INTRODUCTION
Relative grounds of trademark registration pertain to the standards utilized in determining whether a proposed trademark can be registered based on its similarity or potential conflicts with existing trademarks. These grounds typically encompass the following:
- Likelihood of Confusion: This is the most prevalent relative ground and evaluates whether the proposed trademark bears sufficient resemblance to an existing trademark, leading consumers to potentially confuse the origin of the goods or services.
- Similarity of Goods or Services: Trademarks that closely resemble or are identical to existing trademarks used for similar goods or services may encounter refusal. The degree of similarity and the relationship between the goods or services are crucial factors.
- Well-Known Marks: Trademarks that enjoy widespread recognition as well-known trademarks, either globally or locally, benefit from broader protection. Registering a mark that resembles a well-known mark may be rejected to prevent dilution or unfair advantage.
- Descriptive or Generic Marks: Marks that solely describe or denote the generic nature of the goods or services they represent are typically ineligible for trademark registration. This is because they fail to serve the purpose of distinguishing one business’s products from another.
- Conflicting Rights: If a trademark application conflicts with pre-existing rights, such as earlier trademarks or rights derived from personal names or copyright, it may be denied registration.
Comprehending these relative grounds is essential for trademark applicants to evaluate the likelihood of successfully registering their trademark and avoiding infringement concerns.
WHAT IS RELATIVE GROUNDS OF TRADEMARK REGISTRATION
Relative grounds for trademark registration are those based on conflicts with prior rights or trademarks that may result in the trademark application being refused. These grounds are generally intended to protect’s existing trademark rights and avoid consumer confusion. Here are some key aspects of the relative grounds for refusal:
Previous identical marks: If the proposed mark is similar to an existing registered mark for the same class similar goods or services, the application may be refused.
Previous similar marks: If the proposed mark is similar to an existing registered mark and the goods or services are the same or similar, this may cause confusion among consumers use. This potential for confusion may be grounds for refusal.
Reputation of the previous mark: If the previous mark had a significant reputation and the use of the new mark would take unfair advantage from the distinctive character or reputation of the previous mark that, or harmful, it may be rejected.
Unregistered Trademark Rights: In some jurisdictions, rights to unregistered trademarks used in commerce may be recognized.
If the proposed mark conflicts with the unregistered but well-established mark, this may result in refusal.
Other pre-existing rights: A trademark application may be refused if it infringes other pre-existing rights, such as a company name, domain name or copyright.
Relative grounds require objections or comments from previous rights holders.
The trademark office does not usually examine these grounds formally; Instead, the owner of conflicting pre-existing rights must take steps to prevent the registration of a new mark.
IMPORTANCE
Relative grounds for trademark registration are essential because they ensure that the new trademark does not conflict with an existing trademark in a way that might confuse consumers or take advantage of existing brand equity.
Here are the main reasons why relative grounds are important:
Avoid confusion: Trademarks exist to distinguish the goods or services of one entity from those of another. The relative basis prevents the registration of a mark that is similar to an existing mark in a way that is likely to confuse consumers as to the origin of the goods or services.
Protection of existing rights: Taking into account relative grounds, the trademark administration protects the rights of existing trademark owners.This avoids diluting their brand identity and market presence.
Fair competition: Trademark law aims to promote fair competition. Allowing the mark to be too similar to an existing mark could give an unfair advantage to the new applicant and disadvantage the established mark.
Consumer Confidence: Consumers rely on brands to make informed purchasing decisions. By maintaining distinction and clarity through relative grounds, trademark law helps maintain consumer confidence.
Legal certainty: Clear regulations on a relative basis provide legal certainty for applicants and trademark owners. They know what is acceptable and what is not, thereby reducing legal disputes and uncertainty.
International harmonization: Many countries adhere to similar principles of relative bases in international trademark agreements (such as the TRIPS Agreement ). This harmonization facilitates the registration and enforcement of international trademarks .
Protecting brand reputation: For trademark owners, relative facilities protect brand reputation their brands and prevent linking to substandard or unrelated products or services.
In summary, the relative grounds for trademark registration are essential to maintain order, clarity and fairness in the marketplace, benefiting both businesses and consumers.
