Focus keyword- Refusal of registration of a trademark

Additional keywords- Grounds for refusal, Section 9, Absolute grounds, relative grounds

Meaning and Scope of Trademarks

Intellectual Property Rights (IPRs) are those bodies of rights which can be claimed over a work that has been conceptualised and created by an accord of one’s own intellect and acumen. The work involves human prowess, perception, knowledge, skills and above all inventiveness. The most widely accepted Intellectual Property Rights are copyright, trademarks, geographical indications, industrial designs, patents and layout designs of integrated circuits. This article will specifically deal with trademarks and discuss the various grounds for refusal of registration of trademarks. 

The earliest legislation in India dealing with trademarks was the Trade and Merchandise Marks Act, 1958 which underwent considerable amendments over a period of four decades. However, with significant developments and rapid changes in the global landscape of trade, industry and commercial practices coupled with the need to boost investment flows, transfer of technology and to develop simpler and harmonious management of trademark systems more comprehensive legislation was the need of the hour.¹ It was in the wake of these transnational developments that the Trade Marks Act, 1999 was enacted by the Parliament which aimed to consolidate the law relating to trademarks in the Indian context. 

The Trade Marks Act, 1999 defines a “trademark” under Section 2(1)(zb). A trademark means “a mark capable of being represented graphically and which is capable of distinguishing the goods and services of one person from those of others and may include the shape of goods, their packaging and combination of colours.” Therefore, in common parlance, a trademark is a type of intellectual property which comprises of a visual or printed representation of signs, symbols, words, mark or a logo that can be employed to identify and distinguish a particular product/services from the other. The main purpose of trademark law is to protect these signs, symbols, words, logo, marks etc. from unfair use and abuse by those other than the genuine registered proprietors of such trademarks.

Significance of Trade Marks

• A trademark enables to identify the origin of a particular mark and helps to distinguish between the products/services of one trader from others. Therefore, a trademark must have a distinctive character.
• A trademark reflects upon the consistent nature, quality and characteristics or essential attributes of the goods/services rendered. 
• A trademark can provide crucial information about the products to the customers and thus avoid confusion based solely on deceptively similar marks. 
• It can enable the owners of goods/services to advertise their products/services using such trademark. Therefore, a trademark serves as a powerful advertising tool, which accredits a trademark to a particular product/service. 
• Furthermore, a trademark enables the growth and development of an enterprise. 

Conditions for Registration of Trade Marks 

The proprietor of a trademark must not only use but also register the trademark, failing which a suit for infringement cannot be filed. Therefore, in order to acquire effective trademark rights, registration, as well as the use of the said trademark in relation to the particular goods/services, is essential. The Trade Marks Act, 1999 does not specifically prescribe the grounds or conditions on the satisfaction of which a trademark will be granted registration. However, it prescribes the grounds for refusal of registration of trademarks. The grounds for refusal of registration of a trademark can be dealt under two categories under the Act, viz., 

• Absolute grounds for refusal of registration (Section 9) 
• Relative Grounds for refusal of registration (Section 11)

Therefore, the Trade Marks Act, 1999 embodies a wide scope for registration of marks by registering those marks which are not prohibited from registration under the absolute or relative grounds for refusal of registration, provided it is a “trademark” within the meaning of Section 2(1)(zb) of the Act and is capable of distinguishing the goods of one person from those of others. 

Absolute Grounds for Refusal of Registration 

Section 9 of the Trade Marks Act, 1999 lays down the absolute grounds for refusal of registration. The absolute grounds for refusal of registration of a trademark is related to public policy. The legislative intent behind this provision is to protect the legitimate interest of the traders as well as the public who are genuine and bona fide users of various marks in the form of signs, symbols, logos, words, etc. which have been acquired by them in relation to their goods/services. 

A trademark shall not be registered on the following grounds²:

• the mark lacks any distinctive character; 
• the mark designates the kind, quality, intended purpose, values, geographical origin or the time of production of the goods or services rendered;
• the mark has become customary in the current language or in the bonafide and established practices of the trade; 
• the mark deceives the public or causes confusion;
• the mark is likely to hurt the religious sensitivities of any class or section;
• it comprises scandalous or obscene matter;
• The Emblems and Names (Prevention of Improper Use) Act, 1950 prohibits its use;
• if the mark exclusively consists of the shape of goods which results from the nature of the goods themselves;
• it exclusively consists of the shape of goods which is necessary to obtain a technical result;
• the shape gives substantial value to the goods. 

However, a trademark has acquired a “distinctive character” as a consequence of its use or is a “well-known trademark”, prior to the date of application for registration, the trademark shall not be refused for registration. The distinctive character which allows one to distinguish the goods/services of one person from others may be inherent or acquired. Therefore, it is crucial to have regard to the inherent features of the trademark which makes it possible to distinguish the goods/services of one from another.  

