Professional Documents
Culture Documents
REGISTRATION
OF
TRADEMARKS
SUBMITTED BY :
ANIRUDH ARORA
AMANI
SUBMITTED TO:
Dr S Z
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.
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INDEX OF AUTHORITIES
CASES REFERRED
JOURNALS REFERRED
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
1.
INTRODUCTION
PAGE
NO.
6
2.
3.
ADVERTISEMENT OF APPLICATION
4.
OPPOSITION TO REGISTRATION
5.
10
6.
ABSOLUTE
GROUNDS
FOR
REGISTRATION UNDER SECTION 9
REFUSAL
OF 11
7.
13
8.
MARKS DECEIVING
CONFUSION
9.
10.
RELATIVE
GROUNDS
FOR
REFUSAL
REGISTRATION UNDER SECTION 11
11.
JUDICAL PRONOUNCEMENTS
18
12.
CONCLUSION
19
13.
BIBLIOGRAPHY
21
THE
PUBLIC
OR
CAUSE 14
16
OF 15
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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.
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 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 faith1, which is a serious form of commercial fraud.
1 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications
(Wadhwa and company, Nagpur) 2003 at 239
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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
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
2 Section 18 (4)
3 Section 18 (5)
4 Relevant Case: Tikam Chand and Another v Dy. Registrar of Trade Marks 1998 PTC
542 (Del).
5 Section 20
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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.
In National Bell Co. v Metal Goods MFG. Co 18, 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 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
18 (1970) 3 SCC 665
19 (1927) 44 RPC 412; (1927) 2 Ch 345
20 English Cases: Electrix Lds., Appl. (1958) RPC 176; Philips Phonographische
Industries Appl. (1955) 72 RPC 183; Chaseside Engineering Co. Ld.s Appl. (1956)
RPC 73; Verves Records Inc.s Appl. (1958) RPC 3; Tastee Freez International Ld.s
Appl. (1960) RPC 255
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Boots-und
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.
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 nature 34 or giving substantial value
to goods or shape of goods necessary to obtain technical results 35 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
33 This is in consonance with the heading of section entitling absolute grounds for
refusal.
34 Philips Electronics v Remington [1999] RPC 809
35 Philips Electronics v Remington [1999] RPC 80; Triomede (PTY) Ltd. v Beecham
Group PLC FSR [2001] 583.
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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.
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
JUDICAL PRONOUNCEMENTS
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 Mark 47
Registration is not a matter of right: Even if the appellants 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 appellants trade mark.
Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Mark 48
44 AIR 2003 All 114.
45 AIR 2002 Bom 361
46 AIR 2002 MP 162.
47 AIR 1972 Del 179.
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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
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 products
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
48 AIR 1977 Cal 413. See also Consolidated Food Corp. v. Brandon & Co., AIR 1965 Bom 35.
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WEBSITES
1. http://ebtc.eu/index.php/sector/ipr/121-ipr/ipr-prosecution/182-trademarkprosecution-in-india.
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