: If these names were trademarked, competitors couldn’t use them to describe their products, which would create unfair limits in the market.
In Practice: The Trademark Registry checks applications and rejects those using generic chemical names unless they include unique additions, like a brand-specific prefix.
What Are INNs, and Why Are They Protected?
Section 13(b) stops the registration of INNs or names that are too close to them. INNs are standard names for medicines, set by the WHO, to ensure the same drug is called the same thing worldwide.
Examples of INNs: “Paracetamol” (a painkiller) or “Ibuprofen” (an anti-inflammatory).
Registrar’s Role: The Registrar of Trademarks updates a list of INNs based on WHO announcements. Any mark that matches or is too similar to an INN gets rejected.
Deceptive Similarity: A name like “Paracet” might be rejected if it sounds or looks too much like “Paracetamol,” as it could confuse customers.
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Meaning of Section 13 of Trademark Act in Businesses
If you’re in the chemical or pharmaceutical industry, understanding Section 13 of Trademark Act is a key to avoid problems when registering a trademark.
Registry Checks: The Trademark Registry reviews applications against chemical names and WHO’s INN list, rejecting those that don’t comply.
Avoiding Issues: Businesses should search for conflicts and add unique elements (like prefixes or logos) to their trademarks.
Legal Challenges: TradeMarks that violate Section 13 of tRademark Act can be removed through a process called rectification under Section 57.
Consequences of Ignoring Section 13
Not following Section 13 can lead to legal trouble, such as:
Opposition: Competitors can challenge a trademark application under Section 21 if it violates Section 13.
Infringement Defense: If someone sues over a trademark, the defendant can argue it’s invalid under Section 13.
Rectification: Third parties can ask to remove a registered mark that breaks Section 13 rules.
Examples
Case laws show how Section 13 is used to protect the public. Given below are few cases to illustrate the function of Section 13 of Trademark Act:
AstraZeneca AB v. P.C.I. Pharma: The Delhi High Court rejected a trademark similar to an INN, prioritizing clear healthcare naming.
Pfizer Products Inc. v. Renovision Exports Pvt. Ltd.: The court refused a mark using a generic compound name, upholding Section 13.
COVID-19 Marks: Terms like “Corona” were reviewed carefully, showing Section 13’s role in protecting broader public interests.
Examples of Allowed and Blocked Trademarks
Given below is a table which shows what’s allowed and what’s not under Section 13:
Category | Prohibited Examples | Why It’s Blocked | Allowed Examples | Notes |
Chemical Elements | “Helium” for gas | Common element name | “HelioMax” | Needs a unique addition |
Chemical Compounds | “Ethanol” for alcohol | Accepted compound name | “EthanoGuard” | Must avoid generic terms |
INNs | “Paracetamol” for drugs | WHO-declared INN | “ParaRelief” | Cannot be too similar to an INN |
Deceptively Similar INNs | “Ibuprof” for painkillers | Too close to “Ibuprofen” | “Painex” | Judged case-by-case for similarity |
Challenges in Applying Section 13
Enforcing Section 13 of Trademark Act isn’t always easy due to the following reasons:
Updating INN Lists: The Registrar must stay current with WHO’s frequent INN updates.
Similarity Disputes: Deciding if a name is “too similar” to an INN can be subjective and lead to arguments.
New Industries: Fields like biotechnology may need Section 13 to adapt to cover new types of compounds.
Summary
Section 13 of Trademark Act, 1999 makes sure that common chemical and medicine names stay free for everyone to use. It promotes fairness and clarity in industries like science and healthcare by blocking trademarks on these terms. Businesses must understand Section 13 of Trademark Act in order to register trademarks successfully. Lawyers use it to guide clients and settle disputes. As technology and industries evolve, Section 13 of Trademark Act will remain a major part of balancing business rights with the public good.
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Section 13 of Trademark Act: FAQs
Q1. What is Section 14 of the Trademarks Act?
Section 14 prohibits registering trademarks that falsely suggest a connection with a living person without their written consent.
Q2. What is Section 13 of the intellectual property rights?
Section 13 of the Trademarks Act bans registering trademarks that are names of chemical elements or international non-proprietary names (like drug names) declared by the WHO.
Q3. What are the 4 types of trademarks?
The four main types are product marks (for goods), service marks (for services), collective marks (for groups like associations), and certification marks (guaranteeing quality or origin).
Q4. What is Section 112A of the Trademark Act?
Section 112A sets up a process for the Registrar to inquire, hold hearings, and impose civil penalties for trademark offenses, replacing criminal fines.
Q5. What is the difference between Section 111A and 112A?
Section 111A protects well-known trademarks from identical or similar marks in unrelated classes to prevent dilution or unfair advantage, while Section 112A handles adjudication and penalties for trademark violations
