INTELLECTUAL PROPERTY RIGHTS

REGISTRATION

OF

TRADEMARKS

SUBMITTED BY : SUBMITTED TO:

ANIRUDH ARORA Dr S Z AMANI

SEM IXth

ROLL NO. 5

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ACKNOWLEDGEMENT

I extend my heartfelt gratitude and sincere thanks to my IPR Law teacher Dr S

Z Amani, for his encouragement and full cooperation throughout the completion of

this assignment. Without his guidance and support this assignment would never

have been possible.

THANK YOU SIR

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INDEX OF AUTHORITIES

CASES REFERRED

1. Amritdhara Pharmacy v Satya Deo Gupta AIR 1963 SC 449;2. Ashoka Dresses v Bonn’s Shirts & Another (2000) RPC 5073. BDH Industries Ltd. v. Croydon Chemical Works Pvt. Ltd. AIR 2002 Bom 3614. Chaseside Engineering Co. Ld.’s Appl. (1956) RPC 73;5. Consolidated Food Corp. v. Brandon & Co., AIR 1965 Bom 35.6. Corn Products v Shangrila Food Products Ltd. AIR 1960 SC 142.7. Cycling IS…TM Applications (2002) RPC. 37, 7298. Dalip Chand Aggarwal v Escorts Ltd. AIR 1981 Del 150.9. Davis v Sussex Rubber Co. Ltd. (1927) 44 RPC 412; (1927) 2 Ch 34510. Electrix Ld’s., Appl. (1958) RPC 176;11. Geep Flashlight Industries Ltd. v. Registrar of Trade Mark AIR 1972 Del 179.12. Hastimal Jain trading as Oswal Industries v Registrar of Trade Marks 2000 PTC 24;13. Hemla Embroidery v Hindustan Embroidery FAO No. 21 of 1968;14. Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Mark AIR 1977 Cal 413.15. Jagajit Industries Ltd. v The Registrar of Trade Marks 2001 PTC 24;16. Kantilal Thulasidas Jobanputra v Registrar (1982) PTC 127;17. Mohd. Iqbal v. Mohd. Wasim AIR 2002 MP 162.18. Moneysworth Trade Mark (1976) RPC 317.19. Mumtaz Ahmed v. Pakeeza Chemicals AIR 2003 All 114.20. National Bell Co. v Metal Goods MFG. Co (1970) 3 SCC 66521. P. N. Mayor v Registrar of Trademarks AIR 1960 Cal. 8022. Philips Electronics v Remington [1999] RPC 80923. Philips’ Phonographische Industrie’s Appl. (1955) 72 RPC 183;24. Registrar of Trade Marks v Hamdard National Foundation (India) AIR 1980 Del 180

(DB)25. Tastee Freez International Ld.’s Appl. (1960) RPC 25526. Tikam Chand and Another v Dy. Registrar of Trade Marks 1998 PTC 542 (Del)27. Torrent Pharmaceuticals Ltd. v Union of India (1998) (2) Arb. LR 4528. Torrent Pharmaceuticals v Wellcome Foundation Ltd. 2001 (2) CTMR 158.29. Triomede (PTY) Ltd. v Beecham Group PLC FSR [2001]30. Verve’s Records Inc.’s Appl. (1958) RPC 3;31. Virendra Sethi v Kundan Das 20002 (25) PTC 50 (Del)

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JOURNALS REFERRED

India Law Journal Indian Society of International Law Journal of Law and Economics

WEBSITES VISITED

www.wikipedia.org www.cll.com www.tm-india.com www.thomsonreuters.com www.indlii.org

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S.No. CONTENTS PAGE NO.

1. INTRODUCTION 6

2. PROCEDURE FOR REGISTRATION 6

3. ADVERTISEMENT OF APPLICATION 8

4. OPPOSITION TO REGISTRATION 8

5. REGISTRABILITY OF THE MARK AS TRADEMARK 10

6. ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION UNDER SECTION 9

11

7. MARKS COMMON TO TRADE SECTION 9(1)(C) 13

8. MARKS DECEIVING THE PUBLIC OR CAUSE CONFUSION 14

9. IDENTITY OR SIMILARITY OF MARKS 16

10. RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION UNDER SECTION 11

15

11. JUDICAL PRONOUNCEMENTS 18

12. CONCLUSION 19

13. BIBLIOGRAPHY 21

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INTRODUCTION

The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark, properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular business as the source of goods or services. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an action for trademark infringement, while in some countries unregistered trademark rights can be enforced pursuant to the common law tort of passing off.

