A “Trademark” is defined under Section 2(1)(ZB) of the Indian Trademarks Act, 1999 as a “mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include a shape of goods, their packaging, and combination of colours.”
Simply put, a trademark may include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any such combinations. (Section 2(m)). The only qualification for a trademark is its capacity to distinguish the goods or services of one person from that of another.
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 with under two categories under the Act, i.e,
- Absolute grounds for refusal of registration (Section 9)
- Relative Grounds for refusal of registration (Section 11)
- Absolute ground for refusal of registration (Section 9):
Section 9 of the Trade Marks Act, 1999 lays down the absolute grounds for refusal of registration. The absolute grounds for the refusal of registration of a trademark are 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.
It gives that a mark shall not be registered as trademarks if:
- It frauds the public or causes confusion.
- There is any matter to hurt religious susceptibility.
- There is an obscene or scandalous matter.
- Its use is prohibited. It provides that if a mark contains exclusively of
(a) The shape of goods which form the nature of goods or,
(b) The shape of good which is needed to obtain a technical result or,
(c) The shape of goods which gives the substantial value of goods then it shall not be registered as a trademark.
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 AIR 1955 CAL 519, 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 AIR 1972 DEL 179, 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 India 1994 supp (3) SCC 21, the Supreme Court held that the word “micro” used for the production of electronic goods was descriptive of micro-technology and thus no one could claim exclusive use of it.
- Relative Grounds for refusal of registration (Section 11):
Under Section 11 of the Act, it gives relative grounds for the refusal of registration of a trademark. A trademark cannot be registered if because of (i) its identity with an earlier trademark and similarity of goods or services, (ii) its similarity to an earlier trademark and the similarity of the goods and there is a probability of confusion.
It also gives that a trademark cannot be registered which is identical or similar to an earlier trademark. And also which is to be registered for goods and services which are not similar to those for which earlier trademark is registered in the name of a different proprietor if, or to the extent, the earlier trademark is well known in India. It further gives that a trademark is cannot be registered if, or to the extent that, its use in India is liable to be prevented by virtue of any law.
In Toshiba Appliances Co. v Kabushiki Kaisha Toshiba 2002 (24) PTC 654, 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.
In Amritdhara Pharmacy v Satya Deo (AIR 1963 SC 449,) 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 that 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’ (Lakshmandhara).
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..
In Carrefour v V Subburaman 2007 (35) PTC 225, 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.
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 Trademark 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.
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