In Hindustan Development Corp. v Deputy Registrar of Trade Marks^3, the issue involved was centred around the word “Rasoi” and whether it could be registered as a trademark for hydrogenated groundnut oil or not. It was held that the grammatical significance of a mark does not refer to the quality of goods, instead, it must be construed from the point of view of the public at large. Thus, to the general public, the word “rasoi” means cooking. The use of groundnut oil that is hydrogenated is for the purpose of cooking, which in turn forms a part of its character. Therefore, the word “rasoi” has a direct reference to the “character” of goods. 

Furthermore, even if the word “rasoi” did not directly impute the good’s character or quality, the word must be “distinctive” for it to be registrable. This distinctiveness must indicate that the goods for which the mark is used are the goods of the proprietor and is capable of distinguishing the goods of the proprietor from those of others. Moreover, even if the word “rasoi” is distinctive it cannot be registered because it is a common word and no one can exclusively use such words and deprive others of using the common words of a language which are public property. Therefore, in the instant case, the word “rasoi” could not be registered as it lacked distinctiveness associated with the applicant’s goods. 

Similarly in Geep Flashlight Industries v Registrar of Trade Marks^4, the word “Janta ” used for electric torches was sought for registration. The Registrar refused registration on the ground that it was neither distinctive nor had the capability to distinguish the product of the applicant from those of others. The word “Janta” is a common word and indicative of the fact that the goods are not expensive and meant for the common man thereby referring to the quality or character of the goods. In J R Kapoor v Micronix India⁵ the Supreme Court held that the word “micro” used for the production of electronic goods was descriptive of microtechnology and thus no one could claim exclusive use of it. 

Relative Grounds for Refusal of Registration

Section 11 of the Trade Marks Act, 1999 lays down the relative grounds for refusal of registration. The legislative intent of this provision is to protect the interest of the owners of registered trademarks. 

• Section 11(1) provides that where the public is likely to get confused on account of a mark being identical or similar to an earlier trademark and a subsequent mark for certain goods/services is identical or similar to the goods/services represented by an earlier mark, such a mark shall not be registered. Therefore, if the subsequent mark is associated with the public to an earlier mark it is likely that such similarity between the marks is sufficient to cause confusion and thus bring it within the scope of Section 11(1). However, where the goods/services are identical there is no need to prove confusion. But the similarity between an earlier and a subsequent trademark and where the goods/services are similar or identical the likelihood of confusion must be proved. 

In Toshiba Appliances Co. v Kabushiki Kaisha Toshiba⁶ the applicant’s mark ‘TOSIBA’ which was applied for registration had a close resemblance to the opponent’s trademark ‘TOSHIBA’ which was used in respect of electronic goods. This resemblance in the two marks was likely to confuse or deceive the users. The court in the instant case held that the applicant’s mark ‘TOSHIBA’ was deceptively similar to the opponent’s mark ‘TOSHIBA’. There was a phonetic similarity between the two marks. 

There are certain essential principles which must be kept in mind while comparing trademarks that are likely to confuse or deceive the users viz.:

• The actual probability of deception which can lead to passing off need not be proved. The likelihood of the mark to confuse or deceive the purchaser is sufficient to bring the mark within the scope of Section 11(1). 
• The confusion or deception caused by two marks has to be judged from the vantage point of a person with an imperfect recollection, who only knows one word and is not familiar with both the words. Therefore, a meticulous comparison of two similar words will be of little help. 
• When two words are being compared, they must be compared as a whole. It would be inappropriate to compare two different parts of two words which are being compared. 

In Amritdhara Pharmacy v Satya Deo¹ the similarity of the words ‘Amritdhara’ and ‘Lakshmandhara’ was under consideration used in relation to medicinal preparations. Both these words when read or spoken together had a similarity which could lead to confusion. The Supreme Court held that an ordinary purchaser who is of “average intelligence” and “imperfect recollection” cannot be expected to bifurcate the words into its component parts and compare the etymological meaning or consider the meaning of the component words as ‘current of nectar’ (Amritdhara) or ‘current of Lakshman’ (Lakshmandhata). 

An ordinary person is more likely to consider the overall structure and phonetic similarity of the words as a whole and associate it with the nature of medicine previously purchased by him. Therefore, the “true test” is whether the proposed trademark, in this case, the words, when considered in totality is likely to cause confusion in the minds of those who are already familiar with a prevailing trademark or not. 

• The structural i.e., the appearance as well as the phonetic similarity must be taken into consideration. 
• The meaning and ideas conveyed by the words should also be taken into account. The words which convey the same meaning or ideas are likely to cause confusion.

