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BananaIP Counsels > Trademarks (Page 39)

Grounds for Refusal of Trademark Registration – Part II

This image depicts the 'Trademark' and 'Registered' symbols. This post is a part of a series on what marks are permissible as trademarks. Click on the image to read the full post.

In the previous blog post, we discussed Section 9(1) which laid down a few absolute grounds for refusal of registration of trademarks.

Today, we’ll explain in detail, Section 9(2) which states:

“A mark shall not be registered as a trademark if:

  1. It is of such nature as to deceive the public or cause confusion;
  2. It contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
  3. It comprises or contains scandalous or obscene matter;
  4. Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950

Marks that have the potential to deceive the public or cause confusion shall not be registered as trademarks under the Trade Marks Act, 1999. Deception or confusion may arise due to similarities between the proposed mark and existing marks or might flow from something contained in the mark propounded for registration or might result from the nature of the use of the mark. This provision is primarily concerned with the deceptive nature of a mark due to something inherent in the mark or its use, such as nature, quality or geographical origin of the goods or services or any other matter constituting the mark. Hence, it is important to note that Section 9(2)(a) is only concerned with cases where deception or confusion arises from the nature of the mark itself and not based on similarity between marks. The primary object behind this provision is to safeguard the interest of the public. As a result, if a particular mark is misleading or false, it will be refused registration notwithstanding the fact that the applicant had acted in good faith [Boots Pure Drug Co.’s Ltd. Trademark, [1937] 54 RPC 327], or that there has been no opposition [Diamond T Motor Car Co.’s Application [1921] 38 RPC 373], or that there is consent [Dewhurst’s Appl. (1896) 13 RPC 288].

Well Knownness of a Trademark – Part II – Popularity among Substantial Segment of Public

This image depicts several well known brand logos such as McDonald's and Coca-Cola. This post is about the transborder reputation of well known marks. Click on the image to read the full post.

As discussed in our previous post, for determining the well knownness of a trademark, the claimant of the well knownness is required to prove beyond reasonable doubt that the mark enjoys high reputation among a substantial segment of consumers, with respect to the goods and/or services to which said mark is applied. In order to conceptualize the principle behind the well knownness of a trademark, it is important to understand the legal interpretations of the terms ‘substantial segment of consumers’ and ‘relevant consumers’.

Although there is no hard and fast rule regarding what constitutes substantial segment of consumers, analysis of case laws of various jurisdictions indicates that, in order to consider a trademark as well known, the mark should be known among 75 to 90% of relevant public.

The Chancery Division in the judgment reported as “British Sons Vs James Robert – 1996 (RPC) 281 (page 305-306), while examining the issue of acquired distinctiveness of a descriptive trademark “TREAT” has held that mere extensive use is not enough. It must be shown that the mark has really become accepted by a substantial majority of persons as a trademark and has become a household word. Even if 60% of the purchasing public recognize the word as a trade ark, that is not sufficient. Such recognition must be amongst at least 90% of the purchasing segment of public. The Applicant has miserably failed to produce on record any such evidence.

How to Determine Well Knownness of a Trademark – Part 1 -Trade Marks Act, 1999

The image depicts a lock with the letters TM by its side. The post talks about protecting trademarks. Click on the image to read the full post.

In continuation to our previous post on Well Known marks, in this post we will be discussing the factors that should be taken into consideration while determining the well knownness of a mark.

Section 11(6) and Section 11(7) of the Trade Marks Act, 1999 discusses the factors that the Registrar of Trademarks shall take into account while determining the well knownness of a trademark. Section 11(6) provides specific factors for assessing well knownness of a trademark, and Section 11(7) provides specific criteria for the said factors.

Section 11(6) states that – The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including

(i) the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

Are Applicants Allowed to Later Refute Their Own Submissions at TM Prosecution?

The image depicts a lock with the letters TM by its side. The post talks about protecting trademarks. Click on the image to read the full post.

A recent decision from the Delhi High Court (HC) pertaining to the publisher of a weekly magazine, India Today, filing an application for an interim injunction at the Delhi HC so as to restrain Alpha Dealcom from launching a news channel with the name ‘Nation Today’, stresses the importance of submissions in response to an Examination Report made before the Trademarks Registry.

The publisher of India Today argued that the use of the word ‘Today’ infringed its Trademark. The Delhi HC held that, prima facie, there was no infringement because the use of the word ‘Today’ by the two parties was not likely to cause confusion in the minds of consumers. Plaintiff argued that since it owns the Trademark ‘India Today’ for several publications and news channels, the term has acquired the status of a well-known trademark.

“Who Owns the Goodwill in a Mark?”- Coin Flips in Favour of the Manufacturer

This image depicts tyres. This post is about how the court answered the question s to who owns the goodwill for a trademark-the seller or the manufacturer in a case. Click on the image to read the full post.

This post was first published on 15th February, 2012.   A trademark associates a considerable amount of goodwill with a product and hence businesses go to great extents to exploit this potential of a trademark and therefore, they strive hard to protect their trademarks. A recent instance where a seller of a product fought with the manufacturer of the product over the ownership of the trademark is the Trans Tyres India Pvt. Ltd. v. Double Coin Holdings Ltd. & Anr. case, which was decided by the Delhi High Court. The question of law decided, in this case, is -- between the seller of...

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Choosing the Right Trademark- How Important is it Anyway?

The featured image is of the trademark symbol . The post is abouT change in the name of Office for Harmonization in the Internal Market (OHIM) to European Union Intellectual Property Office. please click here to read more.

  First Publication Date: 8th January 2010   How important is it to choose the right trademark and how to choose the apt mark? With more and more courts and decisions focusing on the strength of the mark it definitely becomes quintessential to choose and apply for the right trademark. We don't have to search hard to look for such illustrations where the strength of the mark in some way decided the fate of the case. Fenil in his post titled "Could exclusivity be claimed over the word Imperial for alcohols" very aptly covered the case where it was held that no exclusivity can...

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