Relative Grounds for Refusal of Trademark Registration

Introduction

A trademark, considered as a form of intellectual property, is intended to prevent others from using a company or individual's goods or services without their permission. It is a recognizable insignia, phrase, word, letter, symbol, or combination of these words that denotes the specific goods and services legally distinguishable from all others of its kind. It exclusively identifies a product as belonging to a particular company/business/association and recognizes its ownership of the brand.

Besides the benefits of exclusivity bestowed by the trademark adoption, occurrences of infringement, unauthorized use of the trademark, and using a confusingly similar trademark to cause confusion can be witnessed excessively. Therefore, it has become imperative for the trademark owners to get their marks registered under the Trade Marks Act, 1999 ("Act"), as the Act was enacted to curb these issues and protect the rights of the trademark owners and consumers, fostering the promotion of trade and commerce. There are certain grounds followed by the registrar as a ground for refusal of the registration of the trademark, which include relative and absolute grounds of refusal as per the Act.

Registration of the Trademark

In India trademarks undergo registration process as per the guidelines laid out in the Trademarks Act of 1999. Trademark registration is an important legal process that grants exclusive rights to a business or individual over the use of its brand or logo. Primarily, the registration process involves filing an application with the Indian Trade Marks Registry. Applicants file their requests with the Registrar of Trademarks under TM-A by paying the requisite fees, after which it is the Trademark Registry who evaluates the submissions for potential approval or rejection based on the Act's provisions under Sections 9 and 11 with respect to absolute and relative grounds for refusal and, therefore, prepares an examination in writing and sends a copy of the examination report to the applicant within 30 days.

Relative Grounds for Refusal

Section 11 deals with the relative grounds for refusal of registration. The absolute grounds of refusal prevent registration prima facie, whereas relative grounds for refusal deal with the mark in connection to other earlier marks. This section consists of 11 clauses, which explain the specific points to consider mentioned below:

Confusingly Similar Trademark

Section 11(1) of the Act establishes the ground for refusal based on the similarity of the trademarks, including phonetic, visual, or conceptual similarity, which entails the likelihood to cause confusion amongst the public. If a proposed trademark is identical or too similar to an existing trademark for similar goods or services and it may lead to confusion among the public, then the registrar will refuse the registration of the proposed trademark for protecting the rights of the earlier trademark owner. In the case of RAJ KUMAR SHARMA vs. SANDEEP KUMAR & ANR. 2023/DHC/000647,the Delhi High Court held that "a valid relative ground of refusal can be raised when the opponent's mark was "applied" prior to the subject mark and owing to similarity between the marks there is a likelihood of confusion."

Unfair Advantage of the Well-Kknown Trademark

Clause 2 of Section 11 of the Act deals with the ground for refusal of registration of trademark, predicated on the attempt of the proposed trademark, to take unfair advantage or be detrimental to the distinctive character of the reputed well-known trademark. The same was stated by the court in the matter of The Indian Hotels Company Ltd vs Ashwajeet Garg CS (OS) 394/2012The Court emphasized on Section 11(2) of the Trademarks Act, 1999 and stated that "In terms of section 11 of the Act, a mark which is identical or similar to an earlier trade mark cannot ordinarily be registered" and highlighting the another case of Sanjay Chadha Trading and Anr. v. Union of India and Anr., W.P.(C)- IPD 12/2021whereinthe Court held that "any trademark which is similar to any well-known trademark cannot be registered even if the goods associated with the trademark are widely different in nature".

Based on Legal Protection

As per the Clause 3 of Section 11, the trademark is not entitled to registration if the trademark is barred from being registered by virtue of law, specifically the law preventing the passing off of the unregistered trademark or copyright laws protecting unregistered trademarks. The Hon'ble Supreme Court, in the case of Honda Motors Co.Ltd V Charanjit Singh & Others 2003 PTC 261, restrained the defendant from using the impugned trademark 'HONDA' in respect of pressure cookers or any goods or any other trade mark/marks, which are identical with and deceptively similar to the trade mark HONDA of the plaintiff. The Court also observed that "the case of the plaintiff is in fact based on passing off action."

