Hearing in Trademark Opposition – Trademark Registration in Tirupur
Introduction to Hearing
Section 21(5) requires the Registrar to afford an opportunity of a hearing to the parties before deciding the opposition. Section 131(2), however, makes it clear that the Registrar is not required to hear the parties before disposing off an application for extension of time, and no appeal shall lie from any order of the Registrar under this Section.
After hearing the parties and considering the evidences the registrar is required to decide whether the trademark registration is to be permitted and if so subject to what conditions or limitations. He is also empowered to take into account a ground of objection whether relied on by the opponent or not.
Where grounds of refusal of registration exist in respect only of some of the goods or services for which the trade mark has been applied for, refusal of a trademark registration shall cover those goods and services only. See Article 13 of the EEC Directive. It is to be noted that the U.K. Trade Marks Act, 1994 does not contain an express provision to this effect but nevertheless it is binding in the registry proceedings in the U.K. Since the basic philosophy of the Trade Marks Act, 1999 is also to “provide for registration & better protection of trademarks“, it is expected that the Indian Registry will also follow the same practice adopted by the U.K. Registry.
Rules regarding adjournment
Rule 50 contains provisions for appointment of hearing and general rules relating to adjournment in trademarks proceedings before Registrar.
Rules 50(2-6) of the Trade Marks Rules, 2017 provide:
- A party to a proceeding may make a request for adjournment of the hearing with reasonable cause in Form TM-M accompanied by the prescribed fee, at least three days before the date of hearing and the Registrar, if he thinks fit to do so, and upon such terms as he may direct, may adjourn the hearing and intimate the parties accordingly. Provided that no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days.
- If the applicant is not present at the adjourned date of hearing and at the time mentioned in the notice, the application may be treated as abandoned.
- If the opponent is not present at the adjourned date of hearing and at time mentioned in the notice, the opposition may be dismissed for want of prosecution and the application may proceed to registration subject to section 19.
- The Registrar shall consider written arguments if submitted by a party to the proceedings.
- The decision of the Registrar shall be communicated to the parties in writing at the address given for service.
Section 129 provides that evidence before the Registrar shall be given by affidavit and that if he thinks fit, the Registrar may take oral evidence in lieu of or in addition to such evidence by affidavit. This is an enabling power of the Registrar, which any party may invoke if there is a prima facie case of suspicion in any statement made in the other party’s affidavit.54 There is no provision corresponding to rule 49 of the UK trade marks rules for cross examination. Even taking oral evidence is a matter of discretion for the registrar where he thinks fit. The purpose of section 129 is to establish a clear preference for written evidence by way of affidavit in proceedings before Registrar.
Where there is a conflict of evidence (and it is material for the purposes of the dispute for the hearing officer to resolve that conflict) and where it is thought that cross examination is either desirable or necessary to assist him in that task an application for cross examination must be made prior to the hearing before the registry. If the hearing officer wrongly declines to allow cross examination, that can be the subject of an appeal.
Notice of intention to attend hearing to be given
The parties requiring to be heard have to give a notice of intention to attend the hearing on Form TM-7 together with the prescribed fee. Any party not notifying the Registrar within the time limit allowed may be treated as not desiring to be heard and the Registrar may act accordingly.
After considering the evidence and after hearing the parties, if so required, the Registrar shall decide whether and subject to what conditions and limitations, if any, the trademark registration is to be permitted. While doing so, the Registrar may also take into account any new objection whether or not relied upon by the opponent, after giving due notice thereof to the applicant. As a tribunal, the Registrar will decide the matter on merits and in this he is not bound by any earlier decision of the Registry in accepting the registration prior to its advertisement. However, it is clear that without providing an opportunity to file evidence under the rule 48, the matter cannot be disposed of.
Considerations which arise in infringement and passing off actions are not the same as those which arise in an opposed application for registration of a new mark.
In an opposition proceeding to the registration of a mark on the basis of alleged similarity of marks, the likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark is a hypothetical question. It looks to the future use of the mark and embraces any normal and fair use which as registered proprietor the applicant would be entitled to make use in the ordinary course of trade in respect of goods for which registration is sought.
