Grounds of opposition: Section 21, which provides for filing Notice of Opposition, does not refer to any ground on which the opposition may be filed. The opponent is thus at liberty to set up any ground which may support his opposition against the registration of the trade mark under any of the provisions of the Trade Marks Act, 1999 and the Rules prescribed there under. However, under section 11(5), a trade mark shall not be refused registration on the grounds specified in sub-section (2) and (3), unless objection on any one or more of those
grounds is raised in opposition proceedings by the proprietor of the earlier trade mark. In this connection, it is to be noted that section 9 contains ‘absolute grounds for refusal of registration’ and section 11 contains provision for ‘relative grounds for refusal of registration’. [See also section 12, section 13, section 14 and section 18, which may form grounds of opposition]. The following is a list of possible grounds for opposition to the registration. (1) That the trade mark advertised is not registrable in that it is neither distinctive nor capable of distinguishing or that it does not satisfy the requirements of the Act as to registrability; (2) The essential part of the said trade mark is a word in ordinary use, descriptive of the character or quality of the goods and the applicant is not entitled to acquire an exclusive right therein by registration; (3) That the trade mark is not capable of being represented graphically; (4) That the trade mark is devoid of distinctive character, that is to say, not capable of distinguishing the goods, or services of one person from those of another person; (5) That the trade mark consists exclusively of marks of indication which may serve to designate the kind, quality, intended purpose, values, geographical origin or the time of production of the goods or rendering of the services or other characteristics of the goods or services (mark which is directly descriptive of the character or quality of the goods or services or indicating geographical origin); (6) That the trade mark consists exclusively of marks or indications which have become in the current language or in the bona fide and established practice of the trade (may refer to generic names or marks common to the trade); (7) That the trade mark is of such a nature as to deceive the public or cause confusion; (8) That the trade mark contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (9) That the trade mark comprises or contains scandalous or obscene matter; (10) That the use of which is prohibited under the Emblems and Names (the Prevention of Improper Use) Act, 1950; (11) That the trade mark consists exclusively of the shape of goods : (a) which results from the nature of the goods themselves, or (b) which is necessary to obtain a technical result, or (c) which gives substantial value to the goods. (The above grounds are based on the definition of trade mark and the provisions of S. 9 of the Act); (12) That the trade mark is by virtue of : (a) its identity with an earlier trade mark and similarity of goods and services covered by the trade mark, or (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark; (13) That the trade mark is : (a) identical with or similar to an earlier trade mark, and (b) is 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, and the earlier trade mark is a well known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark; (14) That the use of the applicant’s mark would be an infringement of the opponent’s registration which could be restrained by the Court and the mark is therefore disentitled to protection in a Court; (15) That the applicants are not entitled to registration under s. 12 of the Act; (16) That the user claimed in the application for registration is not true; (17) That the opponents are the prior adopters and application for the registration of the same/similar mark for the same/similar goods, vide their application No. …………… dt. ………………… in class ……………. which is registered under Trade Mark No. ……………….. and/or still pending; (18) That the applicants are not the proprietors of the mark.
Tag Archives: Trademark Law India
Grounds of Opposition of Trademark India
Trademark of Non-English descriptive words
The following practice will be adopted in dealing with applications to register non-English words as trade marks where, if words with the same meaning were applied for in English, the application would be subject to an objection on the grounds that the words are descriptive and/or non-distinctive. The U.K. Registry has established a practice that there are no grounds for refusing registration of trade marks on the basis that they are descriptive or non distinctive in a language which is unlikely to be understood by the relevant trade in the UK or by the relevant average UK consumer of the goods/services in question. The same practice will be followed by the Trade Marks Registry in India. Accordingly if the foreign word is in a language that is not likely to be known to a significant proportion of the public in India, there will not exist any ground for objection that the mark is descriptive. Consequently, the Examiner will only object to the registration of word marks which are likely to be recognized as a descriptive of the characteristic of the goods or services. The relevant trade in India consists of those in this country who trade in the goods or services in question. Non English Descriptions which are most likely to be Understood Again in general, the average consumer is far more likely to be familiar with the non-English name of a product or service, or the local name for its geographical origin, than he is with the non-English words which describe other characteristics of the product or service. For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known as ‘Burgundy’ and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Consequently, such names would be objectionable. This English practice could be well followed in India, if necessary by reference to internet. The more closely a non-English descriptive word resembles its English equivalent, the more likely it is that its descriptive significance will be understood by the consumer. Thus, for example the Italian words ‘Caffe Fresco’ should be rejected as a trade mark for coffee because the average consumer of coffee would be likely to see that it simply means ‘fresh coffee’ Non-English words which have become generic in the trade in the goods or services (by customers or traders) are excluded from registration under Section 9(1)(c) of the Act. So the German word ‘auto’ is not registrable for motor cars or their parts and fittings, or related services. The following language are likely to be known to a reasonable (and increasing ) number of Indian public. As such, descriptive use in any of these languages will be equally objectionable. Punjabi, Tamil, Bengali, Urdu, Hindi, Telugu, Oriya, Assamee, Rajasthani, Malyalam, Karnatak. Marathi, Gujarathi and English and scheduled languages under the constitution. Languages such as French, German, Italian, Spanish and Japanese are hardly known in India. Accordingly marks in such languages will be less objectionable.
