Chapter IV - Effect of Registration
Section 36
Section 36: Words becoming names of goods or services
Later descriptive use of a word does not alone invalidate registration, but the specified established-use or former-patent conditions can end relevant rights.
On this page
Need advice on Section 36?
This article is for general information. Refer to the Trade Marks Act, 1999 official text for the official provisions. If you need professional advice for your situation, contact Bizeneed.
Statutory text
Bare law
(1) The registration of a trade mark shall not be deemed to have become invalid by reason only of any use after the date of the registration of any word or words which the trade mark contains or of which it consists as the name or description of an article or substance or service:
Provided that, if it is proved either—
(a) that there is a well known and established use of the said word as the name or description of the article or substance or service by a person or persons carrying on trade therein, not being use in relation to goods or services connected in the course of trade with the proprietor or a registered user of the trade mark or (in the case of a certification trade mark) in relation to goods or services certified by the proprietor; or
(b) that the article or substance was formerly manufactured under a patent that a period of two years or more after the cesser of the patent has elapsed and that the said word is the only practicable name or description of the article or substance, the provisions of sub-section (2) shall apply.
(2) Where the facts mentioned in clause (a) or clause (b) of the proviso to sub-section (1) are proved with respect to any words, then,—
(a) for the purposes of any proceedings under section 57 if the trade mark consists solely of such words, the registration of the trade mark, so far as regards registration in respect of the article or substance in question or of any goods of the same description, or of the services or of any services of the same description, as the case requires, shall be deemed to be an entry wrongly remaining on the register;
(b) for the purposes of any other legal proceedings relating to the trade mark,—
(i) if the trade mark consists solely of such words, all rights of the proprietor under this Act or any other law to the use of the trade mark; or
(ii) if the trade mark contains such words and other matter, all such right of the proprietor to the use of such words, in relation to the article or substance or to any goods of the same description, or to the service or to any services of the same description, as the case requires, shall be deemed to have ceased on the date on which the use mentioned in clause (a) of the proviso to sub-section (1) first became well known and established or at the expiration of the period of two years mentioned in clause (b) of the said proviso.
Rule and business relevance
The proviso addresses established generic-type trade use by persons outside the proprietor’s described trade connection, or a former patent where at least two years have elapsed and the word is the only practicable name. Subsection (2) distinguishes a mark made solely of the words from a composite mark containing other matter.
Limits and related provisions
Do not assume that one competitor’s description automatically cancels a registration or that every composite mark disappears entirely. Prove the statutory facts and identify the relevant words, goods or services and date.
Hypothetical business example
Hypothetical example: An industry increasingly uses a brand word as the established name of a product. The proprietor and challenger assess the statutory evidence and whether the mark consists solely of that word.
Practical decision flow
Identify the words and nature of established trade usage.
Test the relevant proviso condition, including the former-patent timing where applicable.
Separate the whole word-only mark from rights in words within a composite mark.
Applying the Act and current procedure
Read the statutory rule together with the applicable Trade Marks Rules, current Registry directions and the facts of the particular mark. Forms, fees and procedural requirements should be checked against their current official source before filing.
Practical checklist
Do
- Identify the words and nature of established trade usage.
- Test the relevant proviso condition, including the former-patent timing where applicable.
- Separate the whole word-only mark from rights in words within a composite mark.
Avoid
- Do not assume that one competitor’s description automatically cancels a registration or that every composite mark disappears entirely. Prove the statutory facts and identify the relevant words, goods or services and date.
Glossary
- Established trade use
- The well-known and established descriptive use specified in the proviso.
- Word-only mark
- A mark consisting solely of the words whose rights are in question.
Frequently asked questions
Does any later descriptive use alone invalidate a mark?
No. The opening rule says otherwise; the proviso’s conditions must be proved.
What is the former-patent condition?
At least two years after patent cessation and the word being the only practicable name or description, as stated.
Are composite marks treated exactly like word-only marks?
No. Subsection (2) distinguishes rights in the whole mark from rights in the relevant words.
Need help applying this provision to your situation?
Contact BizeneedLast updated 10 October 2026