In the first instance, the onus is on the opponent to allege and prove the existence of facts which may lead the tribunal to assess the existence of likelihood of confusion in the minds of the public, which includes likelihood of association with the earlier mark. Generally, however, it is a well-established principle that in an application for registration of a trademark, the onus is on the applicant to satisfy the Registrar or the court that there is no reasonable probability or confusion and that the onus must be discharged in respect of all goods coming within the specification applied for, and not only in respect of these goods on which he is proposing to use it immediately.
The onus is not discharged by proof only that any particular method of use will not give rise to confusion. If the matter is in dubio, the application will be refused.
In National Sewing Thread Co. Ltd., versus James Chadwick & Bros., the Supreme Court held as follows under the Trade Marks Act, 1940: “What the Registrar has to see is whether looking at fhe circumstances of the case a particular, trademark is likely to deceive on to cause confusion. The principles of law applicable to such cases are well settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant…
Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the trademark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark with the goods which he would be purchasing.
The burden of proof in an opposition lies on the opponent. It is for the opponent to show that the relevant likelihood of confusion exists.
Damage to opponents’ trade not material
It has been held that “the likelihood of damage to the trade of opponents is not a material factor in arriving at a conclusion on the point whether the use of the trademark is likely to deceive or cause confusion.”
For the purposes of section 11(1), which calls for consideration of use and reputation of the mark, it is the market of this country that must be taken into account. Foreign markets are wholly irrelevant. See also Berkefeld Filter Analagenbau Gmbh versus Registrar of Trade Marks. Trademarks Act is territorial, as is explicit in Section 1 by which the Act is the registered proprietor’s right in the mark will extend to preventing the export of goods bearing the infringing mark as well as suppressing such imports.
In the case of all applications, including opposed applications, the right of the party or parties are to be determined as at the date of the application.
Custom of Trade
Under section 144, in any proceeding relating to a trade mark, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get up legitimately used by other persons. Thus, in Palmolive TM, the fact that the customary to indicate the composition of oils used in the manufacture of soaps was taken into consideration in holding that the word had a direct reference to the character or quality of goods.
Use on different goods
Where the competing goods are different, the probability of confusion is less, since the reputation and goodwill attached to the trademark relates to particular goods or service in respect of which the mark is used. But there may be marks, which by reason of wide publicity and association with certain goods or service of outstanding quality, even if used on goods or services which are totally different, is likely to cause confusion with the earlier mark. What has to be found is whether the mark which the applicant’s seek to use has come to be known and associated with the name of the opponent not necessarily with particular goods of the same description, but generally with its goods. Thus, if it could be shown that the mark has been quite extensively used in the market by the opponent for a variety of goods with the result that any goods which may be marketed under the same mark will be associated with the name of the opponent so that people buying may feel that is the product of the opponents, this could be a sufficient justification for refusing registration of a similar mark in favor of the applicants.
Nature of goods/services
The nature of goods is an important factor to be considered, for generally speaking the more special in character those goods are and the more limited their market, the less likely will be the inference that there is a tangible danger of confusion or deception.
The principles laid down in the Jellinek’s Appl are continued to be applied by the UK Registry, under the 1994 Act, which will be followed by the Indian Registrar. The nature of goods, their purpose and channels of trade (consisting of Products or manufacturer, wholesaler and retailer) will be considered. In the case of departmental stores or supermarkets, the channels of trade for the competing goods may be same, if they are sold in the same department or over the same counter, or if they are commonly displayed.
Considerations, when the goods are pharmaceuticals and medicines:
In American Home Products Corporation versus K.V Chennamallu, the Intellectual Property Appellate Board has stated that among other things, the following factors have to be considered in deciding the similarity between the marks, where the goods are pharmaceuticals and medicines:
- The class of purchasers and in case of medicines, it is purchased by both literate and illiterate residing in villages and towns and also by a man of average intelligence and imperfect recollection.