Registration of Slogans as Trademark India
Trademark Registration of Slogans India Under section 9(1) proviso , any trade mark which is demonstrated to be distinctive in fact, will be regarded as distinctive in law and therefore qualify for registration. One or more words, constituted as a slogan mark may be registrable but the onus is on the applicant for registration to show acquired distinctiveness. In Have a Break Trade Mark, (1993) the applicant sought to register the mark HAVE A BREAK in class 30. Evidence was provided that the applicant had been using the slogan HAVE A BREAK- HAVE A KIT KATh as a registered trade mark but the words, HAVE A BREAK alone had not been used as a trade mark in relation to chocolate, chocolate products, confectionery, candy, biscuits. Therefore, the application for registration refused. It was held that the criteria for registrability of slogan is no stricter than for other types of mark. The slogan marks may be considered as a nonconventional trade mark where the relevant public is slower to recognize them as indicating the product of an undertaking. Slogans will face the same objection under Section 9(1)(b) of the Act, if they are comprised of a word combination that an average consumer would regard as a normal way of referring to the goods or services or of representing their essential features. The intended purpose of the goods or services should be regarded as an essential characteristic of the goods or services for the purposes of this assessment. Slogan when used in plain descriptive language is always considered non-distinctive. For example the UK Registrar objected to the registration of slogan: NEVER CLEAN YOUR SHOWER AGAIN (Class 3) because it describes in plain language the intended purpose of the goods. It is considered that the fact that the statement might not be literally true was not decisive. The mark gAN EYE FOR DETAILh (for clothing) was refused because it is a common phrase which, considered in relation to clothing, designates not just a characteristic of the consumer, but also the quality of the goods, i.e. clothing of such quality that it will be appreciated by those consumers with an eye for detail. The mark gHOW TECHNOLOGY SHAPED THE WORLDh would not be acceptable for publications, information or exhibition type goods or services. The UK Registrar accepted the mark gTHE BEST WAY TO PREDICT THE FUTURE IS TO CREATE ITh (for technology related services in classes 35, 38 & 42) because this was not considered to be a normal way of designating these services, nor to be a commonplace phrase. Similar approach may be adopted by the Registrar in India. Some allowance must be made for the fact that, in advertising, it is customary to use shortened phrase when promoting the goods or services. The refusal to register the trade mark on the ground that it was a natural abbreviation for the longer expression. The ambiguity may enhance the prospects of registrability, and based on that the UK Registrar accepted the mark Naturefs REAL THING for foodstuffs in classes 29 and 30 because the reference to natural products is sufficiently allusive. However, it is possible to take a view that ambiguity in a sense may render the mark misleading and deceptive as to its characteristics to entail objection. The mark BEST BUY (on a coloured background resembling a price tag) was refused registration by the European Court of First Instance despite the applicant’s argument that it had no precise descriptive meaning to consumers. A slogan which has two meanings will not be registrable if one of them is a description of the goods or services. The mark WE SET THE HIRE STANDARD was refused (for car hire services) despite the possible phonetic alternative meaning, and this would have been the case even if the other meaning had not also been a description of the services. Straightforward value statements that could apply to any undertaking are devoid of any distinctive character. Inspirational or motivational statements – These types of slogans are considered to be non-distinctive particularly for services. Customer service statements – Similarly, straightforward statements about customer service that could apply to any undertaking are also devoid of any distinctive character. Purely promotional statements – The mark SAY IT WITH CHAMPAGNE is composed of a well known advertising strap line “Say it with…” followed by the name of the goods (Champagne). This mark therefore fulfils a purely marketing function, i.e., an invitation to the public to send a message through the gift of champagne. Statements by/about the user of goods/wearer of clothing – Slogans such as “I My Boy Friend” or “Here comes Trouble” are often used to decorate goods, particularly clothing . T-shirts, sweatshirts or baseball caps. In this context, consumers are unlikely to perceive this type of slogan as a sign of trade origin. When seen they seem to be as a personal statement by/about the wearer/user rather than indicating the trade origin of the product. Slogans which are likely to be seen as such will therefore be open to objection under Section 9(1)(c) of the Act.
