The primary and fundamental purpose of trademarks is to act as brand identifiers creating a distinction between the goods & services provided by one person from that of the other’s in the market. This consequently necessitates that the trade mark so adopted be distinctive and capable of aiding differentiation amongst similar set of goods & services rendered by several different businesses in the market.
Take for instance the adoption of ‘Mahindra’ for cars which helps distinguish cars of another manufacturers such as ‘TATA’ and ‘Maruti Suzuki’ from those originating from the house of Mahindra and Mahindra.
Thus, the provisions of Trade Marks Act, 1999 provide for certain characteristics and criteria that a mark must possess and qualify to become registrable. Under the Act, a trade mark can be refused registration on the below mentioned categories of grounds:
1. Absolute grounds provided under section 9 of the trademark Act
2. Relative grounds provided under section 11 of the trademark Act
In the Article, we shall explore the absolute grounds for refusal of trade mark, provided under the section 11 of the Trade Marks Act, 1999.
Section 11 Of The Trade Marks Act (1):
This subsection provides that a trade mark shall not be registered in the following case:
- If it is identical to an earlier trademark or similar to goods/ services covered;
- If it is similar to an earlier trademark or identical to goods/ services covered,
In such a way that it is likely to confuse the public by associating it with the earlier mark.
Explanation:
According to Section 11 of the Trade Marks Act (1) , a trademark seeking registration should not be registered if it is identical or similar to the already existing mark and has similar goods or services and the similarity is such as is likely to cause confusion and association of the already existing trademark with the trademark seeking registration.
Illustration:
A person seeking registration of the trademark ‘COCA-COLA’ for soft drinks would not be granted registration for the same as the mark is identical and similar to the already existing ‘COCA-COLA’ mark being used for the same goods. If the registration will be granted to the new ‘COCA-COLA’ mark by different person or entity, it would cause confusion amongst the public and the public is likely to associate the goods bearing the new ‘COCA-COLA’ mark with that of the already existing mark.
Section 11 Of The Trade Marks Act (2):
Section 11 of the Trade Marks Act (2) provides that a trademark applied for registration which is similar to earlier trademark can still be refused registration if the goods or services provided under both the marks are different. This clause, however, applies only if the already existing trademark is a well-known mark and the use of the new trademark applied for registration might take unfair advantage, diminish the distinctive or harm the reputation of the already existing mark.
Illustration:
A person seeking registration of the trademark ‘NIKE’ for different goods (lets say, food products) would not be granted registration as the trademark ‘Nike’ is already a well-known trade mark in India. Allowing registration might result in unfair trade advantage, diminishing the distinctiveness of a well-known mark ‘Nike’ or harm the reputation of the same.
Section 11 of the Trade Marks Act (3):
According to section 11 of the Trade Marks Act (3) , a trademark is not entitled to registration if the trademark seeking registration causes passing off (meaning, if a trademark seeking registration infringes the rights of an already existing unregistered trade mark being used since prior date) or violates the rights protected under the Copyright Law.
Illustration:
‘A’ has been using the mark ‘Breezy shoes’ for footwears for several years, although not registered but it has gained recognition in the market. Later, ‘B’ applies for registration of the trademark ‘Breezy footwear’ for similar set of good i.e. footwears. Even though A’s mark is not registered under the Trade Marks Act, he is entitled to protect his mark under section 11 of the Trade Marks Act (3)(a) by virtue of law of passing off.
A company tries to register a trademark featuring a stylized version of the Mona Lisa painting as part of its logo for a fashion line. The Mona Lisa is an iconic painting by Leonardo da Vinci and is under copyright protection. Even though the company might argue that their design is original, the use of the Mona Lisa image or its likeness infringes on the copyright of the original artwork, as it is a protected creative work. Since the use of the image would violate copyright law, the Registrar would refuse the application for the trademark under Section 11 of the Trade Marks Act (3)(b), as it would be unlawful to use an image that is already protected by copyright.
Section 11 of the Trade Marks Act (4):
Explanation:
According to section 11 of the Trade Marks Act (4), if the proprietor of the earlier trademark consents to the use of the new trademark applied for registration, the same may be granted registration under special circumstances under section 12.
Illustration:
‘A’ owns a registered trade mark “Swift Mobile” for mobile phone. While, ‘B’, a new company, applies to register the trade mark “Swift Mobilez” for the same products i.e. mobile phones. B approaches A and requests permission to use the trade mark “Swift Mobilez” for their products. After negotiations, A agrees to give its consent to B for registering “Swift Mobilez”. In this case, the Registrar considers the consent provided by Company A and will allow the registration of “Swift Mobilez” under Section 11(4) of the Trade Marks Act.