If the mark is a registrable one the best way to protect it is by registration. Infringement of the mark can be easily established. If the infringing mark is identical and the goods covered by registration, the success in an action for infringement is almost certain unless the registration can be attacked on the ground of invalidity of registration or the defendant could established honest concurrent user, or acquiescence on the part of the registered proprietor, or prior user. If the marks are not identical but only similar then the plaintiff will have to establish that the defendants` mark is deceptively similar, that is to say, the similarity is such as to be likely to deceive or cause confusion which is a proposition not easy to establish. Ultimately the question of similarity is one for the judge to decide on which opinion may often differ.

PROCEDURE FOR REGISTRATION

Application for Registration

Section 18 of the Trade Marks Act 1999 says that any person, claiming to be the proprietor of a trademark used or proposed to be used by him, who is desirous of registering it shall apply in writing to the registrar in the prescribed manner for the registration of the mark.

Essential Ingredients for registration:

1. Any person

Any person includes individual, partnership firm, association of persons, a company whether incorporated or not, a trust, Central or State Government. It does not allow the representative of the proprietor to apply in his own name.

2. Claiming to be proprietor

A person may obtain proprietorship in a trademark either by use or by registration under this Act. He may also acquire proprietorship by assignment or by inheritance. In case of

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unregistered mark but in use, proprietorship will be the person who first used it in case of two rival claims whereas in case of proposed use of mark, which comes up for registration, the designer or the originator will be the proprietor in case of any controversy. Between two rival claims of user of the mark and designer of the mark the former will be preferred.

At this stage of making application, the proprietor has to show his bona-fide claim. If the mark is not mistaken on the face of application and also there is not objection to the claim, the registrar is entitled to accept the application. In case of manufacturer having a trademark abroad has made goods and imported them into this country with foreign mark on them, the foreign mark may acquire distinctive character and in such circumstances, the same or colourably similar mark cannot be registered not because it is registered abroad but because it lacks distinctiveness.

3. Used or proposed to be used

The law permits registration of a mark, which has been or is being used or is proposed to be used. In case of proposer of the mark, he must have definite and present intention to use the mark as on the date of the application. Definite and present intention is different from the general intention to use the mark sometime in future to something, which he may think desirable later on. Definite and present intention means a real intention to use the mark for resolved and settled purpose. In case of used mark, the use in itself is not sufficient but is to be accompanied with real intention continue with the use.The ‘proposed use’ of the trademark must be normal and fair, which, however, may include variations in presentation or colour difference but such variation should not stretched to far so that the used form will be totally different from the one sought to be registered. If proprietor does not have the real and present intention to use the mark, and try to register is for some mala-fide intention, such as to block the mark, it would amount to registration in bad faith 1, which is a serious form of commercial fraud.

The application for registration of the mark must be filed with the Registrar in the prescribed manner who has been conferred the discretion either to accept or reject or accept with amendments, modifications, conditions or limitations2. The Registrar must communicate his decision in writing with the applicant and is under obligation to give the reasons in cases of rejection or acceptance on conditions or with modification.3

1 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and company, Nagpur) 2003 at 2392 Section 18 (4)3 Section 18 (5)

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Withdrawal of Acceptance

In case the Registrar decides to accept the mark for registration, but before actual registration, the Registrar may withdraw his acceptance under certain circumstances under section 19 of the Trade Marks Act 1999. For example, if the Registrar is satisfied that the application is being accepted in error or that circumstances are such that such registration should not be granted, he has been empowered to withdraw the acceptance of application.

