How to reply to Trademark Objections under Section 11(2)(a) and Section 11(2)(b)

How to reply to Trademark Objections under Section 11(2)(a) and Section 11(2)(b) on Trademark Applications in India

Trademark applications in India often face objections under various sections of the Trademark Act, 1999, especially when the mark resembles or is identical to an earlier well-known trademark. Sections 11(2)(a) and 11(2)(b) of the Act are specific provisions that prevent the registration of a trademark that is likely to take unfair advantage of, or cause detriment to, a well-known mark in India.

This comprehensive blog will address how to respond to such objections, provide examples, and draft statements to overcome them. We will also cite relevant judgments from the High Courts and the Supreme Court of India to strengthen our arguments.

Understanding Section 11(2)(a) and Section 11(2)(b) of the Trademark Act, 1999

Section 11(2)(a) and 11(2)(b) specifically deal with well-known trademarks. According to the Act:

• Section 11(2)(a): A trademark shall not be registered if it is identical with or similar to an earlier trademark, even if it is for goods or services that are dissimilar to those covered by the earlier mark.

• Section 11(2)(b): The same rule applies if the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier well-known trademark.

Importance of Well-Known Trademarks

Well-known trademarks are given extended protection under Indian law to prevent dilution, tarnishment, or free-riding on their reputation, even for dissimilar goods and services. For instance, "Coca-Cola" or "Nike" are globally recognized brands that hold an extended scope of protection.

Grounds for Responding to Objections under Section 11(2)(a) and Section 11(2)(b)

When your application faces objections under these sections, it's essential to demonstrate why the mark in question should be registered. Below are key grounds for responding to such objections:

1. Dissimilarity of Goods and Services: Even though the well-known mark may exist, if the goods and services for which your mark is registered are fundamentally different, it can form the basis of a response.

2. No Unfair Advantage: Argue that the use of your trademark does not take advantage of the earlier mark's reputation. Your mark stands on its own, based on distinct branding or marketing.

3. Distinctive Character: Highlight that your trademark has developed its own distinctive character, independent of the well-known mark. Use market data and brand recognition in support.

4. Lack of Detriment: Argue that your trademark does not harm or dilute the earlier well-known mark, citing differences in target audience, market segment, or usage.

Drafting Responses to Objections: Format and Examples

A response to objections should be carefully drafted to ensure it addresses the grounds of objection under Sections 11(2)(a) and 11(2)(b). Below is a draft structure:

[Example Response Structure]

Subject: Response to Objection under Section 11(2)(a) of the Trademark Act, 1999

Reference: Trademark Application No. XXX, Mark: "XYZ"

To, The Registrar, Office of the Controller General of Patents, Designs, and Trademarks.

Respected Sir/Madam,

We acknowledge receipt of the examination report dated [insert date] wherein objections were raised under Section 11(2)(a) of the Trademark Act, 1999.

Our responses are as follows:

1. Dissimilarity of Goods and Services

The goods/services covered by the trademark application "XYZ" are distinct from the goods/services provided under the earlier well-known mark "ABC." The applicant's goods are in the category of [insert description] whereas the earlier mark deals with [insert description]. The dissimilarity negates any likelihood of confusion or association.

2. No Unfair Advantage or Detriment

The trademark "XYZ" has been used in connection with goods/services which are specific to a niche market. The well-known mark "ABC" is unrelated to this market segment, and therefore the use of "XYZ" does not take unfair advantage nor dilute the distinctive character or repute of "ABC."

3. Prior Use and Distinctiveness

The applicant has used the mark "XYZ" in India since [insert date] and has acquired a significant level of brand recognition. The use of "XYZ" is therefore distinctive in its own right and does not ride on the coattails of the well-known mark "ABC."

Based on the aforementioned reasons, we respectfully submit that the objection raised under Section 11(2)(a) of the Trademark Act, 1999 be withdrawn, and the trademark "XYZ" be registered in favor of the applicant.

Thanking you, Yours sincerely, [Applicant's name or Attorney's name]

Examples of Trademark Responses

Here are 10 examples of responses to objections under Section 11(2)(a) and 11(2)(b) of the Trademark Act, 1999.

1. Trademark Application for "TechWorld" vs. "TechWiz"

o Objection: Raised under Section 11(2)(a) claiming the marks are similar.

o Response: The term "Tech" is descriptive of the technology industry, and the remaining parts of the trademarks are entirely distinct in phonetic and visual appearance. The goods are also different, as "TechWorld" deals with software, while "TechWiz" is for consumer electronics.

2. "SuperCabs" vs. "SuperCars"

o Objection: Raised under Section 11(2)(b) arguing that both marks are for transportation-related services.

o Response: The goods and services are dissimilar, and the target market for cab services differs greatly from luxury car services, thus nullifying any potential advantage or detriment.

Citing Relevant Judgments in Support

In support of the responses, it's essential to refer to judgments from High Courts and the Supreme Court that have clarified the interpretation of Section 11(2)(a) and 11(2)(b).

1. Daimler Benz Aktiengesellschaft v. Hybo Hindustan (1994)

o In this case, the Supreme Court ruled that well-known marks such as "Benz" should not be allowed for use even for dissimilar goods such as undergarments. The rationale was that such use could dilute the reputation of the well-known mark.

o Application: In responding to objections, this case can be cited to emphasize the protection of well-known marks in dissimilar categories.

2. Tata Sons Ltd. v. Manoj Dodia (2011)

o The Delhi High Court emphasized that mere similarity is insufficient for an objection unless there is clear evidence of unfair advantage or detriment to the earlier mark’s reputation.

o Application: This case can be used to argue that a mere phonetic similarity is not enough to constitute an objection unless harm is proven.

Drafting Key Statements with Case Law Support

When responding to objections under Section 11(2), it’s essential to use robust legal arguments supported by case law. Here are examples of draft statements based on common objections:

Example Statement 1

Objection: The applicant’s trademark "EcoGreen" is similar to the well-known mark "GreenLife" used for environmental services.

Response:

The term "Green" is a generic term used in association with environmental goods and services. Therefore, the distinctiveness of the trademarks should be evaluated based on the remaining part of the marks, which are "Eco" and "Life." As held in Hindustan Lever Ltd. v. Nirma Pvt. Ltd., generic terms must be disregarded when evaluating the distinctiveness of trademarks.

Example Statement 2

Objection: "SolarTech" conflicts with the well-known trademark "SolarCity" for unrelated industries.

Response:

Although both trademarks share the term "Solar," the goods and services are entirely different. "SolarTech" deals with solar panels, whereas "SolarCity" provides financing solutions for renewable energy projects. As observed in Honda Motors Co. Ltd. v. Charanjit Singh, the similarity of a shared prefix does not automatically imply confusion when the target markets are distinct.

Key Differences Between Section 11(2)(a) and 11(2)(b)

        

Conclusion

Objections under Section 11(2)(a) and 11(2)(b) of the Trademark Act, 1999 protect well-known trademarks from dilution or harm, even across dissimilar goods or services. However, careful responses grounded in law, supported by factual evidence, and bolstered with case law can overcome these objections. By establishing dissimilarity in goods, lack of unfair advantage, and prior use, applicants can successfully defend their marks.