Relative Grounds (Section 11) :
Section 11 of the Act stipulates that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trade mark or similarity of goods or services, the trade mark shall not be registered. The registration of a mark which is merely reproduction or imitation of a well-known mark is also prohibited. Sub-section (3) prohibits the registration of a trade mark if or to the extent that, its use in India will be prevented by law of passing off or under the law of copyright unless the proprietor of the earlier trade mark consents to such registration.
The term “earlier trade mark” as per the Explanation appended to this Section means a registered trade mark or an international registration or a convention application which has a date of application earlier than the trade mark in question, or a trade mark, which on the date of application for registration or on the date of priority claimed was entitled to protection as a well known trade mark.
The proprietor of earlier trade mark is entitled to oppose the registration of a trade mark and prove it. In the opposition proceeding the Registrar shall protect a well-known trade mark against identical or similar trade marks and take into consideration the bad faith of either the applicant or the opponent affecting the rights relating to the trade mark. Further, the section also lays down the factors which the Registrar is required to take into account while determining the status of a well-known trade mark. The Section also lays down the facts to be considered by the Registrar in determining whether a trade mark is known or recognised in a relevant section of the public.
What is a well known trade mark, the Delhi High Court held in Tata Sons Ltd. v. Mr. Md. Jawed & Anron
(March, 2011) held that a well known trade mark is a mark which is widely known to the relevant section of
the general public and enjoys a comparatively high reputation amongst them. On account of advancement of
technology, fast access to information, manifold increase in international business, international travel and
advertising/publicity on internet, television, magazines and periodicals, which now are widely available
throughout the world of goods and services during fairs/exhibitions, more and more persons are coming to
know of the trade marks which are well known in other countries, and which on account of the quality of the
products being sold under those names and extensive promotional and marketing efforts, have come to
enjoy trans-border reputation. It is, therefore, being increasingly felt that such trade marks need to be
protected not only in the countries in which they are registered but also in the countries where they are
otherwise widely known in the relevant circles so that the owners of well known trade marks are encouraged
to expand their business activities under those marks to other jurisdictions as well.
Further, the Court observed that the owner of a well known trade mark may (i) seek cancellation or (ii)
prevent registration of a trade mark which is same or similar to the well known mark irrespective of whether
the impugned mark is in relation to identical or similar goods or services or in relation to other categories of
goods or services. He may also prevent others from incorporating the well known trade mark as a part of
their corporate name/business name. Even if a well known trade mark is not registered in India, its owner
may avail these rights in respect of the trade mark registered/used or sought to be registered/used in India,
provided that the well known mark is otherwise known to or recognized by the relevant section of public in
India. The Trade Marks Act, 1999 accords a statutory protection to well known marks, irrespective of whether
they are Indian marks or foreign marks. The existence of actual confusion or a risk of confusion is, however,
necessary for the protection of a well known trade mark, as a result of infringement.
What is a well known trade mark, the Delhi High Court held in Tata Sons Ltd. v. Mr. Md. Jawed & Anron (March, 2011) held that a well known trade mark is a mark which is widely known to the relevant section of the general public and enjoys a comparatively high reputation amongst them. On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals, which now are widely available throughout the world of goods and services during fairs/exhibitions, more and more persons are coming to know of the trade marks which are well known in other countries, and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts, have come to enjoy trans-border reputation. It is, therefore, being increasingly felt that such trade marks need to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known in the relevant circles so that the owners of well known trade marks are encouraged to expand their business activities under those marks to other jurisdictions as well.
Further, the Court observed that the owner of a well known trade mark may (i) seek cancellation or (ii) prevent registration of a trade mark which is same or similar to the well known mark irrespective of whether the impugned mark is in relation to identical or similar goods or services or in relation to other categories of goods or services. He may also prevent others from incorporating the well known trade mark as a part of their corporate name/business name. Even if a well known trade mark is not registered in India, its owner may avail these rights in respect of the trade mark registered/used or sought to be registered/used in India, provided that the well known mark is otherwise known to or recognized by the relevant section of public in India. The Trade Marks Act, 1999 accords a statutory protection to well known marks, irrespective of whether they are Indian marks or foreign marks. The existence of actual confusion or a risk of confusion is, however, necessary for the protection of a well known trade mark, as a result of infringement.