Section 11 of the Trade Marks Act (5):
According to section 11 of the Trade Marks Act (5), no trade mark shall be automatically refused registration on the grounds of similarity as given under section 11 of the Trade Marks Act (2) or on the grounds of passing off or violation of the Copyright Law as given under section 11 of the Trade Marks Act (3), if no objections are raised on these grounds in opposition proceedings by the person filing the notice of opposition.
Illustration:
A owns a registered trademark ‘TechGadget’ for electronics. Later, B applies for registration of the mark ‘TechGadget Pro’ for mobile accessories. The B’s mark ‘TechGadget Pro’ is similar to A’s mark ‘TechGadget’ and the same could cause confusion. Despite the similarity, the mark of the B will be granted registration if no notice of opposition will be filed by the A.
Section 11 of the Trade Marks Act (6):
Section 11 of the Trade Marks Act (6) provides the factors which the Hon’ble Registrar must consider to determine any trademark as a well-known mark. Accordingly, the Hon’ble Registrar must consider:
1. Public recognition of the trade mark, especially in India
(Illustration: Nike is widely recognized across India due to years of advertising through TV ads, sponsorships, and influencer endorsements)
2. Since how long and in how many regions the mark has been used. The wider and longer the use, the stronger the case for the mark being well-known.
(Illustration: Nike has been selling its products in India for over 20 years, covering all major cities and rural areas through extensive distribution)
3. Since how long and in how many regions the trademark has been promoted, including, advertisements, publicity, etc.
(Illustration: Nike has been widely advertised all over India for over 20 years)
4. Since how long and in how many regions registration or any application for registration of that trade mark under this Act has been used
(Illustration: Nike has registered its mark in various classes across India and many other countries for footwear, clothing, and sports equipment)
5. The history of how the trade mark has been protected in legal proceedings, particularly where the mark has been recognized as well-known by courts or the Registrar.
(Illustration: Nike has successfully enforced its trade mark rights in multiple legal cases where it was recognized as a well-known trade mark, preventing infringement)
Section 11 of the Trade Marks Act (7):
In addition to the factors provided under section 11 of the Trade Marks Act (6) to determine a trademark as well-known mark, the Hon’ble Registrar also takes into consideration the factors provided under section 11 of the Trade Marks Act (7) of the Act. Section 11(7) of the Act provides following factors:
1. Consumer Base: the number of consumers currently use or may potentially use the goods or services under the trade mark
(Illustration: Coca-Cola is a globally recognized brand with millions of actual consumers across the world, and the number of potential consumers is vast, especially in emerging markets)
2. Channels of Distribution: the number of intermediaries, such as distributors, suppliers, retailers, or agents, are involved in getting the goods or services to consumers
(Illustration: Apple’s distribution channels involve numerous intermediaries, including major retail stores (like Best Buy or Walmart), online marketplaces (Amazon), and mobile carriers)
3. Business Circles: business sectors or industry groups that engage with or use the goods or services that the trade mark applies to.
(Illustration: Microsoft’s Windows operating system is widely recognized within the technology and software industries, with businesses, IT professionals, and developers being highly familiar with the mark)
Section 11 of the Trade Marks Act (8):
According to Section 11(8) of the Act, if a trade mark has been determined as a well-known trade mark by virtue of any court or registrar, then the registrar shall consider it as a well-known trademark.
Illustration: Suppose there is a well-known trademark, namely “Frooti”, which is globally recognized as a beverage. Now, another brand, namely “Fruti”, seeks to get registered for snacks. In such a case, the Registrar is bound to refuse the mark for the same because there already exists a globally recognized well-known trademark with the similar name.
Section 11 of the Trade Marks Act (9):
Section 11(9) of the Act outlines factors that are not required to be considered by the Hon’ble Registrar while determining any trademark as a well-known trademark. According to section 11(9) of the Act:
1. There is no requirement of use of a trademark in India to determine a trademark as a well-known mark in India
(Illustration: The trade mark Nike have obtained widespread recognition through advertising and international promotion. Even if the trade mark Nike has not been actively used in India, it can be considered well-known in India due to its international recognition)
2. There is no requirement for a trademark to be registered in India to determine a trademark as a well-known mark in India
(Illustration: The trade mark ‘Betterwe’ though not registered in India can still be determined as well-known owing to its widespread use and brand recognition.)
3. There is no requirement for application for registration of the trade mark to determine a trademark as a well-known mark in India
(Illustration: A luxury brand like ‘LOUIS VUITTON’ might not have filed application for registration for every of its trade mark in India, but the same can still be determined as well-known mark in India owing to its brand’s strong presence in the global fashion market and its association with luxury)
4. There is no requirement that a trade mark is well-known, registered or application for registration of such trade mark has been filed in any part of the world other than India to determine a trademark as a well-known mark in India.
