Refusal of registration- Relative grounds – Trademark registration
Refusal of registration- relative grounds- trademark registration in Cochin:
As under the section 12, a trademark would not be registered if, because
- Its identity with the earlier trade mark and the similarity of goods or services which are covered by the trademark; or
- It is very similar to the earlier trademark and the similarity or identity of the goods or services which are covered by the trademark,
There exists a likelihood of confusion on the part of public, which may include the likelihood of association with the earlier trademark.
A trademark which-
- Is similar or identical with an earlier trademark; and
- This has to be registered for the particular services or goods which should not be similar to those of earlier mark that has been registered in the name of the different proprietor.
Would not be registered, if or to the extent, the earlier trademark is a well-known trademark in India and without the due cause when we use the later mark, takes the unfair advantage of or be detrimental to the distinctive character or reputation of the earlier trademark.
Trademark will not be registered if, or to some extent, its use in India is liable to be prevented-
- By virtue of a law, in particular, the law of passing off protection an unregistered trademark used in the course of trade; or
- By virtue of a law of copyright.
There is nothing in this section will prevent the registration of a trademark where the proprietor of the existing trademark or other earlier right consents to the registration and in such a case, the registration of the trademark has been done by the registrar under the special circumstances as per section 12.
Explanation – For the purposes of this section, earlier trademark means-
- A trademark which has been registered or an application under the section 18 bears an earlier date of filing or an international registration which has been referred in section 36E or the application of convention referred to in section 154 which has a date of application that is earlier than that of the trademark in question, on consideration, appropriate and the priorities have been claimed in respect of trademarks;
- On registration of a trademark with the application date, where the priority has been claimed with respect to the application is entitled to protect as a well-known mark.
- A trademark would not refuse the registration on the grounds which have been specified in sub-section (2) and (3) unless the objection on any or more of those grounds rose in the opposition which has been proceeded by the proprietor of the earlier trademark.
- The registrar determines whether a trademark is a well-known mark or not, taking into account any fact which he considers is relevant for determining a trademark as a well-known mark which includes-
- The recognition or knowledge of a trademark in the relevant section of the public which includes knowledge in India which is obtained as a result of the promotion of a trademark;
- The extent, duration and the geographical area of any use of that trademark;
- Any promotion of a trademark, duration, and extent which includes the advertising or presentation and publicity, at fairs or exhibition of the goods or services to which the trademark applies;
- The geographical area and duration of any registration or any application for registration of that trademark under this act to the extent actually reflects the use or recognition of a trademark;
- The record of successful enforcement of the rights in that trademark; in particular, the extent to which the trademark has been recognized as a well-known, trademark by any court or registrar under that record.
The registrar determines whether a trademark is known or recognized in a relevant section of the public for the purposes of sub-section (6) which takes into account as-
- The number of actual or potential customers of the goods or services;
- How many persons are involved in the channel of distribution of goods and services;
- The business circles dealing with the goods or services, to which that trademark applies.
- A trademark needs to be determined as a well-known in at least one relevant section of the people in India by any registrar or court, the registrar obviously considers that as a well-known trademark for the registration under this act. The registrar would not require as a condition for determining whether a trademark is a well-known mark, following are the conditions to be met:
- That the trademark has been used in India;
- That the trademark has been registered;
- That the application for registration of the trademark has been filed in India;
- That the trademark-
- is well known in; or
- has been registered in; or
- in respect of which an application for registration has been filed in, any jurisdiction other than India; or
- That the trademark is well-known to the public at large in India.
- Considers an application for the registration of a trademark and the opposition filed in respect thereof, the registrar would-
- Protect a well-known trademark against the identical or similar trademarks;
- Take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trademark.
- A trademark has been registered in good faith which discloses the material information to the registrar or where the right to a trademark have been acquired before the commencement of this act through the use in good faith, then nothing in this section would prejudice the validity of registration of that trademark or right to use that trademark on the ground that such trademark is similar or identical to a well-known trademark.