TRADEMARK
In order for a mark to be registered as a trademark under the Trade Marks Act, 1999, it has to satisfy three requirements which include:
- It should be a mark
- It should be capable of being represented graphically
- It should be capable of distinguishing the goods or services of one person from those of others
Except for these requirements, a mark should not fall under any of the grounds for refusal of registration of trademarks. A trademark application can be refused registration on either of the following grounds that are absolute or relative grounds as provided under Section 9 and 11 respectively.
ABSOLUTE GROUNDS
Section 9 has been inserted in the Trade Marks Act,1999 with the object of ensuring that a trader should not obtain a statutory monopoly in a word, which another trader might legitimately wish to use.
Section 9(1)(a) prohibits registration of marks, which are devoid of any distinctive character. A word or words to be really distinctive of a person’s goods must be generally incapable of application to the goods of anyone else.
Distinctiveness can be of two types: Inherent and Acquired. To be distinctive or capable of distinguishing the goods, there may be some inherent qualities or distinguishing characteristics in the mark itself, which make it distinctive or capable of distinguishing the goods of one person from those of others.
“A trademark should be of a distinctive character. While determining that a mark is distinctive or not, it has to be seen that the mark doesn’t have a direct and immediate reference to the character and quality of the applicant’s goods[1]. So as to determine whether or not one mark is deceptively similar to another it is not necessary to position the two marks side by side to look out for are any differences. It would be enough if the impugned mark bears such similarity to the registered mark as would be likely to mislead someone usually dealing with one to accept the other if offered to him[2].”
Section 9(1)(b) prohibits registration of trademarks, which consist exclusively of marks or indications, which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or rendering the services or different characteristics of the goods or services.
This provision applies to marks that are both descriptive and non-distinctive in reference to the goods or services for which the protection is sought. “While analyzing a mark, one has got explore the word, not in its strict grammatical significance, however, because it would represent itself to the public at large who are to look at it and form an opinion of what it connotes, as observed in Keystone Knitting Mills Ltd.’s.[3]”
Section 9(1)(c) excludes marks that consist exclusively of marks or indications that have become bona fide and established practices of the trade from being registered under the Act. Woodlands Travels and Agencies v. K. Vasudeva Rao and anr. [4], Madras High Court opined that a mark cannot acquire distinctiveness by using it for just a few days. User for one year prior to application is not adequate to acquire distinctiveness, to qualify for registration under Section 9 the mark should have acquired distinctiveness by the long user.
However, in a recent verdict, the Delhi High Court in the case of ITC Ltd. v. Britannia Industries[5]: “has settled the principle regarding the term of use by holding, that to possess a secondary meaning it is not necessary that product is within the market for several of years. If a novel idea is fascinating and appeals to the consumers, it can become a hit overnight.”
Section 9(2): This provision is primarily involved with the deceptive nature of a mark due to something inherent in the mark or its use, such as nature, quality or geographical origin of the goods or services or any other matter constituting the mark.
Section 9(3) talks about the registrability of the shape of goods. The primary objective of this provision is to ensure that what is claimed as a trademark really identifies and distinguishes the claimant’s products from those of others. In Philips Electronics NV v. Remington Consumers Product Ltd.[6]: wherein the Court stated that the triangular arrangement of the three rotating blades in a machine for trimming was to get a technical effect and could not be registered as a trademark.
RELATIVE GROUNDS
Section 11(1): A trademark shall be registered only if it does not cause confusion in the minds of the public. The word likelihood to cause confusion used under this subsection includes the likelihood of association with the earlier mark because of :
- Its identity with an earlier trademark and similarity of goods or services covered by the trademark or
- Its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark.
Section 11(2) It provides that where the goods or services are not similar and the use of trademark identical with or similar to an earlier trademark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark, shall not be registered.
In Dilip Chand Aggarwal vs. Escorts Ltd[7]: “a trademark ESCORTS which was sought to be registered in respect of electric iron, electric kettles, etc. on the opposition by the owner of the well-known mark ESCORTS in respect of a variety of goods in the Indian market, was refused for registration.”
In Sunder Parmanand vs. Caltex[8]: “ an application for registration of trademark ‘Caltex” in respect of horological and chronometric instruments in class 14 was refused registration, allowing an appeal against the decision of the Registrar, even though the opponents mark “Caltex” was well known only in respect of petroleum products .”
Section 11(3) It lays down that a trademark shall not be registered if its use is prevented by the law of passing off or under the law of copyright. The onus is on the opponents to establish that they have goodwill. Section 11(4) it permits registration where the owner of the existing trademark gives consent.
Section 11(5) In this sub section a trademark shall not be refused to register under the grounds mentioned in sub section (2) & (3) unless an objection is made by the owner of the earlier trademark in an opposition proceeding. Section 11(6) lays down the factors which the registrar will take into account in determining whether a trademark is a well known trademark or not.
Refusal of registration under Section 11(7) This subsection briefly indicates the factors to be taken into account by the registrar while determining whether a trademark is a well- known or recognized in the relevant section of the public for the purpose of sub-section (6).
Refusal of registration under Section 11(8), provides that a trademark needs to be well known in at least one relevant section of the public. Refusal of registration under Section 11(9), This sub section provides that the registrar shall not require as a condition, for determining whether a trademark is a well-known trademark
Refusal of registration under Section 11(10): This subsection provides that while considering an application for registration and opposition thereto, the registrar shall protect a well-known trademark against identical or similar trademarks and take into consideration the bad faith of either the applicant or the opponent affecting the rights relating to the trademark.
Refusal of registration under Section 11(11) This sub section seeks to protect “prior use in good faith” or “prior registration on good faith” before the commencement of the Act, of an identical or similar trademark against a well-known trademark. In Surajmal Dyduramiji Soap vs. Shrikisan Ramkisan[9]: “it was held that a thing shall be deemed to be done in good faith where it is in fact done honestly, whether it is done negligently or not.”
CONCLUSION
Not every possible mark or symbol gets the legal recognition as a valid trademark, there are certain criteria that one sign or mark has to satisfy to gain the trademark protection. If a sign fulfills all requirements for protecting a trademark, it will be accepted and will be registered as a protected trademark. Trademark will be protected for ten years with the possibility of renewal by paying the fees again once every 10 years. International registration of trademarks simplifies the procedure of obtaining a trademark registration in more than one country by fulfilling one application.
Trademark protection is territorial in nature; however, the procedure of obtaining trademark protection now is simplified by giving the chance to applicants to apply with one application in many counties. Otherwise, if the trademark will not satisfy the requirements in accordance with legislation for the protection of the trademark, it will be refused or rejected depends on which requirement does not meet.
[1] Shakti Vikas Sansthan v. Ayurved Vikas Sansthan, 1991 PTC 34 Del
[2] Mumtaz Ahmed v. Pakeeza Chemicals, AIR 2003 All 114
[3] (1928) 45 RPC 193
[4] 2003 (27) PTC 352 Mad
[5] CS (COMM) 1128/2016
[6] [1999] RPC 809
[7] AIR 1981Del 150
[8] AIR 1969 Bom, 24
[9] AIR 1973 Bom, 313, 321
Author: Akanksha Anand,
Vivekananda Institute of Professional Studies, 4th year/ Student
