Sections 9 and section 11 of the Trade Marks Act 1999 provides for the grounds for refusing a trademark. Section 9 mentions the absolute grounds and section 11 deals with the relative grounds for refusal.
Absolute Grounds for Refusal of Registration
There are various principles which flows from Section 9 of the trademark Act, 1999. The mark of any goods or services which is not of a “distinctive character” cannot be provided trademark registration. Thereafter, the rule relating to “secondary significance” and “acquired distinctiveness” has been explained in different case laws in past years. One such case decided by Hon’ble Delhi High Court in ITC Ltd. v. Britannia Industries which settles the principle of acquired distinctiveness. The goods associated with a trademark do not have to be in market for a certain number of years for the trademark to have acquired distinctiveness. It is possible for a trademark to acquire distinctiveness over a short period of time and therefore it depends on from case to case. There is no fixed time frame for a trademark to have acquired distinctiveness.
In addition to that for a mark to get registration it should not consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade. However, if before the date of application for registration it has acquired a distinctive character as a result of the concurrent use then such factor can help the Applicant to get trademark registration.
The trademark can be refused to be registered if it is of nature to deceive the public or cause confusion among the public at large. It means a trademark should not be deceitful to the public. For instances, if a company starts to supply of water for drinking purpose by the name of BISLERI, it would be an infringement to use BILSERI trademark, since it is highly deceptive.
Further, the mark must not be offensive or hurtful to religious sentiments of any section of citizens of India. Marks which are likely to offend the public policy or morals of society are barred from registration. Moreover, if the marks’ use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 then also its registration can be refused.
Section 9(3) of the Act specifically deals with the concept of shape of goods in detail. The shape of goods which results from the nature of the goods or the shape of goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods are the grounds of absolute refusal under this provision.
For the purposes of the section 9 of the Act, the nature of goods or services in relation to which the trademark is used or proposed to be used shall not be a ground for refusal of trademark registration.
Relative Grounds for Refusal
Section 11 of the Act provides for relative grounds for refusal of trademark registration. The provision of section 12 is an exception to Section 11(1) of the Act. Section 11(1)(a) provides that no mark can be registered if it is similar with the earlier trade mark. It means any mark which is similar to an earlier mark cannot be used as a trademark for another product. Such similarity with any registered or earlier used trade mark creates a likelihood of confusion in the mind of public. A bonafide customer is likely to associate the similar trademark with an genuine one.
The confusion envisaged under section 11(1) is for the interest of the public at large in reference to the similar marks. Section 9(2) (a) talks about the confusion flowing from the mark itself whereas the confusion under section 11(1) is in connection to any other mark. This type of confusion can lead a person to believe the association between the prior registered/pending marks with the mark applied afterwards.
The term ‘well-known trademark’ under Section 11(2) refers to a mark which has become so well-known to the substantial segment of the public through its extensive and continuous use. Use of the mark in relation to any other goods or services by another party may be taken as indicating a connection between the two parties.
Recently intellectual property (IP) infringement suit was filed by the International Society for Krishna Consciousness (ISKCON) against an apparel manufacturing company Iskcon Apparel Pvt Ltd. The ISKCON alleged that other party is infringing their trademark. The defendant, Iskcon Apparel Pvt Ltd, informed the court that it has now changed its name to Alcis Sports Pvt Ltd, and submitted an undertaking that it would not use the trademark or name ISKCON in the future. The court in its order declared ISKCON as a “well- known” trademark in India under the Trade Marks Act, 1999.
A mark cannot be registered if it is prevented by any other law in India. There is some overlapping between law of passing off, law of copyrights, and trademark Act. Section 11(3) provides that a trademark shall not be registered if it is protected under laws of passing off or copyright laws.
The Registrar may register the mark under special circumstances under section 12 where the proprietor of the “earlier trademark” or other earlier right consents to the registration. Here, earlier trademark means a registered trademark which has a date of application earlier than that of the trademark in question.
According to subsection (5) of section 11, a trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3), unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trade mark.
The grounds for determining the question, whether a trademark is a well-known trademark or not are not exhaustive under Section 11(6). However, it can be knowledge of the public about the trademark on the basis of extend of use and duration of the trademark. Further, for determining whether a trademark is known or recognized in a relevant section of the public, the registrar can look into no. of potential customers, no. involved in distribution channel and business circles
If trade mark is found relevant in at least one relevant section of the public in India the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act. The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark.
The Registrar shall protect a well-known trademark against the identical or similar trademarks and shall take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trademark.
Bonafide actions of applicants shall be taken into consideration by the Registrar under subsection (11) of section 11 of the Act. For instances, where a trademark has been registered in good faith disclosing the material information to the Registrar or where right to a trademark has been acquired through use in good faith before the commencement of this Act, then, it shall not affect the validity of the registration or right to use on ground of it being identical with or similar to well-known trademark.
ABOUT THE AUTHOR
Ms. Komal is 4th year law student from Chanakya National Law University, Patna and she has keen interest in IPR.
ITC Ltd. v. Britannia Industries, CS (COMM) 1128/2016.