What are the grounds for refusal of registration of Trade Mark?
What is Trade Mark?
Trade mark means
- a mark capable of represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colors; and
- in relation to a registered trade mark or mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and
- some person having the right as proprietor to use the mark, and in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate to a connection in the course of trade between the goods or services, as the case may be, and
- some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.
Grounds for refusal of registration of Trade Mark
1. Trade Marks shall not registered if :
- its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
- its similar to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,
there exists a chances of confusion to public, which includes the chances of association with the earlier trade mark.
2. A trade mark which is :
- identical with or similar to an earlier trade mark; and
- to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor,
shall refuse to register. If or to the extent the earlier trade mark is a well-known trade mark in India. The use of the later mark without due cause would take unfair advantage of earlier trade mark.
3. A trade mark shall not be registered if, its use in India needs prevention :
- by virtue of any law which has passed for protecting an unregistered trade mark used in the course of trade; or
- by virtue of law of copyright.
4. Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12.
5. A trade mark shall not be refused registration on the grounds specified. Unless objection on those grounds raised in opposition proceedings by the proprietor of the earlier trade mark.
6. The Registrar shall, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—
- the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained by promotion of the Trade mark
- the duration, extent and geographical area of any use of that trade mark;
- the duration and geographical area of any registration that they reflect the use or recognition of the trade mark;
- the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.
- the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
7. The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—
- the number of actual or potential consumers of the goods or services;
- the number of persons involved in the channels of distribution of the goods or services;
- the business circles dealing with the goods or services, to which that trade mark applies.
8. Where a trade mark has determined well known in at least one relevant section of the public in India by any court or Registrar. The Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.
9. The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following,
- trade mark used in India;
- trade mark has registered;
- application for registration of the trade mark has filed in India;
- trade mark is well-known to the public at large in India.
10. While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall—
- protect a well-known trademark against the identical or similar trade marks;
- take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trademark.
11. Where a trademark has registered in good faith disclosing the material information to the Registrar. Where right to a trademark has acquired through use in good faith before the commencement of this Act. Then, nothing in this Act shall harm the validity of the registration of that trademark or also right to use that trademark on the ground that such trademark is identical with or also similar to a well-known trademark.