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Detailed Guide on Trademark Objections under Section 11(3)(a) and Section 11(3)(b)
Detailed Guide on Trademark Objections under Section 11(3)(a) and Section 11(3)(b) of the Trademark Act, 1999 in Reference to Section 11(4) and Section 12
Trademark law in India aims to protect not only the rights of trademark proprietors but also to ensure that consumers are not misled by confusingly similar or identical marks. Under the Trademark Act, 1999, objections may be raised during the registration process if a trademark conflicts with earlier, well-established trademarks. Sections 11(3)(a) and 11(3)(b) specifically deal with instances where a trademark application may be denied registration due to potential infringement on unregistered marks protected by the law of passing off or copyright law. In conjunction, Section 11(4) provides some leeway for the registration of conflicting marks with the consent of the earlier trademark proprietor. Furthermore, Section 12 allows for the registration of identical or similar trademarks under certain special conditions, such as honest concurrent use.
This blog will thoroughly discuss these sections, provide examples, case studies, and explore the legal framework of trademark objections in India.
Section 11(3)(a) of the Trademark Act, 1999
Section 11(3)(a) of the Trademark Act, 1999, states that a trademark shall not be registered if its use in India is likely to be prevented by any law, particularly by the law of passing off, which protects an unregistered trademark used in the course of trade. Passing off occurs when one party misrepresents its goods or services as those of another party, leading to confusion among consumers. Even if a mark is unregistered, the law of passing off grants it protection.
Example 1: If a company applies for a trademark identical or similar to an established, though unregistered, brand name in the same market, the latter can invoke the law of passing off to prevent the registration of the new mark.
Example 2: Suppose a startup tries to register the trademark "McFried" for its fast-food chain. The owners of "McDonald's," even though "McFried" is unregistered, could argue that it creates confusion with their brand and invoke passing off.
Section 11(3)(b) of the Trademark Act, 1999
Section 11(3)(b) of the Trademark Act, 1999, states that a trademark shall not be registered if its use in India would likely be prevented by virtue of any law, particularly copyright law. This provision prevents trademark registration if the mark conflicts with an existing copyright in India.
Example 3: If a person attempts to register a trademark consisting of a well-known copyrighted character, such as Mickey Mouse, the trademark would be refused registration under Section 11(3)(b) because Disney holds copyright over the character.
Example 4: A company attempting to register an original photograph from a famous art exhibit as its logo would face objections under Section 11(3)(b), as copyright protects the original work.
Section 11(4) of the Trademark Act, 1999
Section 11(4) serves as an exception to the restrictions under Section 11. It allows the registration of a trademark where the proprietor of the earlier trademark consents to the registration of the later mark. In this case, the Registrar may register the conflicting mark under special circumstances, as outlined under Section 12.
Example 5: If a small beverage company applies to register the mark “Red Sun,” which is similar to “Red Bull,” the owners of Red Bull may consent to the registration. This consent would allow the mark to be registered, provided that both parties agree, despite the earlier well-known trademark.
Section 12 of the Trademark Act, 1999: Honest Concurrent Use
Section 12 of the Trademark Act, 1999, provides for the registration of trademarks that are identical or similar, provided that there is honest concurrent use or other special circumstances that justify registration. Honest concurrent use refers to situations where two trademarks, though identical or similar, have been used independently by different proprietors without conflict for a significant period.
This section allows the Registrar to permit the registration of identical or similar marks if the circumstances are deemed appropriate. It also provides flexibility in cases where honest concurrent use is proven, and neither party had the intention to deceive or confuse consumers.
Example 6: A company in Delhi and another in Mumbai may have used similar trademarks for their respective businesses for years without any conflict. If both apply for registration, the Registrar may grant registration to both parties, recognizing the honest concurrent use.
Differences between Section 11(3)(a) and Section 11(3)(b) in Reference to Section 11(4) and Section 12
Responding to Objections under Section 11(3)(a) and Section 11(3)(b)
When a trademark application is objected to under Section 11(3)(a) or Section 11(3)(b), the applicant must address the concerns raised by the Registrar, either by proving that the objection is unfounded or by presenting a compelling case for registration under Section 11(4) or Section 12.
Response Strategies for Section 11(3)(a) Objections
1. Proving Absence of Confusion: In cases where an objection is raised under Section 11(3)(a) due to the law of passing off, the applicant can argue that the marks are distinguishable and not likely to cause confusion in the market.
Draft Statement: “The applicant respectfully submits that the applied mark, although similar to the earlier unregistered mark, is visually and conceptually different, and is unlikely to cause confusion in the market. The target audiences of both marks are distinct, and the goods/services offered under the respective marks cater to separate consumer groups.”
2. No Misrepresentation or Deception: The applicant can also argue that the applied mark has been used honestly without any intention to misrepresent or deceive the public.
Draft Statement: “The applicant has been using the mark in good faith and without any intent to deceive or misrepresent its goods/services as those of another proprietor. No instances of confusion or deception have been recorded during the course of trade.”
3. Established Market Presence: If the applicant can demonstrate a well-established market presence for its mark, it may argue that its trademark has acquired distinctiveness, and the public associates the mark exclusively with the applicant’s business.
Draft Statement: “The applicant has established a strong market presence over the years, and the mark has acquired distinctiveness. The public associates the mark with the applicant’s goods/services, and there is no likelihood of confusion with the earlier unregistered mark.”
Response Strategies for Section 11(3)(b) Objections
1. No Copyright Violation: The applicant can argue that the applied trademark does not infringe any existing copyright, particularly if the design, logo, or name used in the trademark is an original creation and does not copy any protected material.
Draft Statement: “The applied mark is an original creation of the applicant, and its use does not infringe upon any copyrighted material. The applicant has taken due care to ensure that the mark is distinct and does not violate the copyright of any third party.”
2. Fair Use of Public Domain Content: If the design or logo is based on public domain content or elements that are not subject to copyright protection, the applicant can present this as part of the defense.
Draft Statement: “The elements used in the applied mark are based on content that is freely available in the public domain and are not protected by copyright law. The applicant has used these elements in a transformative and non-infringing manner.”
Case Studies and Judgments
Several High Court and Supreme Court rulings provide insight into how objections under Section 11(3)(a) and Section 11(3)(b) have been handled.
1. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001): The Supreme Court emphasized the importance of considering factors like the nature of goods, similarity of marks, and the likelihood of confusion when dealing with passing-off cases under Section 11(3)(a).
2. Amritdhara Pharmacy v. Satya Deo Gupta (1963): In this case, the Supreme Court laid down the principle of confusion and the likelihood of deception in passing-off cases, which is relevant to objections under Section 11(3)(a).
3. Cartier International AG v. Gaurav Bhatia (2014): This case dealt with objections under Section 11(3)(b), where Cartier successfully prevented the registration of a trademark that infringed its well-known copyrighted designs.
Conclusion
Understanding and responding to objections under Section 11(3)(a) and Section 11(3)(b) of the Trademark Act, 1999, is crucial for trademark applicants in India. These sections safeguard earlier trademarks, particularly unregistered marks and copyrighted works, from being infringed by new applications. However, Section 11(4) and Section 12 provide exceptions where registration can be granted under special circumstances, such as with the consent of the earlier proprietor or in cases of honest concurrent use. By following the legal provisions and responding appropriately to objections, applicants can successfully navigate the trademark registration process and protect their intellectual property.
