The article is written by Kaustubh Phalke. This exhaustive article provides a legal analysis of the relative grounds for refusal to register a trade mark under the Trade Marks Act, of 1999. The author has tried to briefly introduce the topic, the meaning of trade mark, registration of trade mark and the advantages of registration of a trade mark, and the grounds for grounds of refusal for trade mark registration. This also contains the meaning of the relative grounds for refusal of registration of a trade mark under the Act and a clause-wise explanation of the provision. Further, the author has discussed the ways to avoid such ground and its defences. The article also consists of leading case laws ending with a conclusion and FAQs.
Table of Contents
Introduction
Trade mark is an ancient concept. In early times, businessmen used to use special and unique marks that were made by themselves or by local craftsmen. They used to mark them to make them innovative and creative and to distinguish them from the products in the market that are beyond their localities. Most businessmen used to engrave their signatures and then export them. These marks started to play a huge role in the increase in their sales and they gradually became an important factor for international trade and market-oriented economies.
A trade mark is a unique mark that a trader or a businessman uses to distinguish his product from other products in the market. It gave consumers an insight into the quality, quantity, and other features of the product.
Seeing this, many other competitors started using the same marks which confused the consumers. Hence the Trade Marks Act, of 1999 (hereinafter referred to as the Act) was enacted to curb this problem, protect the rights of consumers and businessmen, and promote trade and business. Section 9 of the Act dealt with the absolute grounds for the refusal of registration of the trade mark and Section 11 dealt with the relative grounds for the refusal of the trade mark. Relative grounds are those grounds that arise out of the conflict with another party’s trade mark or his existing rights over it. The provision prescribes that any mark that resembles an already registered trade mark under Section 23 of the Act or is employed for similar goods won’t be allowed for registration.
The article deals with Section 11 of the Trade Marks Act, 1999 which states the relative grounds for the refusal of registration for trade mark.
What is a trade mark
A trade mark under Section 2(1)(zb) of the Act is defined as a unique mark that can be represented graphically and is used by enterprises to make their product different from others. It is a type of intellectual property i.e., a property which is created by using intellect and is intangible in nature. These marks include shape, size, or some special combination of colours or any other such creative feature by which a consumer gets assured about the product quality as well as quantity. This builds his trust in the enterprise and eventually helps the seller as well as the consumers to choose the best product as promised by the enterprise.
Trade marks may include a brand name, product, company name, or any logo. Most enterprises use words and pictures or logos to distinguish their products whereas anything which can be represented graphically can be used as a trade mark as per law. These are valuable assets of any business and hence are protected by the law, however having a trade mark is not compulsory for any business, but it is always advisable to have a registered trade mark in order to protect and get relief for the violation of rights. Another benefit of having a trade mark is to mark all the services or products in the name of the proprietor and prevent the goodwill and loss of reputation due to counterfeit products.
A trade mark is valid for 10 years only but can be renewed for an indefinite number of times by paying additional fees for the same. These give the owner of the trade mark personal rights for the protection and use of this mark. It is governed by the Trade Marks Act, of 1999 which is in conformity with the Paris Convention, of 1883 and the TRIPS agreement, of 1995.
Registration of a trade mark
Registration of a trade mark refers to getting it registered under the Act. Chapter 3 of the Act deals with the procedure and the duration of the registration of a trade mark and Section 23 of the Act deals with the registration of the trade mark.
The following are the rights which arise from the registration of a trade mark:-
Exclusive right to use the trade mark
The owner of the trade mark holds the statutory right to prevent any other competitor from using its trade mark. It works as a legal shield for the owners of the trade mark. Trade marks encapsulate the essence of the brand and the quality supplied by it hence the trade mark owner gets an exclusive right to use the mark only for his product in the market. Other competitors in the market cannot use a mark that resonates with a registered trademark. On using such deceptive marks they can be heavily fined by the courts. The owner of a registered trade mark gets relieved from the liability to prove the authenticity and legality of the mark every time. This exclusive right maintains and increases the trust of the customers in their products and brands.
