Summary: This guide explains how to effectively reply to an examination report under Section 11 of the Trade Marks Act, 1999. When a trademark application faces objections under Section 11, it typically involves conflicts with existing marks that could cause public confusion. To address this, start by differentiating the applied mark from cited marks based on various factors such as color, font, and overall impression. Next, research the status and history of cited marks and the details of the applied mark, including usage and supporting evidence. Draft a structured reply addressing specific objections, comparing marks, and citing relevant case laws, such as “Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd” and “SABEL v. Puma.” Include a table comparing cited and applied marks, and conclude with a prayer and signature. Submit the reply with a digital signature after thorough review. This process ensures a comprehensive and well-supported response to trademark objections.
When a trademark is applied, it goes under the scrutiny of the Registrar of Trademark and if not satisfied, he/she generally raises objections on following grounds:
1. Section 11 of the Trademark Act, 1999
2. Section 9 of the Trademark Act, 1999
3. File TM-M for changes as suggested by the Registrar w.r.t. contents of application
4. Proof of usage if the trademark is applied from a prior date
5. Filing fresh properly executed power of attorney
In this article, we shall study about the objection raised under Section 11 of the Trademark Act, 1999 and what can we do or how can we draft the reply when an examination report under this section is issued by the Registrar of Trademark.
Understanding the objection raised under Section 11 of the Trademark Act, 1999
When the applied mark is identical with or similar to earlier marks in respect of identical or similar description of goods or services and because of such identity or similarity there exists a likelihood of confusion on the part of the public; the objection under the section 11 is raised. Also, post the objection mentioned in first page of the examination report, the marks which is considered by the Trademark Officer similar is also quoted on the next page.
On receiving the examination report, we need to take following steps:
Step 1: Understanding the differentiation between the marks cited in the examination report.
There might be a list of marks cited by the officer or just a single mark sometimes in the examination report. Here, primarily, we need to analyze the difference in each of the marks in the examination report with the applied marks on accounts of various factors like color combination, overall impression, font, phonetically, user date, goods and service description, jurisdiction and the like.
Step 2: Once you have made an understanding on the point of differentiation, please go through the application status of each of the cited mark as on date as well like some marks might have been just abandoned, withdrawn or not renewed since a long period of time.
Step 3: Once research about the cited mark is done, research with respect to the applied mark should also be done like whether the same is in actual use as on date, why the same was chosen or coined, dictionary meaning, turnover, usage supporting invoices, bills, advertising details, social media pages, website, etc.
Step 4: Once all the research work is done, we can start with the drafting of the examination report keeping in mind the following structure mentioned chronologically:
- Title i.e. Reply to examination report, addressee, application no. with the device mark
- Mention specific objection raised along with the screenshot of the cited marks.
- Explanation about the meaning of the cited mark and why the mark has been chosen
- Vis-à-vis comparison in the form of table explaining the difference between each of the cited marks with the applied mark
- Mention supporting case laws
- Mention prayer and restrict right to submit anything later on
- Close the reply with the signing.
Step 5: We can upload the reply after reviewing and affix the appropriate digital signature to file it.
SOME FAMOUS CASE LAWS WITH RESPECT TO OBJECTION RASIED UNDER S 11 (1) OF THE TRADE MARKS ACT, 1999
1. In the case of “Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd”, it was held that “though there is a phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the trade mark with logo adopted by the two parties are altogether different. The manner in which the appellant has written NANDHINI as its mark is totally different from the style adopted by the respondent for its mark ‘NANDINI’. Further, the appellant has used and added the word ‘Deluxe’ and, thus, its mark is ‘NANDHINI DELUXE’. It is followed by the words ‘the real spice of life’. There is device of lamp with the word ‘NANDHINI’. In contrast, the respondent has used only one word, namely, NANDINI which is not prefixed or suffixed by any word”.
2. In the case of SABEL ν. Puma, wherein it was held that “the mere fact that two trademarks are conceptually similar is not enough in itself to conclude that there is a likelihood of confusion. The likelihood of confusion must be assessed by taking into account all factors relevant to the circumstances of the case. An assessment of the visual or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components.”
3. In Corn Products V. Shagrila Food Product Ltd, the Supreme Court held that it is well recognized that in deciding a question of similarity between two marks, the marks have to be consideration as a whole. We have to approach it from the point of view of man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them.
4. In Hindustan Unilever Ltd. V. Ashique Chemicals, Aghin Chemicals and P.C. Thahir trading as Aghin Chemicals and Cosmetics 2011 (6) Bom CR 854, wherein it was held that the marks “Sunlight” and “Surplus” are not deceptively similar as in both the marks though the prefix was common but the suffix was distinct.
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{The author i.e., Mrs. Kajal Goyal is a Company Secretary in Practice and can be reached at (M) +91-9999952595 and (E) [email protected]}
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