Section 36 of Trademark Act, 1999 protects registered trademarks from losing their status just because they become common descriptive words. It deals with cases where a trademark turns into a general term for a product or service due to widespread use. This section ensures trademarks stay valid unless specific conditions are met. By exploring Section 36, we learn how the law balances the rights of trademark owners with the natural evolution of language in business. This article explains Section 36 of Trademark Act, its purpose, related laws, case laws, comparisons with other countries, and practical uses in a clear way for legal professionals.
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Saving for words Used as Name or Description of an Article or Substance or Service: Section 36 of Trademark
Section 36 of Trademark Act, 1999 is titled “Saving for words used as name or description of an article or substance or service.” It handles situations where a trademark’s words become commonly used to describe a product or service, which could affect the trademark’s validity. Given below is the text of Section 36 in simple terms:
(1) A trademark registration won’t be considered invalid just because its words are used after registration to describe a product or service. However, this changes if:
(a) The word is widely known and commonly used by others in trade to describe the product or service, and this use isn’t connected to the trademark owner or a registered user, or, for certification trademarks, isn’t related to certified goods or services; or
(b) The product was previously made under a patent, and two years or more after the patent ends, the word becomes the only practical name for the product.
If either condition is met, sub-section (2) applies.
(2) If the conditions in (a) or (b) are proven:
(a) For proceedings under Section 57, if the trademark is only those words, it’s considered wrongly registered for the product, service or similar goods or services.
(b) For other legal cases:
(i) If the trademark is only those words, the owner loses all rights to use the trademark for those goods or services.
(ii) If the trademark includes those words and other elements, the owner loses rights to use those words for the goods or services.
These rights end when the use in (a) becomes widely known or after the two-year period in (b).
Detailed Breakdown and Explanation of Section 36 of Trademark Act
As mentioned above, Section 36 of Trademarks Law in India protects a trademark's validity when its words become commonly used as a name or description for a product or service, unless competitors prove widespread non-proprietary use or the term is the only practical name post-patent expiration. Given below is a detailed breakdown of Section 36 of Trademark Act:
Sub-Section (1): The General Saving Clause
Section 36 starts by protecting trademark registrations. It says a trademark stays valid even if its words are used later to describe a product or service. This prevents automatic cancellation when a trademark like “Aspirin” for pain relievers, becomes a common term. The law recognizes that trademarks can enter everyday language without the owner’s fault.
The Proviso: Conditions for Sub-Section (2)
The proviso lists exceptions where a trademark might lose validity. Clause (a) requires proof that the word is widely used by others in trade to describe the product or service, and this use isn’t linked to the trademark owner. Clause (b) applies to patented products where, after the patent ends and two years pass, the word becomes the only practical name. If these conditions are met, Sub-Section (2) takes effect, potentially canceling the trademark’s rights.
Sub-Section (2): Consequences of Proven Facts
This part explains what happens if the conditions are proven. For rectification cases under Section 57, a trademark made only of such words is seen as wrongly registered for the relevant goods or services. In other legal cases, the owner loses rights to use those words, either fully (if the trademark is only those words) or partly (if it includes other elements). Rights stop from the date the use became common or the two-year patent period ended. This approach ensures precise action without affecting non-word parts of the trademark.
Read to learn the Powers and Roles of Registrar of Trademarks.
Purpose and Rationale Behind Section 36 of Trademark Act
Section 36 balances trademark rights with public interest in free speech and competition. Trademarks show a product’s origin, not control over words. If a mark becomes a common term, it no longer identifies the source, so it may lose exclusivity. But Section 36 prevents quick invalidation and requires strong proof to avoid punishing owners for their popularity of such trademark. This supports fair competition and stops owners from controlling language forever. Owners must actively prevent misuse as ignoring it could lead to losing rights. Lawyers need solid evidence, like market surveys in order to prove that a term is widely used.
Related Provisions in the Trademark Act
Section 36 works with other parts of the Act. Section 35 allows honest use of names or descriptions, like personal names, as long as they don’t mislead. Unlike Section 36 which focuses on words becoming common after registration, Section 35 covers broader honest use. Section 9(1)(b) blocks registration of descriptive marks that aren’t distinctive. Section 57, mentioned in Section 36(2)(a), allows correcting wrongful registrations. Together, these rules prevent descriptive or common terms from dominating business.
Case Laws Interpreting Section 36
Few case laws directly address Section 36. In Competition Review Ltd. v. N.N. Ojha (1996, Delhi High Court), the court denied an injunction, saying terms like “Competition Review” were not exclusive without proving distinctiveness, relating to Section 36 ideas.
In Thukral Mechanical Works v. P.M. Diesels Pvt. Ltd. (2009, Supreme Court), the court noted that generic terms lose protection, supporting the logic behind Section 36 of Trademark Act.
Courts often use this section in rectification cases where challengers prove a term is widely descriptive. The burden of proof is on the challenger, needing strong evidence of common use.
Implications and Practical Applications
For businesses, Section 36 of Trademark Act highlights the need to protect trademarks. Owners should use marks as adjectives (e.g., “Kleenex tissues”), check for misuse regularly and send cease-and-desist letters to stop it.
Lawyers advising on registration should check for descriptiveness risks under Section 9. In case of any dispute, they need evidence like dictionaries or surveys to challenge trademarks under Section 36.
For global brands, understanding India’s rules alongside international systems like the Madrid Protocol helps create strong strategies. The section supports fair competition, letting the public use descriptive terms while protecting unique brands.
Summary
Section 36 of Trademark Act, 1999 protects trademark registrations from easy cancellation while allowing loss of rights for truly common terms. It encourages owners to manage their trademarks carefully to maintain exclusivity. As digital markets grow, the importance of Section 36 increases along with guiding legal strategies in a brand-focused world. It is important to understand its uses to build strong intellectual property systems in India.
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Section 36 of Trademark Act: FAQs
Q1. What is class 36 in trademarks?
Class 36 covers financial services, insurance, real estate affairs, and monetary transactions like banking and investment services.
Q2. What is Section 37 of the Trademark Act?
Section 37 allows the Registrar to withdraw a trademark application’s acceptance before registration if it was accepted in error.
Q3. What is Section 35 of the Trade Mark Act?
Section 35 protects trademark owners from liability for innocent use of their mark as a trade description or business name.
Q4. What is the time limit for trademark opposition?
Anyone can oppose a trademark application within 4 months from its advertisement in the Trade Marks Journal.
Q5. What is Section 36E of the Trademark Act?
Section 36E outlines procedures for registering an international trademark application under the Madrid Protocol in India.