This power can be exercised subject to certain conditions. Registrar has to issue a notice, specifying the objections, which has led him to think that the application has been accepted in error or why the mark should not be registered, to the applicant and give him an opportunity of being heard by requiring him to show cause why acceptance should not be withdrawn.4

Advertisement of Application

Once the Registrar for registration has accepted the application, he shall get the application advertised in the prescribed manner after acceptance. However, the application shall be advertised before acceptance if the application is related to a trademark to which section 9(1) and 11(1)(2) apply or in any other case as it seems expedient to the Registrar.5 The purpose of advertisement is give information to the public at large in respect of the trademark advertised and afford an opportunity to oppose the registration of the mark on given grounds. So the advertisement must be complete in all respects and otherwise the very purpose of advertisement will be frustrated.6 If there is incomplete or incorrect information in the advertisement, it would amount to misrepresentation, which deprives a prospective opponent of the opportunity to get full information and of filing an effective opposition.7

Opposition to Registration

Section 21 of The Trade Marks Act 1999 allows any person to oppose an application for registration. “Any person” need not be only a prior registered trademark owner.8 Even a customer, purchaser or a member of the public likely to use the goods may object to the registration of a trademark in respect of such goods on the ground of possible deception or confusion. The period within which opposition to the application for registration can be filed is three month from the date of advertisement, which can be extended by Registrar not exceeding one month on application made to him and on payment of the prescribed fee. So the period cannot exceed four months in toto.

4 Relevant Case: Tikam Chand and Another v Dy. Registrar of Trade Marks 1998 PTC 542 (Del).5 Section 206 Relevant case: Virendra Sethi v Kundan Das 20002 (25) PTC 50 (Del)7 Ashoka Dresses v Bonn’s Shirts & Another (2000) RPC 5078 P. N. Mayor v Registrar of Trademarks AIR 1960 Cal. 80

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The grounds of opposition should be based upon the specific provisions of law. The grounds based on section 9, 11, 12, 13, 18, 24, 33, 35, 36(2) etc. would be suitable to challenge the application of registration. However, the grounds based on section 11(2) and (3) are available only to the proprietor of earlier trademark.9

On receiving the notice of opposition, the Registrar is under obligation to send a copy of the same to the applicant for registration. Upon receiving such notice, the applicant is given two months time, from the date of receipt of the notice, to file counter statement together with the prescribed fees to the registrar. This copy of counter statement shall be sent to the person who has filed opposition under section 21 (3). The applicant and the opponent are given the opportunity to adduce evidence in support of their claims and may also be given an opportunity to be heard if they so desire under Section 21 (4).10 However the onus is on the opponent to allege and prove the existence of facts, which may lead the tribunal to assess the existence of likelihood of confusion in the minds of the public, which includes likelihood of association with the earlier mark. But this does not relieve the applicant of his onus to satisfy the Registrar or the court that there is no reasonable probability of confusion, in respect of all goods coming within the specification applied for and not only in respect of the goods on which he is proposing to use it immediately.11

Registration

Subject to Section 19 the Registrar is under obligation to register the Trade Mark under section 23 if he decides in favour of applicant after listening to the opposition. However, Central Government may direct otherwise on certain grounds. The mark can also be registered jointly for two or more persons under section 24 if two or more persons agree to work jointly. In such cases, the registrar shall require a copy of joint venture agreement to satisfy himself because none of them is entitled to use the mark independently. The section in its earlier part specifically precludes the Registrar from registration of two or more persons who use the trademark independently or propose to use it independently. The registration shall be made as of the date of the application and the applicant shall be issued a certificate of registration. However the registrar is empowered U/S 23 (4) to amend the register or certificate of registration for the purpose of correcting a clerical error or an obvious mistake. The applicant must complete all formalities within one-year time period or within such time as may be given

9 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and company, Nagpur) 2003 at 261.10 Case relating to adducing evidence: Hemla Embroidery v Hindustan Embroidery FAO No. 21 of 1968; Hastimal Jain trading as Oswal Industries v Registrar of Trade Marks 2000 PTC 24; Jagajit Industries Ltd. v The Registrar of Trade Marks 2001 PTC 24; Kantilal Thulasidas Jobanputra v Registrar (1982) PTC 127; Torrent Pharmaceuticals Ltd. v Union of India (1998) (2) Arb. LR 4511 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and company, Nagpur) 2003 at 272

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in the notice. If defaulted, the application may be treated as abandoned after the registrar gives notice in this regard to the applicant. Section 25 provides that Registration shall be for a period of ten years but may be renewed from time to time in accordance with the provisions of this act. Renewal can be made before the expiration of the registration. In case of default in renewal before expiration, the act provides for the grace period of six months from the date of expiration for renewal on payment of prescribed fee. However, before expiration of the last registration of a trademark, the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and conditions as to the renewal. If the proprietor does not file for renewal, the name of the mark will be removed from the register. However, the Registrar is entitled to restore the mark in register if it is just to do so after six month but before one year from the expiration of the last registration, on the receipt of application and on payment of the fee by the proprietor. Such restoration shall be for another ten years to period.

