How to reply to Trademark Objections under Section 11(3)(a) and Section 11(3)(b)

How to reply to Trademark Objections under Section 11(3)(a) and Section 11(3)(b) of Trademark Act

Section 11(3)(a) and Section 11(3)(b) of the Trademark Act, 1999

Section 11(3) states that a trademark shall not be registered if its use in India:

• Section 11(3)(a): Is liable to be prevented by any law, especially the law of passing off protecting an unregistered trademark used in the course of trade.

• Section 11(3)(b): Is liable to be prevented by virtue of any law of copyright.

In essence, these provisions are designed to prevent the registration of trademarks that conflict with existing unregistered rights, such as through passing off or copyright infringement.

Definition and Explanation of Section 11(3)(a)

Section 11(3)(a) addresses objections based on the common law tort of passing off. Passing off occurs when one party misrepresents their goods or services as being associated with another business that has established goodwill. If a trademark applicant’s proposed mark is confusingly similar to an unregistered mark, the objection may be raised under this section.

Definition and Explanation of Section 11(3)(b)

Section 11(3)(b) deals with the protection of trademarks that infringe copyright. If a proposed trademark replicates or is similar to a copyrighted work, the trademark application may face objections under this section.

Section 11(4) and its Role in Addressing Objections

Section 11(4) clarifies that objections under Section 11(3) may be set aside if the proprietor of the earlier trademark or copyright consents to the registration of the later mark. This provides a route for trademark registration if both parties come to an agreement.

Practical Application of Section 11(4)

Section 11(4) allows applicants to resolve conflicts by obtaining consent from the proprietor of the earlier rights. This could be through a co-existence agreement or a formal consent letter. Once the consent is obtained, the registrar may accept the application.

Section 12 and Honest Concurrent Use

Section 12 provides an exception to objections under Sections 11(2) and 11(3) based on honest concurrent use or special circumstances. This provision allows for the registration of identical or similar marks if the applicant can prove that the mark has been used concurrently and honestly alongside the earlier mark without causing confusion.

Key Elements of Honest Concurrent Use:

• The mark has been used without fraudulent intention.

• There has been substantial use of the mark, building goodwill.

• The use is of a nature that does not mislead consumers.

Examples of Grounds for Objection under Section 11(3)(a)

1. "Stylish Footwear" vs. "Style Footwear"

o Ground: Similarity in name and trade, leading to passing off.

o Response: The mark is distinct in presentation and design, and there is no misrepresentation or deception.

o Case Law: Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd.

2. "Fresh Bakery" vs. "Freshly Baked"

o Ground: Likelihood of confusion in the same industry.

o Response: Honest concurrent use of "Freshly Baked" for over five years with significant market presence.

o Case Law: Laxmikant V. Patel vs. Chetanbhat Shah & Anr.

Examples of Grounds for Objection under Section 11(3)(b)

1. "Artistic Prints" using a famous painting

o Ground: Copyright infringement due to similarity to a copyrighted artwork.

o Response: Obtained proper licensing for use of the artwork in branding.

o Case Law: Amar Nath Sehgal vs. Union of India

2. "Movie Mania" replicating a film poster

o Ground: Trademark replicates a copyrighted film poster.

o Response: Modified the design and obtained permission from the copyright holder.

o Case Law: The Chancellor Masters and Scholars of the University of Oxford v. Rameshwari Photocopy Services

Case Studies Highlighting Section 11(3)(a) and 11(3)(b) Objections

Case Study 1: Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd.

This case highlights the importance of consumer confusion in passing off cases. The court held that even minor variations in trademarks could still lead to confusion if the goods or services are similar. The judgment is often cited in cases involving Section 11(3)(a).

Case Study 2: Amar Nath Sehgal vs. Union of India

In this case, the Delhi High Court ruled in favor of the plaintiff, who argued that his copyrighted artwork was being used without consent. The court's decision underlined the need for prior permission when using copyrighted materials, relevant to Section 11(3)(b) objections.

Drafting Responses to Section 11(3)(a) and 11(3)(b) Objections

When responding to objections under these sections, it is crucial to provide detailed reasoning and evidence to counter the claims made by the registrar. Below are some common grounds and sample responses:

Ground 1: No Likelihood of Confusion (Section 11(3)(a))

• Draft Statement:

"The applicant submits that the proposed trademark 'X' is distinct in its visual and phonetic elements from the earlier unregistered mark 'Y'. The goods/services offered under the applicant's mark have coexisted with the earlier mark in the market for several years without any reported instances of confusion. The applicant also emphasizes that both marks target different consumer bases, thus further eliminating any likelihood of confusion."

Ground 2: Honest Concurrent Use (Section 12)

• Draft Statement:

"The applicant has used the mark 'X' continuously and honestly in the course of trade since [year]. During this period, the applicant has built substantial goodwill, as evidenced by market surveys and financial data. The applicant respectfully submits that the use of the mark has been without deception or malintent, and as such, registration should be granted under the doctrine of honest concurrent use as provided in Section 12 of the Trademark Act, 1999."

Ground 3: Consent from Proprietor (Section 11(4))

• Draft Statement:

"The applicant has obtained formal consent from the proprietor of the earlier trademark 'Y' to use and register the proposed trademark 'X'. A copy of the consent letter is attached for the registrar's reference. In light of this consent, the applicant respectfully requests the withdrawal of the objection raised under Section 11(3)."

Tabulated Differences Between Section 11(3)(a) and 11(3)(b)

Conclusion

Navigating objections under Sections 11(3)(a) and 11(3)(b) of the Trademark Act, 1999 requires a clear understanding of the laws of passing off and copyright. By leveraging strategies such as honest concurrent use, obtaining consent, and distinguishing marks based on visual and phonetic elements, applicants can successfully overcome such objections. The provisions of Section 12 and Section 11(4) offer additional avenues for resolution, allowing for the registration of marks in certain circumstances.