Presumption of validity and non-disputability
This presumption means that a registered trade mark is considered to be valid and legally enforceable. In a complex web of legal battles where every point can be argued endlessly, this presumption gives a refreshing certainty. They get an evidentiary benefit and preference through this. The registration of a trade mark along with this presumption simplifies the process of enforcement of rights in the court. This presumption helps the owners of the trade mark to stand out in a favourable position on the legal battlefield.
Global protection and public notice
When a trade mark is registered then the identity of the mark is elevated for legally recognised status and many other benefits, one of which is the trade mark being recognised at the global and national level i.e., the rights give protection within the boundaries of the country and beyond that as well.
The registration gives legal protection to the trade mark in the jurisdiction in which it is registered. It is important nowadays to protect the goodwill of the business and brand uniqueness whereby the registration keeps both factors untarnished.
The registration of the trade mark is brought to the public notice which has the dual effect of reducing the chances of the trade mark being used by the competitors to tarnish the brand reputation and alerting the competitors from using similar marks preventing costly and time-consuming legal battles. More than just a legal tool, registration is a strategic move to protect the goodwill and enhance the business returns.
The registration of a trade mark has several advantages such as exclusive protection of rights by the law, one can use the same trade mark for several products of the same category which are mentioned in the application, helps in maintaining goodwill and brand value, creation of a valuable intangible asset for the enterprise, and global recognition. It builds a good market for the product and attracts customers. It simplifies the process of execution of rights on the infringement of the trade mark rights, the owner of the trade mark gets relieved from presenting extensive shreds of evidence to prove his innocence. The registration makes the process expeditious and helps the owner to get a legally secured environment.
The registration of a trade mark is not compulsory in India but to secure the right and to prevent the trade mark from being used by other parties, the registration is mandatory. However, action against the passing of the trade mark (using a registered trade mark for its own benefit) can be taken without registering a trade mark. An important factor that is to be proved in this case is the malafide intention of the offender but to get relief under this Act, the registration makes the case stronger in favour of the owner of the mark. It embarks on the journey of the business for the international voyage by increasing its brand value at the global level and constantly pushing the business to grab bigger and better opportunities. The goodwill of the business gets enhanced leading to miraculous benefits for the business.
Amplifying compensation measures and remedies
The registration of a trade mark improves the legal position of the victim who has approached the court on the passing of his trade mark. It is a valuable asset for the company therefore protecting it becomes more crucial in every way. By registering the trade mark, the owner gets legally powerful by obtaining certain rights that give the mark its uniqueness and the owner can then apply for an injunction i.e., stop using the mark for profits with immediate effect. This injunction protects the reputation of the owner of the trade mark.
One of the most potential benefits of the registration is enhanced compensation for infringement of rights. This compensation may include lost sales, damage to reputation, and costs incurred to indemnify the effects of the infringement. The owner gets a right to statutory compensation.
These enhanced compensations give the owner a sense of security that their rights are protected under the statute and secondly, they act as power deterrents for the infringers to think thrice before committing any such act because of the financial consequences they will be facing for their acts.
Trade mark acts more as a shield than merely a mark. It provides businesses confidence that their rights are not only recognised but powerfully defended keeping in mind their losses, reputation, sales, etc.
Prevents unfair competition and reduces the chances of trade mark-related disputes
Registering a trade mark works as a brahmastra in the arsenal for the owner of the trade mark. It provides the owner with some unbeatable weapons to combat trade mark infringement and unfair competition.
Unfair competition means to gain using unethical means such as false advertising, and deceptive methods of promoting the product. This has dual effects i.e., the reputation of the businesses is hampered and the buyers are trapped for inferior products and services. By registering the trade mark, the businessman can obtain an edge over unfair competition and ultimately reduce the chances related to the trade mark.
It makes a clear boundary and alerts them of the consequences of their acts through heavy fines and compensations and other dire consequences. Using similar trade marks can deceive customers and confuse them regarding the origin of the product leading to poor choice of inferior products and services. Registering a trade mark protects the business actively as well as passively. Actively, by maintaining the uniqueness of the mark, and passively, by protecting the rights of the owners and provisioning high compensation on infringement.
