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Trademark Objections under Section 11(2)(a) and Section 11(2)(b) Trademark Act
Trademark Objections under Section 11(2)(a) and Section 11(2)(b) of the Trademark Act, 1999
Trademark registration in India is governed by the Trademark Act, 1999, which lays out several provisions that ensure the protection of earlier trademarks and prevent the unfair use of well-known marks. One such provision is Section 11(2), which addresses objections related to the similarity of a trademark to an earlier well-known mark.
In this blog, we will discuss Section 11(2)(a) and Section 11(2)(b) of the Trademark Act, 1999, and provide detailed explanations, examples, and strategies to handle objections under these sections. We will also explore the differences between objections under these subsections and how applicants can navigate the legal framework effectively.
Understanding Section 11(2) of the Trademark Act, 1999
Section 11(2) of the Trademark Act, 1999 provides protection to well-known trademarks in India from being registered by others for dissimilar goods or services. The section is primarily aimed at ensuring that the reputation and distinctiveness of well-known marks are not exploited by other traders or businesses.
Section 11(2) states that:
1. Section 11(2)(a): A trademark that is identical or similar to an earlier trademark cannot be registered if the earlier mark is well-known in India.
2. Section 11(2)(b): The mark cannot be registered even if it is for dissimilar goods or services, provided that the use of the later mark without due cause would:
o Take unfair advantage of the well-known mark.
o Be detrimental to the distinctive character or repute of the well-known mark.
Let’s break down these sections further:
Section 11(2)(a): Identical or Similar to a Well-Known Trademark
This subsection prohibits the registration of a trademark that is either identical to or similar to a well-known trademark in India. Unlike the provisions dealing with goods or services that are similar, this section applies even if the goods or services under the new application are dissimilar to those covered by the well-known mark.
The protection of well-known trademarks is broader, and they enjoy a higher degree of protection due to their established reputation.
Section 11(2)(b): Unfair Advantage or Detrimental to Well-Known Trademark
Section 11(2)(b) focuses on the impact of the later mark’s use on the well-known trademark. Even if the later mark is for dissimilar goods or services, it cannot be registered if it takes unfair advantage of the well-known trademark's reputation or is detrimental to its distinctiveness or repute.
This provision ensures that the goodwill and reputation built by well-known trademarks are protected from being diluted or exploited by others.
Examples of Well-Known Trademark Objections under Section 11(2)(a) and Section 11(2)(b)
Here are five examples of trademarks that faced objections under Section 11(2):
1. Example 1: COCA-COLA (Well-known mark)
o Applied-for trademark: COCOOLA (for apparel)
o Objection: The applied-for trademark is similar to the well-known mark COCA-COLA, and the use on apparel would take unfair advantage of the reputation of the COCA-COLA brand under Section 11(2)(a).
2. Example 2: APPLE (Well-known mark for electronics)
o Applied-for trademark: APPLE BITE (for food and beverages)
o Objection: The applied-for trademark would dilute the distinctive character of the well-known APPLE trademark in the electronics industry, invoking Section 11(2)(b).
3. Example 3: NIKE (Well-known mark for sportswear)
o Applied-for trademark: NIKEY (for personal care products)
o Objection: The applied-for mark is similar to the well-known NIKE mark, and the use would take unfair advantage of the reputation of the NIKE trademark, contravening Section 11(2)(a).
4. Example 4: McDONALD'S (Well-known mark for fast food)
o Applied-for trademark: MCDONNIE'S (for household goods)
o Objection: The applied-for trademark is phonetically similar to McDonald's, and its use would be detrimental to the distinctive character of the well-known McDonald’s trademark under Section 11(2)(b).
5. Example 5: LUX (Well-known mark for soaps and toiletries)
o Applied-for trademark: LUXURIA (for furniture)
o Objection: Even though the goods are dissimilar, the applied-for trademark would unfairly benefit from the reputation of the well-known LUX trademark under Section 11(2)(a).
How to Respond to Objections under Section 11(2)(a) and 11(2)(b)
To respond to objections under these sections, an applicant must present legal arguments and evidence to demonstrate that the applied-for trademark does not conflict with the well-known trademark or does not cause harm as stated in the objection.
1. Arguing Dissimilarity in Goods/Services
One approach to responding to an objection is to argue that the goods or services are so dissimilar that the later mark cannot possibly take unfair advantage or cause harm to the well-known mark.
Draft Response:
“The applied-for trademark covers goods/services that are entirely different from those covered by the well-known trademark. As such, there is no likelihood of confusion, and the applied-for mark does not take unfair advantage or harm the distinctive character or repute of the well-known trademark.”
Supporting Case:
In Honda Motors Co. Ltd. v. Charanjit Singh & Ors., the court held that marks used for dissimilar goods or services would not necessarily cause harm to the well-known trademark unless unfair advantage or detriment could be demonstrated.
2. Arguing Lack of Reputation in Relevant Class
Another argument may involve showing that the earlier trademark, though well-known in a particular industry or class of goods, does not have a significant reputation in the class covered by the applied-for trademark.
Draft Response:
“The earlier well-known trademark is recognized in a specific market segment, whereas the applied-for trademark is intended for a different and unrelated segment. Therefore, the use of the applied-for trademark does not take unfair advantage of or harm the reputation of the earlier well-known trademark.”
Supporting Case:
In Bajaj Electricals Ltd. v. Metal Industries, the court considered the relevance of the well-known trademark in the market in which the goods are sold when evaluating objections under Section 11(2).
3. Arguing Lack of Unfair Advantage or Harm
An applicant can argue that the applied-for trademark does not take unfair advantage of the earlier well-known trademark, and there is no harm to its distinctive character or repute.
Draft Response:
“The use of the applied-for trademark does not take unfair advantage of the earlier well-known trademark. Further, there is no evidence to suggest that the use of the applied-for trademark will be detrimental to the distinctive character or repute of the earlier well-known trademark.”
Supporting Case:
In Daimler Benz Aktiegesellschaft v. Hybo Hindustan, the court emphasized that the applicant must provide evidence of unfair advantage or harm caused by the later mark for the objection to succeed.
Key Differences Between Section 11(2)(a) and Section 11(2)(b)
The table below highlights the key differences between Section 11(2)(a) and Section 11(2)(b) of the Trademark Act, 1999:
Conclusion
Section 11(2)(a) and 11(2)(b) of the Trademark Act, 1999 provide comprehensive protection to well-known trademarks by preventing registration of identical or similar marks, even for dissimilar goods or services. Understanding the nuances of these sections can help applicants craft effective responses to objections and demonstrate that their trademarks do not conflict with the well-known marks.
By using legal arguments, case law, and evidence of market dissimilarities, applicants can successfully navigate objections under these provisions and secure trademark registration in India.
Ensure that your trademark application is robust and avoid common objections by being well-informed about the protection of well-known marks and the legal framework provided by Section 11(2)(a) and 11(2)(b) of the Trademark Act, 1999.
