Abstract The paper addresses the following questions: can the word ‘Dinosam’ (a herbicide listed in the Prohibited List (PL) published by the Indian Trade Marks Registry) be used as a pre‐cursor to register the word ‘Dinosaur’? Is registration of the word ‘Dinosaur’ permissible within the tenets of protection under the Indian trademark law? What would change if the registration of the word ‘Dinosaur’ is sought for a pharmaceutical product? How would the legal position change when registration is sought for invented words like Dinosym or Dinosure instead of ‘Dinosaur’? (The Prohibited List contains names of medicines/drugs; one example is ‘Dinex.’ Dinex tablet is used to treat HIV and is an antiretroviral, whereas Dinex syrup is used for very different purposes as it was commonly used for the diagnosis or treatment of anaphylactic shock, breathing illnesses, allergies due to food.) This paper examines the grant of trademark rights to entries listed in the PL in India. The study is specific to pharmaceutical products to analyse its status based on the decision of the Trade Marks Registry. The registration, refusal, abandonment or opposition provide insights into the decision making of the Trade Marks Registry Indian Patent Office in matters related to the entries listed in the PL. This is relevant in the context of a duty of extra care required for pharmaceutical trademarks. The Indian Trademarks Act, 1999 specifically prohibits registration of names mentioned in the PL. However despite the express prohibition we see a trend of frequent registration of same and similar names arising from the PL. Hence, the study concludes that despite the presence of names in the PL, the Trade Marks Registry regularly grants similar/same trademark rights, and that in case of pharmaceutical products is a worrying trend.
Sebastian et al. (2025) studied this question.