5. There is no requirement that a trade mark well-known to the public at large in India to be determined the trade mark as a well-known mark in India.
(Illustration: The trademark ‘Rolls-Royce’ may not be known to the average consumer in India but it is highly recognized within luxury car market. This makes Rolls-Royce a well-known trade mark in India despite not being recognized by public at large)
Section 11 of the Trade Marks Act (10):
Section 11 of the Trade Marks Act (10) outlines important guidelines for the Registrar to follow while reviewing a trade mark registration application, especially if a notice of opposition has been filed against it. The section provides two essential factors to be considered by the Hon’ble Registrar:
1. Protecting well-known trademarks from similar or identical marks- The Registrar is required to protect a well- known trade mark from being registered or used by others, especially if the new mark is identical or confusingly similar to the well-known trade mark.
(Illustration: If an applicant applies for registration of the trade mark “Coca-Cola King” for the soft drinks, the Registrar will most certainly reject the application due to the mark’s similarity to Coca-Cola trade mark which is worldwide recognised and a well-known trademark. Even if the applicant plans to use the mark Coca-Cola King for different goods, there is a considerable chances of confusion)
2. Bad Faith involved in the application or opposition, affecting the rights relating to the trade mark- When deciding on a trademark application and any opposition that is filed against it, the Registrar must also examine any bad faith on the part of either the applicant or the opponent. Bad faith refers to instances in which an application or opposition is made with dishonest, fraudulent, or inappropriate intentions.
(Illustration: Apple Inc., the owner of the well-known trade mark “Apple” used for electronics, comes across an application for the trade mark “AppleMart” in the same class of goods (electronics). If the Hon’ble Registrar finds out that the trade mark “AppleMart” was intentionally filed by an individual seeking to profit from Apple’s reputation without intending to use the mark in good faith, the Registrar may rule that the application was filed in bad faith and reject it.
Alternatively, if the Hon’ble Registrar finds out that the opponent has filed the notice of opposition merely to impede an applicant’s registration merely for personal reasons or with the goal to hinder rather than preserve genuine rights, this is considered bad faith, and the notice of opposition may be rejected)
Section 11 of the Trade Marks Act (11):
According to section 11 of the Trade Marks Act (11), if a trade mark was registered in good faith and disclosed material information to the Registrar, or if a trade mark was acquired through good faith use prior to the enactment of this Act (30 December 1999), the registration or use of that trade mark will not be affected by the fact that it is identical or similar to a well-known trademark.
Illustration
Brand X has been using the trade mark “EcoClean” for cleaning products since 1889. In 2010, a multinational corporation with the well-known trade mark “CleanEco” challenges X’s use of trade mark “EcoClean”, alleging it is similar to its worldwide recognised trademark. However, because X used the mark in good faith prior to the enactment of the Trade Marks Act of 1999, “EcoClean” remains valid and protected under Section 11 of the Trade Marks Act (11). Despite the fact that the trade mark “EcoClean” of the ‘X’ is similar to “CleanEco”, ‘X’ can continue to use it
CASE LAWS
1. Twentieth Century Fox Film Corporation vs The Registrar
https://indiankanoon.org/doc/125674682
The Hon’ble Delhi High Court held that mere phonetic resemblance is not sufficient to consider marks identical or similar. There has to be a likelihood of confusion caused among the public.
This case addresses that phonetic similarity alone cannot be the sole reason to conclude that two marks are similar, though it can contribute to the comparison. The emphasis must be on the fact that the similarity is strong enough to confuse the public, with respect to concerned goods and services.
2. Toyota Jidosha Kabushiki Kaisha vs M/S Prius Auto Industries Limited
https://indiankanoon.org/doc/163092085
In this case, the trademark ‘Prius’ has gained significance long before the defendants started using and got the mark registered. However, relying on territoriality principle, it makes it necessary for the plaintiff to provide substantial evidence proving that their mark “Prius” has also acquired considerable goodwill in the domestic market of India.
The Hon’ble Supreme Court, in this case, emphasizes that the goodwill of a mark must be proven in the domestic market because global goodwill is not sufficient to prove establishment in the domestic market, too. It also focuses on the fact that even if the knowledge of mark exists domestically, then it must be prominent, substantial and widespread among the relevant section of the domestic market.
CONCLUSION
From the aforementioned explanation, a clear understanding of the applicability of section 11 of the Trade Marks Act, 1999 can be drawn. Section 11 acts as a strong provision, barring the registrability of trademarks which are identical or deceptively similar with the prior existing trademarks.