Refusal of trade mark registration
The Act does not discuss the grounds for registration of a trade mark rather it discusses the grounds for refusal of the same. It can be classified under two categories i.e., as per Section 9, the absolute grounds for the refusal of registration, and Section 11, relative grounds for the refusal of registration. It is mandatory for the registration of the trade mark to pass from certain grounds mentioned under Section 9 and Section 11 of the Act, which are mentioned in the later part of the article.
The absolute grounds for the registration of a trade mark are generally related to public policy. The objective of this provision is to secure the rights of the public as well as the owners of the trade mark. It protects the genuine and bonafide intention of the owners as well as the public. These are generally made on the inherent qualities of the mark. The absolute grounds for the refusal of a trade mark under the Act are as follows:-
Non-distinctive marks: If the mark resonates with the other marks in the market then it can be a ground for the refusal of registration of a trade mark. These marks are generally very generic.
Common marks used in established trade practices- The other grounds for refusal of registration of a trade mark are using signs and symbols that are currently being used to designate kind, quality, quantity, values, etc.
Deceptive marks or scandalous marks- These are the marks that can deceive the consumers of the product they want to purchase or are associated with. Deceptive marks can be one of the factors for loss in business and goodwill.
Obscene and offensive marks- Marks that are obscene or are offensive to any religious group or community are rejected from being registered under the Act. Obscene refers to vulgar or offensive imagery, immoral language, or design.
Customary marks or indications- Marks that have become an integral part of the current language cannot be used as trade marks. It includes bonafide and established trade practices in India such as units, symbols, etc.
Statutorily prohibited marks- The marks prohibited under the Emblems and Names(prevention from Improper Use) Act, 1950 cannot be used and registered as trade marks.
Certain derived shapes- The mark cannot be used as a trademark if it is of such a shape that has been derived from the nature of goods, a shape that is necessary to obtain a technical result or a mark that gives substantial value to the goods.
Relative ground for refusal of trade mark registration (Section 11)
After the submission of the application for registration, the application is examined by the registrar and calls for objection thereon, and any objections pertaining to the trade mark being registered are called upon. As discussed above the trade mark has to pass without any objection from absolute and relative grounds which are discussed under Section 9 and Section 11 of the Act respectively.
Relative grounds for the refusal of trade mark registration in this context mean if the registrar finds another mark that resonates with the mark presented for registration. The objections under the relative grounds are easier to deal with as compared to the objections under absolute grounds for refusal of registration of a trade mark. One can proceed with the registration if the objection under relative ground is clarified.
Clause-wise explanation of relative ground for refusal of trade mark registration (Section 11)
Section 11 consists of 11 clauses out of which:
Clause (1-3), covers the relative grounds for the refusal of registration of a trade mark.
Clause (4-5), covers the grounds on which the registration of the trade mark under special circumstances.
Clause (6-7), covers the points to be taken into consideration for determining a well-known trade mark in India.
Clauses (8-11), cover the procedures to be followed for the above-mentioned clauses.
The following is the clause-wise explanation of Section 11 of the Act:-
Clause (1)
Subclause (a) states that if the mark is identical to an earlier registered trade mark or has the similarity of goods and services covered by the trade mark then this becomes the ground for refusal for registration of a trade mark.
Subclause (b) states that if the mark is similar and not identical to the already registered trade mark or identical or similar to goods and services covered therein then this too becomes a ground for the refusal of the registration of the trade mark.
The objective behind this provision is to avoid confusion amongst the consumers and to protect their trust in the product they are associated with.
Clause (2)
As per this clause, if a trade mark is to be registered then the following two conditions need to be fulfilled:
- The trade mark in question shall not resonate with some other earlier registered trade mark.
- The goods and services covered therein are different from the earlier registered trade marks of some different proprietors, such an earlier registered trade mark is well known in India, and this stands as a ground for the refusal of the registration of the trade mark.