REGISTRABILITY OF THE MARK AS TRADEMARK

Any mark, which is not hit by the definition and section 9, qualifies for registration. However, a mark qualified under section 9 has to meet the positive objections under section 11 to be finally registered. Section 11 is the qualification of section 9. Mark having crossed the threshold under section 9 is capable of getting the protection of the Trademark Act subject to section 11. It deals with prohibition on registration but does not hit the inherent capability of mark as to its registrability. The marks prohibited under section 11 may not be desirable based upon public policy considerations. Under The Trademark Act, 1999, trademark is defined as to mean, inter alia, a mark, which can be represented graphically and is capable of distinguishing the goods or services of one person from those of others.

In a way, the definition itself prescribes two features to be present in any mark to be a trademark:

Capability of being represented graphically; Capability to distinguish the goods or services of one person from those of others.

Absolute Grounds for Refusal of Registration under Section 9

Whereas Section 9 of The Act lays down the ground for on the basis of which, the registration of the mark can be denied absolutely. One of the grounds is ‘if the mark is devoid of distinctive

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character’12. The phrase ‘distinctive character’ implies the ‘incapability of the mark to distinguish’ the goods or services of one person from that of the others. It also implies that the mark in itself should be distinctive in certain cases. For example, common word of dictionary or the name of the place can not be registered unless it is shown that the common word or the name has become distinctive of his goods or services in the mind of the purchasing public, but if he succeeds, then he will be entitled to protect his mark by registration.13

Another ground14 for refusal to register the mark is that the mark should not indicate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of services or other characteristics of the goods or services. In addition to these, a mark stands disqualified from registration if represents the shape of goods results from the nature of the goods themselves or shape of the goods necessary to obtain a technical result or shape which gives substantial value to the goods.15

Yet another ground16 is that the mark must not be consisted of the marks or indications, which have become customary in current language or in the bona fide and established practices of the trade it is not desirable to monopolize such marks. These are the grounds, which are specific to the mark that means, if the mark is affected by any of these characteristics, it cannot be registered. But this is not the end. The mark not affected by any such disqualification, has to pass what can be called as the effect test. That means, the mark should not deceive the public or cause confusion or hurt the religious susceptibilities of any class or section of the citizens or be scandalous or obscene.17 The section 9 lays down the pre-requisites of qualification for the protection of trademark law.

Capability to Distinguish Section 9(1)(a)

In National Bell Co. v Metal Goods MFG. Co18, Supreme Court of India observed that distinctive in relation to the goods or services as meaning ‘adapted to distinguish’ goods with which the proprietor is/ may be connected. Whereas in Davis v Sussex Rubber Co. Ltd.19, the Court of Appeal drew the distinction between capable of distinguishing and adapted to distinguish by saying that ‘capable of distinguishing’ seems to have a somewhat wider import than the expression ‘adapted to distinguish’ as it embraces marks which have not at the date of the application, but which, if used long enough, may become distinctive of the goods of the

12 Section 9(1)(a)13 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and company, Nagpur) 2003 at 9114 Section 9(1)(b)15 Section 9(3)16 Section 9(1)(c)17 Section 9(2)18 (1970) 3 SCC 66519 (1927) 44 RPC 412; (1927) 2 Ch 345

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proprietor of the mark. The court in this case, observed that ‘capable of distinguishing’ might perhaps refer to the future, in the sense that a word may be able to distinguish although at the moment of time at which the application is made it may not

have become fully effective to distinguish. However, the Court of Appeal observed that the general considerations, which have to be taken into account in construing the expression ‘capable of distinguishing’, are the same as in construing ‘adapted to distinguish’.20

