Handling Trademark Objection under Section 11 of the Trademark Act of 1999 | IP Attorney in Delhi NCR | IP Lawyer in Delhi NCR |
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What should be done for a Trademark Objection under Section 11 of the Trademark Act of 1999?
The relative grounds for denial of registration are outlined in Section 11 of the Trade Marks Act of 1999. The aim of this provision is to safeguard the interests of registered trademark owners. The Section 11(1) states that if the public is likely to be misled by a mark that is identical or similar to an earlier trademark, and a subsequent mark for such goods/services is identical or similar to the goods/services represented by an earlier mark, the latter mark shall not be registered. As a result, if the subsequent mark is identified with the public as an earlier mark, the resemblance between the marks is likely to create confusion and thereby bring on lawsuits. As a result, if the subsequent mark is identified with the public in the same way as an earlier mark, the resemblance between the marks is likely to create confusion, bringing it into the reach of Section 11 (1). There is no need to prove uncertainty when the goods/services are similar. However, if there is a possibility of confusion between an earlier and subsequent trademark and the goods/services are similar or identical, the likelihood of confusion must be established.
The Section 11(1) provides that, a trademark cannot be registered if it is identical to an earlier trademark, or if the products or services covered by the trademark are similar, or similar to an earlier trademark, and the goods or services covered by the trademark are identical or similar to the goods or services covered by the trademark. In the case of Amritdhara Pharmacy v Satya Deo( 1963 AIR 449) the similarity of the terms “Amritdhara” and “Lakshmandhara” in relation to medicinal preparations was considered. Both of these words had a resemblance when read or spoken together, which may cause confusion. The Supreme Court ruled that an ordinary buyer with “normal intelligence” and “imperfect remembrance” could not be expected to break the terms down into their constituent parts and compare their etymological meanings or consider the meanings of the component words such as “current of nectar” (Amritdhara) or “current of Lakshman” (Lakshmandhata).
The Section 11(2) provides that, a trademark that is identical or similar to an earlier trademark that is to be registered for products or services that are not similar to those registered under another owner’s name is not to be mentioned. This was highlighted in the case of Carrefour v V Subburaman (2007 (35) PTC 225 (Mad)) in this case, the applicants have been using the term CARREFOUR for their retail business all over the world since 1960. From July 2000, the proprietor filed a passing-off lawsuit against the respondents for using the trademark “Carrefour” for furniture. In this case, the trademark was not registered in India in the applicant’s favour with regard to furniture. In the case of furniture, it was registered in other countries, and in the case of other products, it was registered in India. As a result, a substantial portion of the population remembered and correlated the applicants’ goods with the trade name “CARREFOUR,” and was likely to equate the respondents’ items with those of the applicants. As a result, a substantial portion of the public recognised and correlated the applicants’ goods with the trade name “CARREFOUR,” and was likely to make a trade link between the respondents’ and the applicant’s items. As a result, the Court determined that the trademark “CARREFOUR” is well-known.
The Section 11(3) provides that, a trademark shall not be registered if or to the degree that its use in India is prohibited by any statute, including the law of passing off, which protects an unregistered trademark used in the course of business.
In most of the cases what happens is that if the applicant is not complying with Section 11 of the Trademark Act of 1999 then it will be rejected. If one’s application is rejected then, within thirty days of receiving the objection, the applicant must respond. The application will be considered abandoned if the reply is not filed within thirty days of the report. If he application will be processed further for registration and registered in the Trademark Journal, then the response is approved. If it is not approved, the registry will schedule a hearing and notify the Trademark Agent of the date and time.
Authored By: Adv. Anant Sharma & Swayamsiddha Das