- Potential harm may be far more serious in case of medicines than in the case of other consumable products.
- Even in case of prescription drugs prescribed by doctors and dispensed by chemists, confusion and mistakes are likely when marks which look alike and sound alike are marketed.
- Medicines are sometimes ordered over telephone. Hence, if there is phonetic similarity, it enhances the chances of confusion or mistake by the pharmacists. Sometimes, in hospitals, drugs may be requested verbally under critical conditions to treat patients.
- Prescriptions are handwritten and many times it is not unmistakably legible if the rival marks appear too much alike then there are chances of confusion or mistake by the pharmacists while dispensing the medicine.
- The drugs have a marked difference in the composition with completely different side effects. Even if the rival drugs are for curing the same ailment, there is possibility of harm resulting from any kind of confusion and the consumer can have unpleasant if not disastrous results.
- Even though the physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provision for mistake since even a possibility of mistake may prove to be fatal.
- In case of medicines, whether there is any probability of confusion should not be speculated, but that if there is any possibility of confusion the use of confusingly similar trademarks should be enjoined.
- Confusion by the use of similar marks which are used for different diseases for medicinal products could have disastrous effect on health and in some cases life itself.
- In a country like India, where a small fraction know English and for whom different words with slight difference in spelling may sound phonetically same and who cannot pronounce the marks correctly, the use of deceptively similar marks could cause confusion.
Degree of Similarity
In Parle Products (P) Ltd. versus J.P. & Co. Mysore, the Supreme Court held that “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 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 mislead a person usually dealing with one to accept the other if offered to him.. .After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes.”
In Tavener Rutledge Ltd. versus Specters Ltd.,” the tins of hardboiled sweets sold by the plaintiffs carried the brand name “Taveners Fruit Flavoured Drops” while the tins of the defendants carried their brand name which was “Specters Fruit Flavored Drops”. It was held that the difference in the two brand names was not material because the Court was dealing with the average consumer of imperfect recollection; the Court would have to allow for cases where the consumer did not have two tins side by side for careful comparison.
As was held by the European Court of Justice in Windsurfing Chiemsee versus Huber, “In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed.”
A conclusion on the likelihood of confusion by reason of aural use is something that has to be taken in to account once one has considered also conceptual similarity. It is the conceptual similarity that is going to condition the imperfect recollection of the purchaser. In this case, conceptually the word “React” was held to be different from the word REACTOR. The appointed person as the appellate court in the same case held that “A mere possibility of confusion is not sufficient. The Act requires that there should be in existence a likelihood of confusion. Paraphrasing that expression cannot help to reach a decision. I have seen comments such as “a real likelihood”, “a substantial likelihood”, “a genuine likelihood”. This is a question of evaluation which has to take into account the likelihood visually, aurally and conceptually.
Nature of services
As per the U.K. practice, the principal factor in deciding the matter must be whether or not it is likely the public would naturally expect the services in question to be provided by the same service organization. A comparison of the following criteria will assist in reaching a decision on the likelihood:
- The nature of service
- In respect of what, if any, articles
- Users of service
- Normal business relationships.
It will not be a requirement to establish similarity in all four respects. For example, plumbing and building services differ under heads – nature of service and articles, but nevertheless they must be services of the same description because of the common users of the two services and the normal close business relationship of the two services. It is not uncommon to encounter businesses which describe themselves as builders and plumbers.
Similarly, banks and building societies differ somewhat in the nature of the services they provide, but parts of a bank’s service often coincide with those of building societies ; thus the same or closely resembling trademarks used by a building society and a bank in relation to investments and mortgages would be highly likely to confuse the public as to the provider of the services. Similarly, there is close business relationship between building societies and estate agencies, though the nature of service may differ. Therefore, use of same or closely resembling mark will confuse the public. The case must be decided on its particular circumstance and in practice if the service overlap in respect of two headings, there will be a presumption of similarity. For more details about Trademark Registration in Tirupur, kindly visit our website and feel free to contact us… Thanks for Reading!!!