Trademark owners assume that once a mark is registered the hardest part is over. In India that assumption can be dangerously misleading — as a recent Madras High Court judgment shows, procedural neglect at filing can cost you the registration years later.
The dispute
Competing manufacturers of electrical fans used TOOFAN and THUFAN. The respondent held registrations for THUFAN in Tamil and Telugu; the appellant owned an earlier registration for TOOFAN in English.
The registrations were challenged on the ground that they were obtained in violation of the rule governing trademarks filed in languages other than English or Hindi — Rule 33 of the Trade Marks Rules, 2002, which applied to these applications.
The requirement
Where a trademark contains words in a script other than Hindi or English, the application must carry an endorsement providing:
- a transliteration;
- a translation into English or Hindi; and
- a clear identification of the language.
The purpose is specific and practical. It allows the public and prior rights holders to understand the mark when it is advertised in the Trade Marks Journal — and therefore to meaningfully oppose it if they need to.
A proprietor watching the Journal for marks similar to theirs cannot assess a mark they cannot read. Without the transliteration, publication tells them nothing.
What went wrong
The Trade Marks Office accepted and advertised the applications without publishing the transliteration or translation.
The court held that such an advertisement defeats the very purpose of publication, and is no advertisement in the eye of law. The defect went to the root of the registration process, and the registrations were cancelled.
That is a significant holding. The consequence of the Office’s procedural lapse fell on the registered proprietor, who lost marks that had been on the register for years. The Office’s error, but the proprietor’s loss.
The systemic point
This is a recurring issue at the Trade Marks Office, where procedural lapses are repeatedly flagged by courts but rarely corrected in practice. The same pattern appears in the cases on service of examination reports, Section 25(3) renewal notices, and the mass abandonments — courts intervene, the Office is criticised, and the underlying practice continues.
A note on the rule. The 2002 Rules applied to these applications; the equivalent requirement sits in the Trade Marks Rules, 2017, which govern current filings. The obligation is unchanged in substance.
What owners should take from it
Filing a trademark application is not merely submitting forms. It is laying the foundation of a legal asset intended to last decades — and a defect at that stage can be raised against you at any point afterwards, however long the mark has been registered and however much value has accrued to it.
Two practical points follow. For anyone filing a mark in a regional script, confirm the transliteration, translation and language identification are on the application and carried into the advertisement — do not assume the Office will supply what you omitted, or publish what you supplied. And for anyone challenging a registration, the file history is worth examining: defects of this kind are objectively verifiable and go to the root of the registration rather than to the merits of the mark.
The takeaways
- Marks in other scripts need transliteration, translation and language identification.
- Defective advertisement is no advertisement — the defect goes to the root.
- The Office’s lapse cost the proprietor the registrations, years later.
- Check the file history when challenging a registration.
Frequently asked questions
What is required when filing a trademark in a regional language? A transliteration, a translation into English or Hindi, and clear identification of the language, endorsed on the application.
Why does the transliteration requirement matter? Because it allows the public and prior rights holders to understand the mark when advertised in the Journal, and therefore to oppose it if necessary.
Can a registration be cancelled for a defect in advertisement? Yes — the Madras High Court held that advertisement without the required transliteration is no advertisement in law, and cancelled the registrations.
Does it matter that the Registry caused the error? Not to the outcome — the registrations were cancelled notwithstanding that the Office accepted and advertised the applications as filed.