The relative grounds of refusal are not the absolute grounds, as they focus on the mark's inherent nature itself but take into account the impact that a new trademark will have on the rights of existing trademarks. Specifically, this section addresses the cases in which the proposed trademark is similar or identical to earlier registered trademarks or well-known trademarks.

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Section 11(1): Identity or Similarity to an Earlier Trademark

Key Point: A trademark shall be refused registration if:

• It is identical to an earlier trademark, or

• It is deceptively similar to an earlier trademark, and the goods/services covered by the proposed mark are similar or identical to those covered by the earlier trademark.

Likelihood of Confusion:

If the public is likely to be confused or associate the new mark with the earlier mark, it will be refused. This includes not only confusion about the origin of goods/services but also any possible association with the earlier mark.

Example: If a new brand uses a logo that is nearly identical to Coca-Cola for soft drinks, consumers may believe that the new brand is a product of Coca-Cola and thus confuse or associate with the earlier mark.

Section 11(2): Well-Known Trademarks

Key Point: A proposed trademark that is identical or similar to an earlier registered trademark will be refused registration if the earlier trademark is:

• A well-known trademark in India.

• The use of the later trademark could unfairly take advantage of, or damage, the distinctive character or reputation of the earlier well-known mark, even if the goods/services are not similar.

Unfair Advantage and Detriment:

The later trademark’s use must be without due cause. For example, if a new company uses a famous brand's name (like "Nike") in a completely different industry (e.g., electronics), it could still be refused if it takes unfair advantage of the brand's reputation.

Example: If a company begins selling non-sports products, such as apparel, under the name "Nike" and confuses consumers into buying the products because they assume there is a connection with the famous Nike brand, then this would be infringement.

Section 11(3): Rights in Existing and well-known Marks

KeyPoint: A proposed mark would be refused registration under if its use in India can be prevented by:

• Law of passing off (protection to an unregistered trademark when in use), or

• Copyright law (if the mark infringes a copyright-protected design or logo).

Explanation: This section may refuse the trademark application if an unregistered trademark (or other legal right) already exists and the new mark conflicts with it.

Example: If a small company has been using a logo similar to a famous artist's work for years, and the artist claims copyright over it, the trademark may be refused.

Section 11(4): Consent of the Earlier Trademark Owner

 Key Point: A later mark is capable of registration even though it may be conflicting with an earlier mark, where the owner of the earlier trademark gives his consent to the registration of the later mark.

Explanation: The Registrar can place the later mark on the register in cases as mentioned under Section 12, if the circumstances exist.

Example: If two companies with similar names in unrelated industry (for example, one a bakery and the other a software company) agree to both coexist, then the registrar may allow the registration of both trademarks.

Section 11(5): Objection to Registration

Key Point: The provisions under clause (2) and (3) can only be applicable if:

Opposition proceedings are initiated by the proprietor of the earlier trademark. The earlier mark holder must file objections when the trademark opposition process is underway.

Example: If a company feels that the new trademark is likely to conflict with its well-known brand, it has to formally oppose the new registration before the Registrar.

Section 11(6): Well Known Status

Key Point: The Registrar has to take into account several factors before determining that a trademark is well known, including

• Recognition among the public

• The geographical extent and duration of use and promotion

• The record of successful enforcement of rights, including past judicial decisions

Key Factors: These factors help determine if a mark qualifies as well-known, thus protecting it against similar marks even for non-similar goods.

Example: Coca-Cola or Apple may be recognized as well-known trademarks because of their widespread use, advertising, and legal recognition.

Section 11(7): Factors for Determining Recognition

Key Point: The Registrar will consider the following to determine if a trademark is recognized as well-known in a relevant section of the public:

• The number of consumers of the goods/services.

• The number of persons involved in distribution channels.

• The business circles dealing with the goods/services.

Example:  A trademark used in a niche but highly recognized field, like luxury goods, will be termed well-known in the concerned field, even if it's not well known all over. 

Section 11(8): Determining Well-Known Status by Court or Registrar

Key point: If the court and the Registrar have already given any decision that a trademark is well-known in India then by virtue of this Act automatically it will be treated well-known for the purpose of registration.

Example: A well-known trademark like McDonald's once determined by the registrar or court then it is sure to get protection as the well-known mark in registration purposes of trademark in the process after coming into force. 

Also, Get to Know Trademarks Examples: Types & Legal Insights

Section 11(9): Conditions for Well-Known status

Key Point: The Registrar is not mandated to consider the following requirements in determining whether a trademark is well-known:

• Use or registration in India.

• Registration or application in other jurisdictions.

• Public recognition in India as a whole.

Example: A brand could be considered well-known in India even if not widely used or registered in the country so long as known within some particular public or market segment.

Section 11(10): Protection Against Bad Faith

Key Point: The Registrar will also protect well-known marks against registration of identical or similar marks, especially on grounds of bad faith by applicant or opponent.

Explanation,

If an applicant tries to register a mark which, prima facie, tends to deceive the public at large or is intended for attracting the benefit of an already existing well-known mark. Thereby, it will get rejected by the registrar on the basis of bad faith.

Section 11(11): Good Faith Registration

• Key Point: If a trademark is registered in good faith disclosing all material information, or if rights had accrued through use in good faith prior to the commencement of the Act, such registration would not be invalidated on grounds of similarity with a well-known mark.

• Example: A local business that has used a mark in good faith and has been using it for years before the trademark became famous will not lose its rights due to the later fame of a similar mark.

In Short,

Section 11 of the Trade Marks Act, 1999 provides a legal framework to avoid conflicts between new and existing trademarks. It is a balancing factor between the rights of previously registered trademark owners, including the already famous marks, and the potential for new businesses to enter and register their marks under the condition that they are not taking undue advantage or harming existing marks. It promotes fair competition and guards against confusion amongst consumers, and it provides leniency in good faith registration and mutual consent among the parties involved.

FAQs on Section 11: Relative Grounds for Refusal of Registration under the Trade Marks Act, 1999

Q1. What is the basis of refusal of trademark registration in Section 11?

A trademark can be refused registration if it is identical or similar to an earlier registered trademark, and there is a likelihood of confusion or association among the public, especially when the goods or services are similar.

Q2. Is there any possibility of registration for a trademark, when it conflicts with a well-known trademark?

No, a trademark would not be registered if it is identical or similar to a well-known trademark and could have an unfavorable impact on the reputation of such a well-known mark or takes unfair advantage, even though the goods or services do not come in the same class.

Q3. Can a trademark be registered if it is identical or similar to an unregistered trademark?

Yes, but only if the trademark does not conflict with the law of passing off or other prior unregistered rights. In such cases, registration may be refused if it infringes existing legal protections.

Q4. Does consent from the owner of the earlier trademark mean a trademark can still be registered?

Yes, if the previous owner of the trademark gives permission, the Registrar may, under section 12 of the Act, allow registration of the new trademark under special circumstances.

Q5. How does the Registrar determine whether a trademark is "well-known"?

The Registrar considers the recognition of the mark among the public, duration and extent of use, geographical area of promotion, and prior legal recognition of the mark in India.