Trademark Specification India
Acceptable form of specification- class 35 – The bringing together, for the benefit of others, of a variety of [indicate goods or types of goods], enabling customers to conveniently view and purchase those goods; The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase [indicate goods or types of goods]; Retail services connected with [indicate goods or types of goods]; Retail services connected with the sale of [indicate goods or types of goods]; Retail store services in the field of [indicate goods or types of goods]; Department store retail services connected with [indicate goods or types of goods] as in, for example: Department store services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, cameras, domestic electrical and electronic equipment, including white goods, jewellery, clocks, watches, stationery, publications, leather goods, luggage, furniture, household containers and utensils, furnishings, textiles, clothing, footwear, headwear, haberdashery, toys and games, sports equipment, foodstuffs, drinks and tobacco products; Shop retail services connected with [indicate goods or types of goods]; Mail order retail services connected with [indicate goods or types of goods]; Electronic shopping retail services connected with [indicate goods or types of goods]; Retail clothing shop services; Stationery shop retail services connected with the sale of stationery, printed matter, computer equipment and peripherals and home entertainment products; The bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods from a clothing and clothing accessories catalogue by mail order or by means of telecommunications.
Not acceptable form of specification – class 35 – Sale of electrical and electronic goods for industrial use [the sale of goods is not a service]; Trade in building products [trading in goods is not a service]; Retailing [retailing goods is not a service per se]; Retailing of cars [retailing of goods is not a service]; Retail services for the sale of foods [sale of goods is not a service]; Retail off licences specialising in the sale of alcoholic beverages [sales are not a service]; Shops [not a service per se]; Factory shops [not a service per se]; Shopkeeping [not a service per se]; Merchandising[not a service per se]; Distributorship [not a service per se]; Sales services [not a service per se]; Direct selling [not a service per se]; Mail order [not a service per se]; Television shopping [not a service per se]; Electronic shopping [not a service per se]; Computer shopping [not a service per se]; E-commerce [not a service per se] ; Retail services [unqualified] ; Retail store services [unqualified]; Department store services [unqualified]; Mail order catalogue services [unqualified]; The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those [unqualified] goods; The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a department store Please note [“department store” does not identify the types of goods]; The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise internet web site [“general merchandise” does not identify the types of goods]; Retail services connected with the sale of electrical and electronic goods [the terms “Electrical” and/or “Electronic” are too vague without further indication to define types of goods]; Retail services connected with stationery products and the like goods [“and the like goods” fails to identify the goods or types of goods].
Trademark Application for Registration of Certification trade mark India
Sections 69 to 78 of the Act deal with registration of certification trade mark. The purpose of a certification trade mark is to show that the goods or services in respect of which the mark is used have been certified by some competent person in respect of certain characteristics such as Origin, mode of manufacture, quality etc. Section 2(1)(e) defines certification trade mark to mean “a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which is certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name as proprietor of the certification trade mark, of that person”.
Section 70 of the Act makes it clear that the proprietor of a certification trade mark should not himself carry on a trade in the goods of the kind certified or a trade of the provision of services of the kind certified. Besides, the certifying authority who may be an individual or a company or association of persons should be competent to certify the goods in respect of origin, material, mode of manufacture or performance of services , quality , accuracy or other characteristics.
Distinction between “trade mark” and “certification mark” Trade Marks in general serve to distinguish the goods or services of one person from those of others. The function of a certification trade mark is to indicate that the goods or services comply with certain objective standards in respect of origin, material, mode of manufacture of goods or performance of services as certified by a competent person.
Scope of applicability of Act and Rules to certification trade marks. Under section 69, the following provisions of the Act are not applicable to certification trade marks: a) Clauses (a) and ( c) of sub-section (1) of section 9; b) Sections 18, 20, and 21, except as expressly applied by the Chapter; c) Sections 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section (2) of section 56; d) Chapter XII, except section 107.