The objective behind this clause is to protect the unfair advantage obtained by the trade mark in question. This is also done to protect the distinctive character and any harm to the reputation of the earlier registered trade mark.
Clause (3)
As per this clause, a trade mark is not entitled to registration if the trade mark is barred from being registered by any law in India. Especially the law preventing the passing off of unregistered trade marks in India. It also protects the marks which are prevented from being registered by virtue of the Copyright, which is governed by the Indian Copyright Act, of 1957.
Clause (4)
As per this clause, the trade mark can be registered under special circumstances mentioned under Section 12 of the Act. If the proprietor of the earlier registered trade mark or the holder of any rights on this behalf gives his consent to the registrar to register the trade mark.
For the purpose of this Section, an earlier trade mark means the following:
- A registered trade mark
- An application bearing an earlier date of filing under Section 18 of the Act.
- An international registration is mentioned under Section 36E of the Act.
- A conventional application is mentioned under Section 154 of the Act, which is earlier than the trade mark in question.
- A trade mark that is well known before the date of application for registration of the trade mark in question.
Clause (5)
As per this clause, if the proprietor of the already registered trade mark does not raise an objection on any ground during the opposition process then the registration of the trade mark shall not be refused.
Clause (6)
The registrar of the trade mark holds the power to consider any fact that he deems relevant for determining whether the trade mark is a well-known trade mark or not. The following are some special facts to be considered while determining a well-known trade mark:-
- The knowledge and recognition of that trade mark in India and amongst the public in the above relevant clauses.
- The duration, extent, and geographical area to which the trade mark is to be used.
- The duration, extent, and geographical area at which the promotion of the trade mark is done.
- The record of successful enforcement of rights, if the mark has been recognised as a well-known trade mark by any court or registrar.
Clause (7)
The registrar while determining the trade mark as known or recognised in the relevant section of the public for the purpose of clause (6) shall also consider the following points :
- The number of actual or potential consumers of the goods or services.
- The number of persons involved in the channel of distribution.
- The business circle deals with goods and services.
Clause (8)
As per this clause, 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 trade mark for the purpose of this Act.
Clause (9)
The registrar while determining if the trade mark is well known or not, may overlook certain points if:
- The trademark has been already used in India.
- If the trade mark is already registered or an application has been filed for registration.
- If a trade mark is registered or well known or for which an application has been filed for registration outside India.
- If a trade mark is well-known in India.
Clause (10)
The clause discusses the duty and objective of this provision through two sub clauses which are as follows:
i) To protect well-known trade marks from identical or deceptive trade marks.
ii) To take into consideration the malafide intention involved in the application or the person raising an objection.
Clause (11)
If a trade mark is registered before the commencement of this Act and it is identical or similar to a well-known trade mark, it is used in a bonafide manner by disclosing the material information to the registrar then nothing in this Act shall affect the validity of registration of such trade mark.
Ways to avoid refusal of trade mark registration
Avoiding refusal of trade mark registration against the objections raised under Sections 9 and 11 is the most crucial step in the process of registration, the following are a few steps to avoid such objections :
By conducting a thorough research
The objection can be avoided by conducting thorough research and finding out the already existing trade marks in India. The research will also help the applicant in finding the pending application with an image. If an applicant feels that his trade mark resembles an already registered trade mark then he may change it beforehand and avoid such oppositions.
Using logos and devices instead of words
Using logos and devices can be beneficial instead of using words. Words can be similar or identical to an existing trade mark and the oppositions for words cannot be avoided so easily whereas using logos or devices can be helpful here as the uniqueness of the logo and colour may protect it from the oppositions raised.
Applying for a specific description of goods and services
It is indeed a difficult task to specifically mention certain products and services from one class of trade mark but this is the best way to deal with the objections raised under Section 11. If two similar trade marks are in two entirely different areas of business then there is no chance of them being deceptive to the public.
