Relative Grounds for Refusal of Registration of Trademark
Once a Trademark Application is submitted, it is examined for objections by the concerned registry. In this blog, we will focus on the relative grounds for refusal of registration of trademark. Section 11 of the Trademarks Act, 1999 (“the Act”) provides the relative grounds for refusal of registration of trademark. We shall not only understand why an objection under section 11 is raised but also discuss points to help. You can also opt for our trademark objection reply services, and will help you revoke the objection efficiently.
Scope of Relative Grounds of Refusal
Relative grounds of refusal apply when the Registry finds an existing related mark in the Register while examining your application. The important thing to consider is that relative grounds are comparatively easier to be dealt with. You can overcome the objection raised under section 11.
The scope of “relative grounds” includes the following:
- When your mark is similar to an existing mark and the goods/services are also similar to any previous existing mark;
- When your mark is similar to an existing mark, but there is no similarity between the goods and services of both the marks;
- If your mark is similar to a prior mark up to the extent of creating confusion in the minds of the general public;
- When there are certain similarities to a well-known mark, and it is found by the registry that you might be trying to take undue advantage of the goodwill and reputation of the well-known existing mark;
- Relative grounds of refusal are also applicable if your mark is similar to an existing copyrighted work;
- An objection under section 11 is also valid if your mark is capable of passing off as a non – registered prior existing mark.
What Does Similar Existing Mark Mean?
In the context of grounds for refusal of registration of a trademark, similarity can be drawn on two bases:
1. Phonetic Similarity
Phonetics refers to the sound or pronunciation of any mark. So when two marks sound similar when pronounced, the marks become phonetically similar. Phonetic similarity plays a huge role in IP protection because it might lead to confusion in the minds of the general public.
The most recent example of Infringement due to similarity in phonetics is Imagine Marketing Pvt. Ltd. vs Exotic Mile, where it was held that ‘Boult’ was deceivingly similar to ‘BoAt’.
2. Visual Similarity
When two marks are deceptively similar at first glance, it can be said that they are visually similar. Infringers usually opt to keep some visual similarity to existing brands they’d want to profit from. The human brain usually catches a glimpse of a branding style as a whole rather than focusing on just one word, the colours or design.
The WWF v/s WWF conflict is one of the best examples of visual similarities that resulted in a complete re-branding of a well-known sporting event. Here’s what happened.
The Battle Between Wrestlers and Pandas!
Millennials might remember that their favourite wrestling federation was once called ‘WWF’ (Worldwide Wrestling Federation). However, a prior mark existed for a completely different WWF (World Wide Funds for Nature/World Wildlife Funds). This battle over WWF lasted for 13 years before the wrestlers had to give up their branding and settle for a completely new one. Today the Wrestling federation is popularly known as ‘WWE’ (Worldwide Wrestling Entertainment).
3. Deceptively Similar Marks
Deceptive similarity is very contextual. According to the governing law, when a trademark in question is almost similar, or a look – alike to an existing trademark, to such an extent that general audience can get confused among the relations between the two brand – it is said to be deceptively similar. Let’s understand this through an example. Recently, the Bombay High Court, while considering the question of deceptive similarity between Fevicol and Tikawoo, two adhesive brands, held the following:
“Merely because Sun is shown in the background of the image of a Rhino in the impugned mark of the defendant (Chiripal), it cannot be said that there is either deceptive similarity or a case of slavish copying of the registered trademark of the plaintiff (Pidilite) or artistic work in the trademark of the plaintiff, which consists of two elephants pulling in the opposite direction with Sunset in the background,”– Pidilite Industries Limited V/s Chiripal Industries Limited, Commercial IP Suit No. 452 of 2021
Through this judgement, the Hon’ble Court has tried to provide clarity on the concept of deceptive similarity in trademarks.
How to Overcome Objection Under Section 11
As mentioned before, it is easy to overcome relative grounds for refusal of registration of trademark.
Below are the points that can save your trademark application from refusal in case of any objection on relevant grounds:
1. Conduct a Thorough Trademark Search
You should always conduct a thorough trademark search. A TM Search Report shows all existing and pending marks in the Registry. With careful examination the report can help you analyse the availability of the mark you want to opt for. If the mark you want to apply for is identical to existing marks, you can make changes before applying for registration and avoid the objection under section 11.
2. Higher Chances of Acceptance with a Logo/ Device
Even if your mark consists of words that are generic or similar to existing marks, the uniqueness of the logo and colors can make a huge difference in its examination. There are instances when in a show-cause hearing the officer revokes TM objection under section 11. This decision is based on the use of the mark as “represented in its unique logo/design”.
As you can see, “Sardarbuksh” can fall under the ‘deceptively similar’ category concerning the well-known brand “Starbucks” under section 11. However, since changes in the logo made it unique and different, the application for “Sardarbuksh” was later Accepted as a valid Trademark.
3. Don’t apply for a general description of goods and services
It might look like a tedious task to specifically mention certain products and services from one class of trademarks. However, it is also one of the best ways to overcome the objection under section 11. The reason is that if you and the other mark (“cited mark”) are in different areas of business, there is no chance of causing any deception to the general public.
The Charminar Case!
The Vazir Sultan Tobacco (VST) Company is a registered proprietor of the trademark “CHARMINAR” under class 34 for “Manufactured Tobacco”. Another proprietor Vishnu Das also applied for the registration of “CHARMINAR” (Device Mark) under the same class 34. However, for a different product “Quiwam.” The Hon’ble Court held that Vishnu Das had the right to register a similar mark for dissimilar products in the same class.
Trademark Objected? LegalWiz.in Can Help!
LegalWiz.in experts cautiously take steps to avoid objections at all costs. However, even if an examination report is issued, our team makes sure to respond in an effective way to deal with all the issues. Secure your trademark with a timely Reply to the examination report. We know how to cover the key points of the argument. Give us a call now!
As a writer, Diksha aims to make complex legal subjects easier to comprehend for all. As a Lawyer, she assists startups with their legal and IPR drafting requirements. To understand and further spread awareness about the startup ecosystem is her motto.
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