Relative grounds for refusal (S. 11)
(1)(a)Identical marks on similar goods/services
(b) Similar marks on identical/similar goods or services
May cause confusion on the part of the public
•‘Aristoc’ and ‘Rysta’ – Aristoc Ltd v. Rysta Ltd. (1945)
•‘Naturalizer’ and ‘Naturalizet’ – Brown Shoe’s Company Application case, (1959)
•‘Glucovita’ and ‘Gluvita’ – Corn Products Refining Co v. Shangrila Food Products Ltd, (1960)
•‘Lakshmandhara’ v. ‘Amritdhara’ – Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449
•Trade mark is the whole thing – the whole word has to be considered and not just part of it.
–‘Shiv Shakti’ and ‘Shakti Bhog Atta’ – Kewal K Kumar v. Rudi Roller Flour Mills, (2007)
•‘PV-DINE’ and ‘PIODIN’ – BDH Industries Ltd. V. Croydon Chemical Works Pvt Ltd, AIR 2002 Bom 361
•Identity/Similarity with well known trade mark (subsection 2)
–Identical/similar to a well known trade mark
–Goods/services different than the earlier
–Unfair advantage or detrimental to the distinctive character or reputation
•Determining factors for well known trade mark (subsection 6)
–Knowledge/recognition in the relevant section of the public
–Duration, extent, geographical area of the use and promotion of the mark, advertising, publicity, presentation at fair, exhibition etc
–Details of its registration or application (use or recognition)
–Record of successful enforcement of the rights
•However following factors not compulsory (subsection 9)
–Mark used, registered, application filed in India
–Or anywhere in the world
–Mark well-known to the public in India
•Factors determining whether it is recognized in the relevant section of the public (subsection 7)
–Number of actual/potential users
–Number of persons involved in the channels of distribution
–Business circles dealing with the goods and services
•Registration prevented by other law (subsection 3)
–Law of passing off for unregistered trade marks
–Law of copyright
•Honest concurrent use (section 12)
–Factors to be taken into account
- Honesty of the concurrent use
- Quantum of concurrent use regard to the duration, area, volume of trade
- Degree of confusion likely to follow
- Any proof of confusion
- Inconvenience which might be caused to parties and to the public
- Kores (India) Ltd v. M/s Khoday Eshwarsa and Son, (1984) Arb LR 213 (Bom)
•Registration of identical or similar trade mark
–By more than one proprietor
–In the case of honest concurrent use
–Or other special circumstances
•Concurrent use may be established by
–Bills, invoices, transportation, sales proofs etc.
–Physical use or non-physical use
–Non-physical use includes advertising, other promotional activities etc.
•Applicant’s trade larger than opponent not necessary
•Chemical elements and International Non-proprietary names (s. 13)
–Commonly used and accepted name of an element
–E.g. steel, copper, gold, silver, oxygen, nitrogen, alcohol, chloroform, benzene etc.
–Carborundum Universal Ltd. v. Parth Trading Company, ‘Carborundum’ generic name for Silicon Carbide
•Representing living or recently dead persons (s. 14)
•Trade marks as a series (s. 15)
–McDonald’s: McDonald’s, McDonalds Hamburgers, Egg McMuffin, McChicken, McDonuts, Big Mac, McPizza, McCafe, Chicken McNuggets, McDouble etc.
–Glaxo Group Limited v Union of India, Voltas Limited, ‘Vol’ Voltas, Volfruit, Volfarm, Volpump, Voldrill, Volita, Voltrion, Voldrum, Vollam, Volram, Volbit, Vol-Seafood, Volfan and Volphor.
Basic Principles of Registration
•Descriptive words, surnames, geographical names not prima facie registrable (s. 9)
•No interference with bona fide use of own name (s. 35)
•Rights acquired by use superior to those obtained by registration. Prior users protected against monopoly rights (s. 34)
•Relative grounds (s. 11)
•Honest concurrent use (s. 12)
•Non-use may result into removal (s. 47)
Similar, Near Resemblance, Deceptively Similar
•A trade mark is said to be deceptively similar to another mark
–if it so nearly resembles that other mark
–as to be likely to deceive or cause confusion
•‘Deceptively similar’ used in
–s. 13(b) (international non-proprietary name)
–S. 29 (infringement of trade mark)
–S. 75 (infringement of certification trade mark)
–S. 102 (falsification of trade mark)
–S. 134 (suit for infringement)
•‘Deceptively similar’ includes not only confusion but also deception
•Onus on proof: Always on the applicant to show that his mark is not deceptively similar
•Factors to consider
- Nature of the marks
- Invented words
- Descriptive words
- Geographical names
- Surnames etc
- Degree of resemblance between two marks
- Phonetic or visual
- Nature of the goods in respect of which the mark is to be used
- Similarity in the nature, character of the opponent’s goods
- Class of purchasers likely to purchase; their level of education and literacy, degree of care likely to exercise
- Mode of purchase of goods
- Any other surrounding circumstances
•Pianotist case (1906) 23 RPC 774
–‘Neola’ not similar to ‘Pianola’; Pianos
•Sound of one word resembling another depends on first impression
–‘Aristoc’ similar to ‘Rysta’ (1943)
–‘Gluvita’ similar to ‘Glucovita’
•Goods ordered over telephone; ‘Heatherfresh’ similar to ‘Everfresh’ (1972)
–If words can be pronounced in different ways then that factor has to be considered
•‘Buler’ similar to ‘Bulova’, (1966)
•Prima facie view that there’s no confusion may not be conclusive
–‘Sanrus’ similar to ‘Rus’ (1937)
•‘Egall’ similar to ‘Egrol’ (1922)
•‘Amritdhara’ similar to ‘Lakshmandhara’
•Similarity in ideas conveyed by the marks should be considered
–‘Water-Matic’ similar to ‘Aquamatic’ (1958)
•Word in one language equivalent in another
–‘Suryan’ similar to ‘Sun’ (1967)
•More than one word or a long word likely to abbreviated
–‘State Express’ similar to ‘State Room’ (1912)
•Having common prefix or suffix; usually first syllable important
–‘Moterate’ not similar to ‘Filtrate’ (1920)
–If common part highly distinctive
•‘Rus’ similar to ‘Sanrus’
•Surrounding circumstances
–Imperfect recollection
–Class of purchasers
–Size of the article
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