Defences available against the trade mark infringement
As we know, Section 11 deals with the relative grounds for the refusal of trade mark registration, following are some defences that can be taken by the defendant to be deemed as an exception for these grounds:
Bona fide use of the trade mark
One can take the defence of using the trade mark for a bona fide purpose. If the defendant proves that he has used or applied for the registration of the trade mark with the permission of the proprietor of the already registered trade mark. He can take the defence that he has no intention to fraud or deceit the customers and the proprietor. He can state that he is using the mark for descriptive purposes and for not any specific purpose.
Old user
The defendant can prove that he has been using the mark for longer than the proprietor who has raised the opposition. If he is using the mark for a longer time than the registered mark, he will be given the benefit of the same because of the goodwill of his business associated with the trade mark.
Non-identical or dissimilar from the registered trade mark
The defendant can prove that his trade mark is different from the proprietor’s trade mark. He can prove that his mark does not create any confusion for the customer and hence does not affect the business or goodwill of the proprietor. The court compares the phonetic similarity and features while giving a decision on such marks.
Non-use of the trade mark by the proprietor
If the defendant succeeds in proving that the proprietor is not using the trade mark for a long period of time, he will be given the benefit of this defence. The burden of proving the same is on the defendant. Further, he needs to prove that he is interested in using the mark with a good intention and that the mark is similar due to the non-use of the trade mark by the proprietor.
Delay in a suit or bringing no suit
The right of the plaintiff gets waived off once he delays filing the suit or does not file any suit or raises any opposition for the infringement of his trade mark rights. The person intending to register his trade mark will be given the benefit of this and allowed under special circumstances.
Relevant cases
Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Ltd. and Ors. (2017)
Facts of the case
The plaintiff, in this case, is a Japanese-incorporated automobile manufacturer. The respondents are also automobile manufacturers and respondent no. 2 and 3 are their partners. The fourth respondent is a private limited company in which 2 and 3 are the majority shareholders.
The plaintiff in the instant case brought a suit against the respondents for passing off their trade marks named Toyota, Toyota Innova, Toyota devices, and Prius, of which he was the prior user according to his claim. As per the plaintiff, his marks gained good popularity in India as well as in the global market, it was a well-known trade mark. He registered these trade marks in different classes from 1989-2003. He averred that the goods sold by the defendants were adversely affecting his goodwill and reputation, therefore, infringing his rights of trade marks.
The plaintiffs launched the world’s first commercial hybrid car in Japan in 1997 which was called Prius. It was also released in other countries later in 2000 and 2001. He registered his trade mark in different parts of the world until 1990 except in India. Later, the car was released in the Indian market in 2009 following the registration of his trade mark in India. As per his claim, Prius gained good popularity in India with due time and was considered to be a well-known trade mark as per law. He later discovered that the defendants were using and registered the same mark in auto parts and accessories and were using it for the purpose of carrying out their trade.
He approached the registry of trade marks to raise an objection against the defendants for using the plaintiff’s trade mark for unfair advantage without any authorization. The plaintiff’s reputation was hampered in this way. The plaintiff prayed for a permanent injunction against infringement of his trade mark rights.
Issues of the case
Whether the Appellate Bench of the High Court of Delhi right in reversing the order of the Trial Court while holding that the grant of injunction in favour of Plaintiff insofar as the Trade name ‘Prius’ is concerned was not justified?
Judgment
The Supreme Court in the instant case held that it is necessary for the court to determine whether there has been any spill over the reputation of the person asserting the passing of his trade mark or not. As soon as the claimant proves his goodwill in the market and its infringement thereby by the defendants then he must be relieved from the burden of proving the confusion arising out of the passing off of the trade mark. It is clear that the trade mark Prius of the claimant had gained good popularity in the market prior to the use and registration of the same by the defendants. But if the matter is to be governed by the laws of the land, it is the duty of the claimant to show that goodwill existed in the Indian market too.
