Responding to Objections under Section 11(1)(a) and Section 11(1)(b)-Trademark-act

Responding to Objections under Section 11(1)(a) and Section 11(1)(b) of the Trademark Act, 1999 on Trademark Applications in India

When filing a trademark application in India, applicants may face objections under Section 11(1) of the Trademark Act, 1999, which deals with the prohibition of trademarks due to conflicts with earlier registered marks. Sections 11(1)(a) and 11(1)(b) are designed to prevent confusion in the marketplace due to identical or similar trademarks.

In this comprehensive guide, we will explore the key aspects of objections under Section 11(1)(a) and Section 11(1)(b), provide strategies to respond effectively, and offer relevant examples and judicial precedents to support your response.

Understanding Section 11(1) of the Trademark Act, 1999

Section 11(1) of the Trademark Act, 1999 reads as follows:

• Section 11(1)(a): A trademark shall not be registered if it is identical with an earlier trademark and covers similar goods or services.

• Section 11(1)(b): A trademark shall not be registered if it is similar to an earlier trademark and covers identical or similar goods or services.

The purpose of this section is to avoid confusion in the minds of consumers and protect the goodwill of earlier trademarks. When faced with objections under these subsections, the applicant must demonstrate that the applied-for trademark does not conflict with any earlier trademarks, or the likelihood of confusion is minimal.

Common Grounds for Objections under Section 11(1)(a) and Section 11(1)(b)

Objections under Section 11(1)(a) and 11(1)(b) typically arise when the Registrar of Trademarks finds:

1. Identity with an earlier mark: The applied-for trademark is identical to an existing registered trademark.

2. Similarity in marks: The applied-for trademark is similar in appearance, phonetics, or concept to an earlier mark.

3. Similarity in goods or services: The applied-for trademark covers goods or services that are similar or identical to those covered by an earlier mark.

4. Likelihood of confusion: The similarity in marks and the goods or services could cause confusion or deception among the public.

How to Respond to Objections under Section 11(1)(a) and 11(1)(b)

To respond to objections under Section 11(1)(a) and 11(1)(b), the applicant must present strong arguments backed by legal precedents and a clear understanding of the marketplace. Below are some strategies and draft responses for overcoming such objections.

1. Arguing Dissimilarity between Marks

One of the most common defenses against an objection under Section 11(1)(a) or 11(1)(b) is to argue that the applied-for trademark is not identical or confusingly similar to the earlier mark. This argument may focus on differences in the visual appearance, phonetics, or conceptual meaning of the marks.

Draft Response:

“The applied-for trademark differs significantly from the earlier cited mark in terms of visual appearance, phonetics, and conceptual meaning. These differences ensure that no confusion is likely to arise among consumers.”

Supporting Case:

In M/S Sarda Agro Oils Ltd. v. Deputy Registrar of Trademarks, the court held that minor differences between trademarks can avoid the likelihood of confusion.

2. Arguing Different Consumer Perception

In some cases, the target audience for the goods or services may be sophisticated or specialized, meaning that confusion is unlikely even if the marks are similar.

Draft Response:

“The goods/services offered under the applied-for trademark target a different consumer base than those of the earlier mark. The likelihood of confusion is minimal due to the specialized nature of the target audience.”

Supporting Case:

In Ramdev Food Products Ltd. v. Arvindbhai Rambhai Patel, the court recognized that the likelihood of confusion depends on the consumer group and the marketplace.

3. Arguing for Concurrent Use and Honest Adoption

If the applied-for trademark has been in use for a significant period alongside the earlier mark, the applicant may argue that the mark has coexisted without confusion. Evidence of honest adoption and continuous use can strengthen this argument.

Draft Response:

“The applied-for trademark has been in use for [number of years] without any instances of confusion with the earlier trademark. The applicant adopted the mark in good faith and has built a substantial reputation.”

Supporting Case:

In Power Control Appliances v. Sumeet Machines Pvt. Ltd., the court allowed concurrent use of trademarks when no confusion had arisen during long-standing concurrent use.

4. Arguing for Different Goods or Services

If the goods or services under the applied-for trademark are different from those covered by the earlier mark, the applicant can argue that the marks operate in different markets, reducing the likelihood of confusion.

Draft Response:

“The goods/services offered under the applied-for trademark are distinct from those covered by the earlier trademark, and the likelihood of confusion is negligible as the marks operate in separate industries.”

Supporting Case:

In Bajaj Electricals Ltd. v. Metal Industries, the court held that differences in the nature of goods can negate confusion even when the trademarks are similar.

5. Arguing Lack of Likelihood of Confusion**

The applicant can present an argument based on the principle that the likelihood of confusion must be proven rather than assumed. Various factors such as consumer perception, the strength of the earlier mark, and the distinctive nature of the applied-for mark can be considered.