In determining the capability to distinguish, the authority must take into consideration both inherent capability and factual capability to distinguish. Inherent capability may mean that irrespective of the peculiarities of the trade or the practice of other traders, the mark is shown to possess the capability of distinguishing the goods to which it is applied. For example, a mark having direct reference to the character or quality of the goods is considered as inherently not capable of distinguishing. However Indian Trademark Registry takes the view that if the reference to the character or quality is only indirect or suggestive, the mark can be considered. The ‘factual capability to distinguish’ depends upon the facts and circumstances of each case. In each particular case, it become a subject of inquiry whether the mark by virtue of its being use or any other circumstances, it is in fact is capable of distinguishing the goods. The Supreme Court in National Bell case observed that in determining the distinctiveness, regard must be had whether it is inherently distinctive or is inherently capable of distinguishing and by reason of its use or any other circumstances, it is in fact adapted to distinguish or is capable to distinguishing the goods.

Indicating Nature or Characteristics under Section 9(1)(b)

Section 9(1)(b) lays down the other ground of disqualification of the mark for registration. It says that the mark consists exclusively of marks or indications, which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of services or other characteristics of the goods or services. In addition to these, a mark stands disqualified from registration if represents the shape of goods results from the nature of the goods themselves or shape of the goods necessary to obtain a technical result or shape which gives substantial value to the goods.21

The expression ‘kind’ includes the name or size or type of the goods or services. This is based on the public policy of not affording registration to the generic description of the goods which are the only available method of description of the goods would not be having a capability to distinguish. E.g. words like extra, small, big, liquid, solid etc. Any mark indicating the ‘quality’ of

20 English Cases: Electrix Ld’s., Appl. (1958) RPC 176; Philips’ Phonographische Industrie’s Appl. (1955) 72 RPC 183; Chaseside Engineering Co. Ld.’s Appl. (1956) RPC 73; Verve’s Records Inc.’s Appl. (1958) RPC 3; Tastee Freez International Ld.’s Appl. (1960) RPC 25521 Section 9(3)

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the goods or services is the property of everybody and no one can be allowed to monopolize it. e.g. superior, best, No. ! etc. . Such words are found to be devoid of distinctiveness.

Indications of quantity or standard weights or measures or numbers of contents such as kilograms, liters, gallons, grams etc are not allowed, as these are needed by every trader in respect of all the goods and services. Words describing intended purpose or the primary functions of the goods or services such as giving soothing effect or giving absolute cleaning. For example, word SAFFO22 was not given registration for cleaning powder and liquids on the ground that word was too close to the descriptive of SAFF mean ‘clean’. Similarly words indicating value or worth of any product are incapable of getting registration such as Moneysworth.23

Marks indicative of place of manufacture or sale of goods or time of production are not allowed for registration. E.g. Punjab basmati or Talvandi rice or prepared in one day etc.

Marks common to trade Section 9(1)(c)

Section 9(1)(c) prohibits the registration of marks that consists exclusively of marks of indications which have become customary in current language or in bona fide and established practices of the trade. This is to protect the free use of indications or marks, which are already in use in the trade, from being monopolized as a trademark. Moreover such marks lack distinctive character. Words or indications common to trade are open to everybody for use. E.g. generic names notified by the WHO as non-proprietary names, are open to the trade to use.

Proviso to Section 9(1)

The proviso to Section 9(1) provides that any mark or name, which though is not distinct, nevertheless may be registrable if it is shown that it has by virtue of use acquired a distinctive character. That means, as a result of use, the mark has become distinctive of the goods or services of the proprietor. In an well-know case in Registrar of Trade Marks v Hamdard National Foundation (India)24 the Delhi High Court gave approval of the registration of the mark ‘SAFI’ by holding that words having direct relation to the character and quality of the goods, sometimes lose their primary meaning and acquire secondary or good specific meaning of a particular manufacturer. If it happens then such marks may be registered as trademark.

In English case, Cycling IS…TM Applications25 the Court laid down the test to determine the distinctiveness on the basis of use by holding that “Right view to take of a particular sign may

22 Chef TM (1979) RPC 143.23 Moneysworth Trade Mark (1976) RPC 317.24 AIR 1980 Del 180 (DB)25 (2002) RPC. 37, 729

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well depend upon the use (if any) that has been made of it and more generally upon the usage of persons involved in the relevant field(s) of commercial activity.”