As per the claimants, it is contested that the goodwill was acquired before the launch of the vehicle in the Indian market through the Internet and other publications, this will not be a safe basis to consider substantial goodwill of the brand in the Indian market seeing to the limited exposure to the internet in 2001. The Supreme Court agreed with the fact of lack of goodwill in the Indian market and the lack of information and knowledge of the brand amongst a significant section of the Indian population. The court agreed with the High Court of Delhi, which stated that the plaintiff’s brand had not acquired enough goodwill in the Indian market to proceed in the matter of passing off against a registered owner of the trade mark. Hence the matter was decided in the favour of the defendants.
M/S. Nandhini Deluxe vs. Karnataka Co-Operative Milk Producers Federation Ltd. (2018)
Facts of the case
The dispute, in this case, is regarding the trade mark ‘NANDHINI’ and ‘NANDINI’. The respondents in the instant case have been using this mark since 1985 and were producing milk and byproducts. The mark was registered under classes 29 and 30. The appellant was running a restaurant in the name of a similar trade mark ‘NANDHINI’ from the year 1989. The appellant applied for the registration of this mark for the foodstuffs sold in his restaurant. The respondents raised opposition to the registration of the trade mark on the grounds that it was deceptively similar, which was rejected by the registrar, and the registration was allowed in the favour of the appellant in 2007.
As per the respondents, the mark has gained substantial goodwill and is well associated with the people i.e., it is well known to the people who are associated with their brand due to its long and sustained use. The respondents contested that the mark is likely to deceive and confuse the customers which is against the profits of their business. They contended that using ‘NANDINI’ as a trade mark was their exclusive right. On rejection of these contentions, the respondent approached the intellectual property control board, Chennai to cancel the registration granted to the appellants. The plea of the respondent in front of the intellectual property control board was accepted and the High Court of Madras confirmed the same. The appellant approached the Supreme Court for relief.
Issues of the case
Whether such a registration in favour of the appellant would infringe the rights of the respondent or not?
Judgement
The entire case of the respondent revolves around the submissions that the adaptation of this trade mark by the appellant, which is phonetically similar to that of the respondent, is not a bona fide adaptation, and this clever device is adopted to catch up on the goodwill which has been generated by the respondent in respect of trade mark ‘NANDINI’. On that premise, the respondent alleges that the proposed trade mark ‘NANDHINI’ for which the appellant applied for registration is a similar trademark in respect of similar goods and, therefore, it is going to cause deception and confusion in the minds of the users that the goods in which the appellant is trading, in fact, are the goods which belong to the respondent. Precisely, it is this controversy that needs to be addressed in the first instance.
The Supreme Court did not sustain the conclusions of the Intellectual Property Appellate Board and the High Court of Madras that the marks would cause any deceptions or confusion to the public. The visual appearance of the trade marks is different and so is their relation which is entirely different products. It is difficult for an average man of ordinary would get confuse the products of the appellant with those of the respondents due to trade mark seeing to the manner in which they are traded by the appellant and the respondent. The items for which the trade mark is registered by the appellant do not belong to class 29 or 30 instead they belong to class 16, hence there is hardly any chance of deception or confusion.
In the case of Nestle India Ltd. vs. Mood Hospitality Pvt. Ltd.(2010) conditions which needed to be satisfied for applicability of Section 11(2) of Act were laid down :
(a) mark had to be identical with or similar to an earlier trade mark and is to be registered for goods or services which were not similar to those for which earlier trade marks were registered-both afore-mentioned conditions (forming Sub-section (a) and (b) of Section 11(2)) of Act, had to be satisfied and not just one, due to use of the word and between them.
(b) registered trade marks must have a reputation in India.
(c) use of the mark in question must be without due cause
(d) Such use must take unfair advantage of or be detrimental to the distinctive character or repute of the registered trade mark. All ingredients laid down in Section 11(2) of the Act, as explained by the Delhi High Court in Nestle India Ltd., had not been satisfied.
The court believed that the trade mark was not used with the intention of taking unfair advantage of the trade mark of the respondent. The registration of the appellant was allowed to keep a condition that the trade mark would not be given for milk or its products. The appeal was allowed.