RELATIVE GROUND OF REFUSAL OF TRADEMARK REGISTRATION
According to section 11 of the Trademark act , the relative grounds for refusing a trademark have been established.
A trademark cannot be registered if it is likely to cause confusion among members of the public, there is a risk of association with a pre-existing trademark, the later use of the trademark may damage the distinctiveness of the well-known trademark; , use of trademarks in India may be barred by infringement or copyright laws.
In the case of Amritdhara Pharmacy v. Satya Deo Gupta, the word ‘Lakshmandhara’ used to register a drug was rejected as a trademark as it had caused confusion among the public due to its high similarity with the registered trademark ‘Amritdhara’.
In BDH Industrial Company Limited V.Croydon Chemical Works Pvt. Ltd.
the Court made the following points of contention regarding similarity:
i)it has to be considered from the perspective of a person of average intelligence and imperfect powers of retrieval
ii) it must be considered together
iii) His impression must be considered.
A trademark cannot be registered if it is similar or identical to an example of a well-known trademark; ROLEX, FORD, ICICI, TATA. However, reputation by itself cannot determine whether a mark qualifies as a well-known mark. A brand’s reputation may be limited to a specific territory, a small group of the population.
A trademark registered in good faith or acquired through use before the law comes into effect remains valid even if the mark is identical or similar to a well-known trademark.
OVERCOME THE OBJECTIONS OF RELATIVE GROUNDS
To overcome this objection, the applicant must analyze and highlight the existing differences between the two marks. Additionally, the applicant must emphasize the importance of the overall impression, whether it is sights, sounds, smells, etc. The applicant can emphasize different target markets and audiences by demonstrating that such registration will not cause any confusion among consumers.
Therefore, the response to the examination report is supplemented by the following documents: Response to opposition Relevant case law or precedent supporting “registered trademark” and Supporting documents aid to demonstrate distinctiveness affidavit of use since date of first use (if any) If the “registered mark” does not violate any objections and meets the established criteria create. The commercial examiner then accepts the application. The trademark examiner will issue an order of acceptance and the “registered mark” will then be published in the Trademark Journal. The “registered mark” must be published before acceptance (ABA) or accepted and published (AAA).
CASE LAWS
Bhole Baba Milk Food Industries Ltd. V. Parul Food Specialities Pvt. Ltd. (2009):
This case highlighted the importance of likelihood of confusion between
trademarks. The Delhi High court held that if the similarity between two marks is likely to confuse or deceive the public, registration may be refused.
Monsanto Company v. Coramandel Indag Products India Pvt. Ltd. (2009):
In this case, the court emphasized that trademarks should not cause confusion in the minds of consumers regarding the origin of goods. It reinforced the principle that trademarks with similar phonetic or visual elements can be refused registration if confusion is likely.
Philips India Ltd. V. Shree Sant Kripa Appliances Pvt. Ltd. (2009):
This case underscored that trademarks with a reputation enjoy broader protection. The court held that even if the goods are different, if a well-known mark is infringed upon, it can lead to refusal of registration for a similar mark.
Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. (2018):
A landmark case where the court discussed the concept of trans-border reputation. It established that a foreign mark with a reputation can be protected against registration in India, even if it has not been used domestically.
Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. (2018):
This case dealt with the issue of deceptive similarity. The court ruled that trademarks which are deceptively similar, even if applied to different goods or services, can be refused registration to prevent confusion among consumers.
These cases illustrate how Indian courts interpret and apply relative grounds for refusal under the Trademarks Act, 1999, focusing on aspects such as likelihood of confusion, deceptive similarity, reputation of the mark, and cross-border implications
CONCLUSION
Finding the relative grounds for registering a trademark often involves assessing whether the proposed trademark conflicts with existing trademarks or with rights held by others. If the trademark examiner finds that there is no likelihood of confusion or conflict with existing rights, the trademark application can proceed with registration.
However, if a conflict is identified, an adjustment to the mark may be necessary or the application may be refused. Each case is assessed based on the specific circumstances and relevant legal framework in the jurisdiction where registration is requested.
Written by- Ishaan Singh Rathore, 5th year, BBA, LLB(Hons.), from, Amity University ,Chhattisgarh