Other Relevant English cases on this point are given as under:

Merz & Krell GmbH & Co.26

Windsurfing Chiemsee Produktions und Vertriebs v Boots-und Segelzubehor Walter Huber and Granz Attenberger27

LLOYDS SCHUHFABRIK Meyer & Co. GmbH Handel28 Philips Electronics v Remington29 British Sugar Plc v James Robertson & Sons Ltd.30 Bach and Bach Flower Remedies Trade Marks31

Marks deceiving the public or cause confusion: Section 9 (2)(a)

Section 9 (2) (a) seeks to prevent the registration of marks, which are of such nature as likely to deceive the public or cause confusion.

Generally deception or confusion might arise by reason of similarity between the proposed mark and another existing mark or might result from the nature of the mark itself or nature of the use of the mark.32 For example, Deception in the nature of the Mark may be in the form of misrepresentation as to the characteristics of the goods or services or to the effect that they were made in a specified geographical region or place, when in fact not so made. Deceptive use may involve where mark contains false or misleading information. E.g. use of word Regd. when the mark is actually not registered.

Section 9(2)(a) is intended to apply where the deception or confusion arises from the nature of the mark itself33 and not to the questions based upon the similarity of the mark with other existing mark which is a ground of refusal under section 11 which deals with relative grounds of refusal for registration. Hence, a mark not deceptive or confusing may qualify for registration even if the mark has resemblance or identity with other mark but is distinct.

26 (2001) ETMR. 105.27 (2000) Ch. 52328 BV (2000) FSR 77.29 [1999] RPC 80930 [1996] RPC 281.31 [2000] RPC 513.32 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and company, Nagpur) 2003 at 15033 This is in consonance with the heading of section entitling “absolute grounds for refusal”.

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Section 9 (2) (b) forbids registration if the mark contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India. But this does not forbid the use of name or pictures of God or Goddess or religious heads as trademarks that are not offending. Examples of offending use may be use of Hindu Gods in respect of beef or meat or Muslim Saints for port products etc. however, the perception and the practice is that usually symbols relating to religion, gods or goddesses, place of worship should not be registered even if it is not hurting but because these are part common heritage and should not allow any monoplization. Section 9 (2) (c) prohibits the registration of mark if it is scandalous or obscene. Whether the mark is scandalous or obscene or not depends upon the current religious, social and family values.

In addition to all these ground for refusal of registration of a mark under section 9(3) on the ground of shape will not be entertained for registration. The shape of the goods resulting from its nature34 or giving substantial value to goods or shape of goods necessary to obtain technical results35 would disqualify the mark for registration. Whereas the definition of the mark itself provides that mark includes shape of goods or packaging. However generally the shapes would not be allowed registration unless it is shown that the shape is distinctive of the goods or services.

Relative Grounds for Refusal of Registration under Section 11

While Section 9 provides for absolute grounds for refusal of an application for registration of trademark, section 11 provides for relative grounds for refusal to register any trademark. Subsection (1) of section 11 provides that a mark shall be refused registration if it is identical with an earlier trademark covering similar goods or services as are covered by earlier trademark. Also refusal can come if the mark is similar to the earlier trademark covering identical goods or services as are covered by the earlier mark. The register is under obligation to refuse the registration on the ground of ‘likelihood of confusion’ on the part of the public. Earlier trademark need not necessarily be registered. If the trademark is having earlier priority date or is entitled to protection by virtue of being well-known trademark, it would sufficiently be an earlier mark for the purposes of this section.

So the Registrar before refusing the register a mark that has come up for registration has to function at three levels. One, he must find out the identity or similarity of mark. Two he must look for identity or similarity of goods or services to which the mark is going to be applied. And three, he must check out whether there is any likelihood of confusion on the part of the public.

34 Philips Electronics v Remington [1999] RPC 80935 Philips Electronics v Remington [1999] RPC 80; Triomede (PTY) Ltd. v Beecham Group PLC FSR [2001] 583.

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Identity or Similarity of Marks

Test for determining Identity or similarity of Marks

For determining the identity or similarity, the rules of comparison are developed over the years and which J. Parkar aptly explains in Pianotist Company Ltd.’s Application36 case. According to him one must judge the two marks both by the look and by the sound;

consider the goods to which the mark is to going to be applied; consider the nature and kind of customers who are likely to buy the goods; consider as to what would happen if both the marks are used in the normal way as a trademark for goods of the respective owners of the mark. After considering all these circumstances, if one comes to the conclusion that there will be confusion, registration must be refused.

