Legal Remedies Available against Objection Raised under Section 11 of the Trademark Act of 1999 | Lawyers Advice in Delhi NCR | IP Attorney in Delhi NCR | IP Lawyer in Delhi NCR |

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Trademarks are unique names, symbols, phrases or graphic designs that differentiates the business, product or service, of one company or person from that of others. It represents the identity of the company, and for the same reason, are registered under an application made under Section 18 of the Trademarks Act, 1999.

In India, after an individual applies for the registration of a Trademark, the Trademark office verifies the application to addition to the verification of the Device mark or logo under the Vienna codification. This is followed by the stage of Examination and Objection of the Trademark Application. An Examination Report is issued by the Trademark Registry in case there is some objection with the registration. One of the grounds under which a Trademark Application is objected, might be under Section 11 of the Trademarks Act, 1999. Section 11 provides for the relative grounds on which a trademark registration shall be rejected.

Section 11 of the Trademarks Act, 1999 states that a mark shall not be registered:
i) If the mark causes likelihood of confusion on part of the public i.e. striking and close similarities with the previously registered or currently pending Trademarks, causing the public to associate the mark of the Applicant to that of another;
ii) If the mark is identical to a well-known trademark in India and the use of the mark applied for registration may be disadvantageous or harmful to the distinctive character of the well-known trademark;
iii) If the mark’s use in India is liable to be prohibited by law of passing off or copyright law;

The provision further provides that in case the goods are of different description, then the refusal shall not be justified, but registration of the mark may be refused if the mark is likely to cause deception of or confusion in the public.

In the instance of objections as to relative grounds of the trademark, the Applicant has to decide cautiously as to whether he wants to claim that his mark is unique and different from another trademark and therefore, it has to be registered or whether the mark is similar to an already existing mark. In case of the latter, an argument of the Applicant being a prior user of the mark can be put forward. Furthermore, the Applicant can also produce a consent or no objection from the proprietor of marks which has been cited as conflicting in the examination report issued.

When a trademark application is objected on the basis of the abovementioned grounds, it is crucial to file a reply to the said objection, and this shall be done efficiently by a Trademark attorney or agent on behalf of the Applicant, along with the support of previous judgements in similar cases. The Trademark Rules of 2017 provides that an Applicant can file a reply within 30 days upon receipt of the application of rejection from the department, to the trademark office or can request a hearing.

The reply to the examination report must be filed within 30 days along with supporting documents to justify the statements made in the reply. Failure on part of the Applicant to file the reply within the said period of time, will then lead the application to be considered abandoned, and then the Applicant will have to file a fresh application if he wants to register the Trademark. Thus, the filing of a reply is an important step in a trademark application. However, the Applicant may request for an extension by way of filing a TM-M application along with the requisite fee with the assistance of the Applicant’s Trademark attorney. The Applicant while requesting for such extension shall also inform valid reasons for requesting the same.

The objection raised in the trademark Examination Report needs to replied in an efficient manner by a trademark attorney. The reply to the Examination Report must include the following:
i) An answer to all the pointers included in the Examination Report;
ii) Relevant precedents or judgements in cases having similar facts and issues;
iii) Documents that support the claim of the Applicant as to the prior usage or unique characteristics of the mark, like invoices, letterheads, visiting cards, websites, financial statements and any other evidence that proves the prior usage or distinctiveness.

In the case of Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. (Civil Appeal Nos. 2937-2942 and 2943-2944 of 2018), the Respondent and the Appellant had used the word “NANDINI” and “NANDHINI” respectively, in their products. It was claimed by the Respondent that the Appellant’s trademark cannot be registered as it would cause confusion in the public. However, the Supreme Court held that the appearance of the two marks were different, in addition to the fact that the marks were used for different products, and no average man of ordinary intelligence would relate the product of the Appellant as that of the Respondent. Furthermore, the Appellant had started using its trademark from the year 1989 which was as soon as the Respondent started using their trademark. The Respondent was also not able to prove that its trademark had acquired distinctiveness in the year 1989. Therefore, the registration of trademark in favour of the Appellant was upheld. Hence, as long as the Applicant is able to prove that the registration of a trademark would not cause confusion in the public and the same would not cause any disadvantage to an already existing mark, the registration shall be allowed.

As reiterated in the case of Nakshatra Distilleries and Breweries Ltd. vs. Radico Khaitan Limited and Ors. (ORA/271/2015/TM/MUM and ORA/227/2015/TM/MUM), no monopoly over a mark can be created over a descriptive mark for the entire classification of the goods when the user is confined to merely a particular good falling under a particular class. Thus, even if the Applicant has a trademark which is similar yet phonetically different or different in appearance, then he can register the same as long as it can be satisfied before the competent authority that it will not cause any deception or confusion in the public.

In yet another case of Mittal Electronics vs. Sujata Home Appliances (P) Ltd. and Ors. ( CS (COMM) 60/2020), the Court held that even if the goods of the Plaintiff and the Defendant falls under the same broad classification, if they are different goods used for different purposes, then the usage of similar marks may be allowed.

Additionally, under Section 12 of the Trademarks Act, in case of honest concurrent use or other special circumstances, the Registrar may permit the registration by more than one proprietor of the trademarks which are identical or similar irrespective of whether such trade mark is already registered or not. This may be in respect of the same or similar goods or services. The Registrar may, however, impose such conditions and limitations, as he thinks fit. For instance, in the case of Goenka Institute of Education and Research v. Anjani Kumar Goenka and Another (FAO (OS) No. 118/2009), both the Applicant and the Respondent had the word ‘Goenka’ as a part of their trademarks. Application of Section 12 was established in this case, as both the parties were established around the same time and both of them would not have known of each other’s existence as they were both located in different parts of the country. Therefore, the Registrar allowed the Registration of both marks with certain conditions, like making the Appellant enter the name of its trust in brackets for differentiating between the two marks. Hence, if the Applicant is able to prove honest and concurrent use, then again, the Registrar can allow the registration of the trademark.

In addition to this, as per Rule 33 of the 2017 Trademark Rules, if the response to the examination report is not satisfactory or where the Applicant has requested for a hearing, the registrar shall provide an opportunity for the same, and it shall be conducted according to Rule 115. It is also important for the applicant to appear on the date of hearing, failing which, the application shall be considered as abandoned. The above-mentioned are remedies that can help a Trademark Applicant in case of objection from the Trademark registry.
Authored By: Adv. Anant Sharma & Anjana Gopinath