Draft Response:

“The applied-for trademark, though somewhat similar to the earlier mark, does not pose any risk of confusion. The consumer base is knowledgeable and capable of distinguishing between the two marks.”

Supporting Case:

In Kumar Electric Works v. Anuj Electronics, the court reiterated that likelihood of confusion must be evaluated based on how an ordinary consumer perceives the trademarks.

6. Claiming Acquired Distinctiveness**

The applicant may argue that the applied-for trademark has acquired distinctiveness through long-standing use in the market, making it distinguishable from earlier trademarks.

Draft Response:

“The applied-for trademark has acquired distinctiveness through long-standing and widespread use in the relevant market. It is now well-recognized by consumers and unlikely to cause confusion with the earlier mark.”

Supporting Case:

In ITC Ltd. v. Britannia Industries Ltd., the court accepted the defense of acquired distinctiveness when the mark had been used for a considerable time.

7. Providing Evidence of International Registrations

If the applied-for trademark is registered in other jurisdictions without any objections or issues, this can be presented as evidence that the mark is not confusingly similar to any earlier marks.

Draft Response:

“The applied-for trademark has been successfully registered in [other jurisdictions], demonstrating that it is not considered confusingly similar to any earlier marks in those countries.”

Supporting Case:

In Novartis AG v. Cipla Ltd., the court acknowledged the relevance of international registrations in evaluating the distinctiveness of a trademark.

8. Arguing Lack of Use of the Earlier Mark

If the earlier trademark cited in the objection has not been used for a significant period, the applicant may argue that the mark has lapsed or is no longer associated with the goods/services it originally covered.

Draft Response:

“The earlier cited trademark has not been in active use for [number of years]. As a result, the mark has lost its distinctiveness, and there is no risk of confusion with the applied-for trademark.”

Supporting Case:

In Laxmikant V. Patel v. Chetanbhai Shah, the court held that the abandonment or non-use of a trademark can weaken its claim over conflicting marks.

9. Arguing Descriptive Nature of the Earlier Mark

If the earlier trademark is descriptive or lacks inherent distinctiveness, the applicant can argue that the scope of protection for such marks is limited, and the applied-for trademark is sufficiently distinct.

Draft Response:

“The earlier cited trademark is descriptive and lacks inherent distinctiveness. Therefore, the scope of protection is narrow, and the applied-for trademark is sufficiently different to avoid any likelihood of confusion.”

Supporting Case:

In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., the court highlighted the limited protection granted to descriptive marks, especially when consumers can easily distinguish between the marks.

10. Using Phonetic Dissimilarity as a Defense**

When two marks are phonetically dissimilar, even if they share some visual similarity, the applicant can argue that this reduces the likelihood of confusion.

Draft Response:

“The applied-for trademark is phonetically distinct from the earlier cited trademark, making confusion unlikely. Consumers are more likely to remember and differentiate trademarks based on sound.”

Supporting Case:

In Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill Enterprises, the court accepted phonetic differences as a valid argument against objections of similarity.

Examples of Trademarks and Response Strategies

Here are 10 examples of trademarks that faced objections under Section 11(1)(a) or 11(1)(b), along with potential grounds for responding:

1. APPLE (for electronics) vs APPLY (for similar goods) - Phonetic dissimilarity.

2. FASTFIT (for sportswear) vs FASTFOOT (for shoes) - Conceptual and product difference.

3. GLOBE (for education services) vs GLOBAL (for consultancy) - Market segmentation.

4. STARLIGHT (for cosmetics) vs STARBRIGHT (for perfumes) - Different industries.

5. LION TEA vs TIGER COFFEE - Different product categories.

6. MEGASTAR (for gaming) vs SUPASTAR (for similar goods) - Phonetic and visual difference.

7. SPEED (for vehicles) vs SPADE (for automobiles) - Lack of confusion due to phonetic differences.

8. SILVER EDGE (for cutlery) vs SILVER SPARK (for similar goods) - Product distinction.

9. NATURAL PLUS (for health products) vs NATURIA (for cosmetics) - Consumer knowledge of product type.

10. MYSTIC (for tourism) vs MYSTIK (for education) - Conceptual and market differentiation.

Conclusion

Responding to objections under Section 11(1)(a) and 11(1)(b) of the Trademark Act, 1999 requires careful analysis of the trademarks and the markets they operate in. By leveraging distinctions in phonetics, appearance, conceptual meaning, and market segmentation, applicants can build strong cases for overcoming objections. Judicial precedents support many of these arguments, emphasizing that confusion must be proven and not assumed.