While comparing, one must not take a part of the word rather consider the whole and compare it. Supreme Court37 while recognizing it further observed that the approach to comparison should be from the point of view of a man of average intelligence and of imperfect recollection. Whether to such a man, the overall structure and phonetic similarity or similarity of the idea in the two marks is reasonably likely to cause a confusion between them, is the test.38

Search Procedure

To determine the identity or similarity with the earlier mark, the Registrar needs to go through the search procedure before registration. Search is confined to a particular class in which registration is applied for. However, search should be carried on amongst the marks not only for identical goods but also for similar goods. [Schedule IV to the Trade Marks Rules provides for classification of the goods and services in 45 classes – goods being classified in classes 1 to 34 and services included in classes 35 to 45. For international classification of goods and services published by WIPO, one can visit www.wipo.org earlier trademark is one that is already registered or subject of a convention application39 of an earlier priority date or is one which is entitled to protection as a well known trade mark.

Identity or similarity of goods or services

To determine the identity or similarity, the Registrar needs to go through the search process before registration. Search is to be done in the specific classes of goods and services in which

36 (1906) 23 R.P.C. 77437 In Corn Products v Shangrila Food Products Ltd. AIR 1960 SC 142. Also refer to Amritdhara Pharmacy v Satya Deo Gupta AIR 1963 SC 449; Torrent Pharmaceuticals v Wellcome Foundation Ltd. 2001 (2) CTMR 158.38 Corn Products v Shangrila Food Products Ltd. AIR 1960 SC 14239 India being member of Paris Convention for protection of industrial property is bound to accord priority date under section 154.

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the proposed mark falls is going to fall. However, search would include not only amongst the identical goods but cover similar goods.

For this purpose, it is advisable that applicant should be precise in stating the specification of goods or services for which the mark is sought to be registered. However, the specification, if indefinite, may be a bar to the registration. If the applicant gives unnecessarily wide specification, there are greater chances that he may found a prior registration in same or similar mark in that class which may result in an objection to his registration. Moreover, even registrar may object to wide specification of goods under rule 25(15) of Trademarks Rules.

One thing is to be made clear here that classification of goods and services is not the criterion for determining whether two sets of goods or services are of the same description. Indeed, goods comprised in same class may include goods of a different description and different description of goods may fall in the same class. [Schedule IV to the Trade Marks Rules provides for classification of the goods and services in 45 classes. For international classification of goods and services published by WIPO, one can visit www.wipo.org

Likelihood of confusion [Section 11(1)]

Section 11(1) of the Trade Marks Act 1999 says that if because of the identity or similarity of marks or goods or services, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark, the mark shall not be registered save as otherwise provided in section 12.

Laying down the test in Amritdhara Pharmacy case40 the Supreme Court observed: “for deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, an (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods, which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection… the question has to be approached from the point of view of a man of average intelligence and imperfect recollection.”

The risk of likelihood of confusion is considered as the most in cases where both the mark and goods and services are identical of the existing mark and lesser where either of them is identical. Whereas in the instance of similarity of mark and good or services risk is considered lesser than in case of identical marks.

40 Amritdhara Pharmacy v Satyadeo Gupta AIR 1963 SC 449.

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The provision in section 11(1) is mandatory on the Registrar and therefore when this section hits an application, the Registrar is bound to refuse registration. The issue under this section can be raised by the Registrar, prior to acceptance of the application, and by any person after the mark is advertised. In the absence of any attack on the registration fo the earlier trademark, it is to be assumed that there has been notional use of the earlier trademark. The reason for this is that unless one assumes notional use of the earlier trademark, the question whether later on the trademark, proposed to be registered, will be give rise to a likelihood of confusion on the part of the public will become difficult to answer. At the same time, ordinary practical business probabilities having regard to circumstances of the case should be considered rather than constructing imaginary and unlikely cases.