Starbucks Corporation vs. Sardarbuksh Coffee and Co. and Ors. (2018)
Facts of the case
The facts of the case are that the plaintiff in this case is Starbucks, a well-known coffee chain in India. The Starbucks Corp. registered their trade mark and logo in 2001 in India. The defendants in the case are Sardarbuksh Coffee and Co., who started their coffee chain in 2015 with a logo depicting a commander wearing a turban and green coloured waves in his background, the logo was surrounded by a circular black band. The plaintiffs found it deceptive and asked the defendants to change it by a letter of demand. The defendants changed the colours of the logo and resumed their business in response to this letter. In 2018, the defendants started making business operations under the same name. Interestingly, the services provided by the plaintiffs and defendants were the same. The plaintiffs in this case filed a suit in the High Court of Delhi against the defendants for using a similar deceptive mark and hence infringing their rights.
Issues raised in the case
Whether the mark was deceptively similar to the plaintiff’s mark?
Judgment
The High Court held that for deciding the question of similarity and deceptiveness, the courts should consider certain tests such as tests of likelihood, confusion, goodwill, etc. The court decided the matter by determining that the similarity test can only be tested successfully by presuming the man of ordinary intelligence. If the two marks raise confusion for such a person then it shall be considered as deceptive. The court ordered the defendants to change the name of the business to Sardar-ji Buksh Coffee and Co., two shops were given exemption which were operational earlier.
The defendants made the required changes and the defendants were allowed to file a suit for passing off if someone else uses the term ‘Buksh’ in their trade mark.
Conclusion
Trade marks are the valuable assets of an enterprise and it is crucial to protect them and the rights available under the law regarding trade marks. Registration of the trade mark is not only a regulatory requirement of business but it is also known as the best evocative measure to adopt to safeguard business interest. However, sailing through the grounds of refusal for trade mark registration is of utmost importance in ensuring the successful registration of a trade mark. This helps to simplify the process of trade mark registration.
It is clear that there is no absolute rule that a mark that is devoid of distinctiveness cannot be registered as a trade mark. The trade mark pattern and usage are increasing globally and hence India should take all the necessary measures for the protection of the rights of proprietors and consumers globally.
The relative and absolute grounds play an important role in protecting the earlier registered trade marks, and their goodwill and deter the people from using it for the purpose of fraud or deceiving the customers. The Act is concerned with the distinguishing character of the mark used for the goods and services that are sought to be protected. The onus is always on the applicant that his mark is distinctive from other similar marks and not likely to cause any confusion amongst the consumers.
The law expects the users of the trade mark to be aware of the grounds for refusal to avoid any delay in registration. The judiciary plays an active role in protecting the rights of the proprietors and their goodwill.
Frequently Asked Questions (FAQs)
Can a trade mark be refused for registration because it resonates with the different marks associated with a different class of products?
Yes, a trade mark that is similar to some other mark in use can be refused for registration even if it belongs to some different class. The facts like well-known trade marks will be considered while refusing the registration. A well-known trade mark shall be protected beyond the scope of its goods and services.
What is an exception to Section 11 of the Trade Marks Act, of 1999?
An exception to Section 11 of the Trade Marks Act, is the permission or consent of the registered trade mark owner. In such a situation the registrar may allow the registration under Section 12 which is marked as special conditions.
What is the difference between absolute and relative grounds of refusal for registration of a trade mark?
The basic difference between both is that Section 9 talks about the absolute grounds of refusal whereas Section 11 talks about the relative grounds of refusal of the trade mark. Absolute grounds are those grounds in which a trade mark fails to show distinctive features from another trade mark or is identical or similar to another trade mark. Relative grounds are those grounds which are raised by the claimant claiming his rights to protect passing off his trade mark.
References
- https://www.bbau.ac.in/dept/Law/TM/11.pdf
- https://revistia.com/files/articles/ejms_v1_i2_16/Safet.pdf#:~:text=Absolute%20grounds%20of%20refusal%20prevent,in%20connection%20to%20other%20marks.&text=Sign%20may%20be%20refused%20for,of%20distinctiveness%2C%20descriptiveness%2C%20generic.
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