• Under Section 11(2) a trademark shall not be registered under two circumstances:

• Where the trademark is identical or similar to an earlier trademark;
• Where the goods/services for which a trademark is to be registered is not similar to the goods/services for which an earlier trademark is registered in the name of a different proprietor. 

The above two conditions are applicable when:

• the earlier trademark is a “well-known trademark” in India; and 
• the use of the later or subsequent trademark will amount to taking an unfair advantage or harmful to the “distinctive character” or prejudicial to the reputation of the earlier trademark.  

A well-known trademark is defined under Section 2(1)(zg) of the Trade Mark Act, 1999 and it means “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.” 

Therefore, special rights have been given to well-known trademarks under the Act. Thus, the qualities or attributes of a well-known trademark may be acquired by an ordinary trademark. This means that when a person sees a trademark on some goods/services and is able to relate it to a trademark present on some other goods/services, such a trademark can be said to be a “well-known trademark”. Section 11(6) lays down the relevant facts that must be considered by a Registrar while determining whether a trademark is a well-known trademark or not.  

In Carrefour v V Subburaman⁷ the applicants were using the word CARREFOUR since 1960 for their retail business throughout the world. The proprietor brought a suit of passing-off against the respondents for using the trademark ‘Carrefour’ from July 2000 for furniture. In the instant case, the trademark was not registered in India in favour of the applicant with respect to furniture. However, it was registered in other countries in relation to furniture and registered in India in relation to other goods. Therefore, a large section of the public identified and associated the goods of the applicants with the trade name “CARREFOUR” and was likely to draw a connection between the products of the respondents with that of the applicant, in the course of trade. Thus, the court held that “CARREFOUR” is a well-known trademark. 

• Section 11(3) prescribes that a trademark shall not be registered if its use in India is prevented owing to the following reasons:

• where an unregistered trademark used in the course of trade is protected by the law of passing-off or by virtue of any other law;
• by the law of copyright. 

Therefore, the proprietor of an earlier trademark can oppose a later trademark by virtue of Section 11(3).  

The law of passing-off protecting unregistered trademarks is also available to proprietors of registered trademarks. The similar marks used on the same, similar or dissimilar goods can be opposed by the proprietor as passing off can be claimed by registered as well as unregistered users. Furthermore, when a later trademark is similar to an earlier trademark which is protected by copyright law and is sought to be used on any goods or services then such a later trademark shall not be registered by virtue of Section 11(3). 

Conclusion

From the above discussion, it can be concluded that the registration of a trademark under the Trade Marks Act, 1999 is primarily concerned with the ‘distinctiveness’ of a mark and it is this ‘distinctive character’ of a mark used for the goods/services that are sought to be protected. It is through this distinctiveness of a trademark that the goods/services of a person can be identified and distinguished from those of others. Moreover, the standard required for trademark registration is not very strict. 

The Trade Marks Act, 1999 prescribes various grounds, both absolute and relative which must be borne in mind before a trademark is approved for registration. Where a trademark is likely to cause confusion or deception the prohibition to register the said mark is absolute and this is to protect the interest of the buyer. 

Similarly, a subsequent mark which is similar or identical to an earlier trademark cannot be granted registration. This holds true even in cases where the goods/services represented by a subsequent and an earlier mark are identical or similar or where confusion or deception can be caused in the minds of the public. In both these circumstances, the mark will be refused registration.

Therefore, a trademark is of immense importance and significance as the reputation, identity and goodwill associated with the goods/services become coextensive with the trademark itself. The mark representing the goods/services are not mutually exclusive, instead, it substantiates the authenticity and distinctiveness attributed to such goods/services by the mark and vice-versa. 

Endnotes

1  The Trade Marks Act, 1999 (Act 47 of 1999). 

2. The Trade Marks Act, 1999 (Act 47 of 1999), s. 9. 

3. AIR 1955 CAL 519 available at https://indiankanoon.org/doc/1401045/ (last visited Dec 5, 2019). 

4. AIR 1972 DEL 179 available at https://indiankanoon.org/doc/1689664/ (last visited Dec 6, 2019).

5. 1994 supp (3) SCC 215 available at https://indiankanoon.org/doc/2044127/ (last visited Dec 6, 2019). 

6. 2002 (24) PTC 654 available at https://indiankanoon.org/doc/82395463/ (last visited Dec 7, 2019). 

7. 2007 (35) PTC 225 available at https://www.casemine.com/judgement/in/56ea7a36607dba36fd0b5fea (last visited Dec 7, 2019). 

8.  AIR 1963 SC 449 available at https://indiankanoon.org/doc/368264/ (last visited Dec 8, 2019).