In Dalip chand case41 an application to register Escorts for electric iron, etc was opposed by Escorts Ltd. The Assistant Registrar dismissed the objections on the ground that applicant had established prior use and honest concurrent use. On appeal, Delhi High Court set aside the orders of the AR and held in this particular case that it should be considered whether the mark has come to be known and associated with the name of the opponent, not necessarily with the particular goods of the same description but generally with its goods. In this case, it could be shown that the mark escorts has been quite extensively used in the market by the respondent with the result that any goods which may be marketed under this mark will be associated with the name of the respondent, so that people buying may feel that it is product of the respondent. This is sufficient justification for refusing the application of a similar trademark.

DECEPTIVELY SIMILAR

Section 2(h) of the Act defines mark, which can be called deceptively similar. According to the definition, a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. The act does not lay down any criteria for determining what is likely to deceive or cause confusion. So every case of deceptive similarity depends upon the facts and circumstances of each case after applying the test, which has been laid down by judiciary through cases.

In H. C. Dixon42, the Court held that likely to deceive is a question largely one of first impression and not necessary to prove the intention to deceive. It is sufficient if the ordinary user entertains a reasonable doubt43 as to the source of the product. It is the likely hood of deception and not the actual deception, which is the deciding factor.

JUDICAL PRONOUNCEMENTS

41 Dalip Chand Aggarwal v Escorts Ltd. AIR 1981 Del 150.42 H. C Dixon & Sons Ltd. v Geo Richardson & Co. Ltd. 50 RPC 36, p. 37443 Jellineck’s Appl., (1946) 63 RPC 59. P. 78

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Mumtaz Ahmed v. Pakeeza Chemicals44

Test of similarity: In order to come to the conclusion whether one mark is deceptively similar to another the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so whether they are of such a character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to misled a person usually dealing with one to accept the other if offered to him.

BDH Industries Ltd. v. Croydon Chemical Works Pvt. Ltd.45

Apart from the structural, visual and phonetic similarity or dissimilarity, the question has to be considered from the point of view of man of average intelligence and imperfect collection. Secondly, it is to be considered as a whole and thirdly it is the question of his impression.

Mohd. Iqbal v. Mohd. Wasim46

It is common knowledge that ’bidis’ are being used by persons belonging to poorer and illiterate

or semi-literate class. Their level of awareness is not high. It cannot be expected of them that

they would comprehend and understand the fine differences between the two labels, which may

be detected on comparing the two labels when placed side by side. The essential features of the

two labels are common. In view of above, there appears to be deceptive similarity between the

two labels.

Geep Flashlight Industries Ltd. v. Registrar of Trade Mark47

Registration is not a matter of right: Even if the appellant’s proposed trade mark satisfies the

conditions under the Act, the appellant is not entitled as a matter of right to the registration of

trade mark. It is open to the Registrar to decline to register the appellant’s trade mark.

Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Mark48

The expression ’distinctive in relation to the goods’ in respect of which a trade mark is proposed

to be registered, means adapted to distinguish goods with which the proprietor of the trade mark

is or may be connected in course of trade from goods in the case of which no such connection

44 AIR 2003 All 114.45 AIR 2002 Bom 36146 AIR 2002 MP 162.47 AIR 1972 Del 179.48 AIR 1977 Cal 413. See also Consolidated Food Corp. v. Brandon & Co., AIR 1965 Bom 35.

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subsists either generally or, where the trade mark is proposed to be registered subject to

limitations in relation to use within the extent of registration.

CONCLUSION

Trademarks help promote economic efficiency. If trademarks are not allowed to be registered

with the manufacturers it may eventually take away the incentive of trademark owning

manufacturers to make investments in quality control. There would thus be no healthy

competition among the manufacturers leading to the loss of vitality of the economy. If we do not

have a system of having trademark a manufacturer would get nothing by improving his product’s

quality. And consumers would not be in a position to identify high or low-quality products. In

such a situation, a manufacturer who reduces the price by reducing quality may pocket the

benefit of the market. The consequence would be attempts to produce inferior quality products

rather than competition to produce better quality products.

BIBLIOGRAPHY

BOOKS

1. Law Relating to Intellectual Property 5th Edition Wadehra B L

2. Law Relating to Intellectual Property Rights 2nd EditionV. K. Ahuja

3. K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical

Indications (Wadhwa and company, Nagpur) 2003

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WEBSITES

1. http://ebtc.eu/index.php/sector/ipr/121-ipr/ipr-prosecution/182-trademark-

prosecution-in-india.

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