Registration under Special Circumstances

Section 11(4) of the Act allows registration of the trademark under special circumstances mentioned in Section 12 i.e. if the owner of the earlier trademark consents to the registration of the proposed trademark, the registration is allowed. This provision highlights the importance of obtaining consent to overcome potential refusal based on similarity or unfair advantage. The court reiterated Section 11(4) clearly in the case Sun Pharma Laboratories Ltd v. Finecure Pharmaceuticals Ltd & Ors. I.A. 13153/2023,stating that "the remainder of Section 11 would not operate to prevent the registration of a trademark if the proprietor of the earlier trademark or other earlier right consents to the registration and, as the provision proceeds to clarify, in such case, the Registrar may register the mark under special circumstances under Section 12. The power of the Registrar to register marks in "special circumstances", as conferred by Section 12 is not, therefore, unfettered, and left to the absolute whim of the Registrar."

No objection raised in opposition proceeding

Clause 5 of section 11 deals with the circumstances where a proposed trademark shall not be refused registration if the proprietor of the earlier registered trademark does not raise any objection on any ground during the opposition process.

Determining Well-Known Trademark

Clause 6 talks about the power held by the registrar to consider any factors that he deems relevant for determining the well-known trademarks, whereas Clause 7 provides precise criteria for said factors. Certain special factors taken into account by the registrar are as follows:

a. The knowledge and recognition of that trademark in India and amongst the public in the above relevant clauses.

b. The duration, extent, and geographical area in which the trade mark is to be used.

c. The duration, extent, and geographical area in which the promotion of the trademark is done.

d. The record of successful enforcement of rights, if the mark has been recognised as a well-known trademark by any court or registrar.

And the relevant criteria for said factors as provided under Clause 7 can be noted based onthe number of actual or potential consumers, the number of persons involved in the channels of distribution of the goods or services and the business circles dealing with the goods or services, to which that trademark applies.

The Hon'ble Delhi High Court placed emphasis on Section 11(6) of the Act in the matter Rolex SA v. Alex Jewellery Pvt. Ltd. 2009 (41) PTC 284 (Del) and opined that "upon testing the trademark of the plaintiff on the touchstone of the ingredients of the said provision also, I find the said trademark of the plaintiff to be satisfying the test of a well-known trademark."

In the case where the abovementioned conditions and relevant criteria have been evaluated and taken into account and the trademark has been determined as a well-known mark in at least one relevant section of the public in India by virtue of any court or registrar, then the registrar shall consider the mark as a well-known mark as mentioned in clause 8 of Section 11 of the Act. The Delhi High Court reiterated the same in the case Tata Sia Airlines Private Limited v. The Union of India W.P(C)-IPD 64/2021, and stated that "Section 11(8) of the Act is mandatory, and therefore, where there was a declaration by the court of a Well Known Trade Mark, the Registrar was bound to proceed with the recording the well-known trademark in the List and cannot initiate a redetermination process"

Factors not required for determining the well-known trademark

Section 11(9) of the Act enunciates the factors which are not required by the Registrar to be considered for determining the well-known mark, namely-

a. The trademark has already been used in India.

b. If the trademark is already registered or an application has been filed for registration.

c. If a trademark is registered or well known or for which an application has been filed for registration outside India.

d. If a trademark is well-known to the public at large in India.

Obligations of Registrar for considering Trademark Application

With respect to Clause 10, in order to consider an application for registration of a trade mark and opposition filed, the Registrar shall protect the well-known trademarks from identical or deceptive trademarks and take into account the malafide intention involved in the application or the opponent raising an objection.

The Madras High Court in the case of M/S. N. Ranga Rao & Sons, Mysore v. M/S. Shree Balaji Associates, Bangalore & Others (2013) 01 IPAB CK 0008 stated that "the petitioner's mark is a 'well-known' trademark within the meaning of Section 2(1)(zg) and Section 11(8); so, it is entitled to be protected under Section 11(10) of the Act."

Registration of the Mark in Bonafide Manner

Clause 11 of Section 11 of the Act asserts that if a trademark is registered before the commencement of this Act and it is identical or similar to a well-known trademark, however, used in a bona fide manner by disclosing the material information to the registrar, then nothing in this Act shall affect the validity of the registration of such a trademark.

Conclusion

In conclusion, the trademark registration process in India requires a deep understanding of the grounds for refusal outlined in the Trademarks Act of 1999, and navigating the relative grounds of refusal of trademarks is pivotal in ensuring the successful registration of your trademark. 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 to prove that his mark is distinctive from other similar marks and not likely to cause any confusion amongst the consumers. These grounds provide a way to avoid refusal of registration and also state precautions for the same, which include conducting a thorough search of existing trademarks in the relevant industry and ensuring that the trademark is distinctive and not likely to cause confusion among consumers. By being mindful of these restrictions, businesses and individuals can develop trademarks that not only represent their brands effectively but also comply with the legal framework governing trademark registration in India.