Relative Grounds for Refusal (Section 11)

Section 11 of the Trade Marks Act, 1999 sets out the relative grounds for refusal of registration. Where Section 9 examined the mark in isolation, Section 11 examines the mark in relation to the earlier rights of others — earlier registered trade marks, earlier well-known marks, and earlier rights enforceable under the law of passing-off or copyright. Its object is to protect existing trade-mark proprietors from the dilution or impairment of their rights by a later applicant. The provision is the principal weapon in opposition proceedings, and a candidate who can navigate Section 11 confidently is well-placed for almost any examination question on the registrability stage of the trade-mark cycle.

The 1999 Act recasts what was Section 12 (and parts of Section 11) of the 1958 Act into a single, consolidated Section 11 with sub-sections that map cleanly onto the four scenarios the legislation covers: identity or similarity with an earlier mark on similar goods (Section 11(1)); identity or similarity with an earlier well-known mark on dissimilar goods (Section 11(2)); use that would be prevented by the law of passing-off or copyright (Section 11(3)); and the well-known mark protection regime in Section 11(6) to (10). The framework is the substantive companion to the absolute-grounds analysis in the chapter on absolute grounds for refusal under Section 9, and follows the doctrinal foundation laid in definitions of trademark, mark and service under Section 2.

Statutory anchor — what "earlier trade mark" means

The expression "earlier trade mark" subsumes three categories: registered trade marks; Convention applications for registration of trade marks (which enjoy priority under the Paris Convention); and trade marks required to be protected as well-known trade marks even if not registered in India. The category of an "earlier mark" is therefore wider than the registered-mark concept; well-known marks operating internationally can be earlier marks for Indian purposes, even without an Indian registration.

Section 11(1) — confusing similarity on similar goods or services

Section 11(1) provides that a trade mark cannot be registered if, because of (a) its identity with an earlier trade mark and similarity of goods or services, or (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

Three independent thresholds must be crossed for refusal under Section 11(1): (i) identity or similarity of marks; (ii) identity or similarity of goods or services; and (iii) likelihood of confusion on the part of the public. Where the goods or services are identical and the marks are also identical, confusion is presumed and no separate proof is required. Where the marks are similar but not identical, or the goods are similar but not identical, the likelihood of confusion (or the likelihood of association) must be specifically established for the opposition to succeed.

The category of marks covered by Section 11(1) corresponds to Section 12(1) of the 1958 Act, but with a notable expansion: the 1958 Act protected only against later marks for "the same goods or goods of the same description"; the 1999 Act extends protection to similar goods or services. This widening matters in practice, because trade-mark goodwill often crosses goods boundaries — goods and services in adjacent commercial spaces are now treated as competing for trade-mark protection in a way they were not under the 1958 regime.

Doctrine of dilution — likelihood of association

The textual addition of "likelihood of association" to the confusion test in Section 11(1) opens the door to the doctrine of dilution. Where the relevant public starts associating the later trade mark with the earlier mark — even without confusing the two as to source — the descriptive link between the earlier mark and its goods is blurred. The reputation of the earlier mark is gradually tapered, slice by slice, by repeated exposure to the later mark in adjacent contexts. This is dilution by blurring. A second variant — dilution by tarnishment — occurs when the later use sullies, degrades or impairs the distinctive quality of the earlier mark, as where a senior brand's stylised script is parodied in a derogatory campaign. Both variants are recognised in Indian case law (the Delhi High Court's exposition in Caterpillar Inc. v. Mehtab Ahmed, 2002 (25) PTC 440, is the leading articulation) and both fall within the Section 11(1) language of association. The dilution and tarnishment regime is examined more fully in the chapter on trademark tarnishment and dilution.

Section 11(2) — well-known marks on dissimilar goods

Section 11(2) protects well-known trade marks against use on dissimilar goods or services. It provides that a trade mark cannot be registered which is identical with or similar to an earlier trade mark, and which is to be registered for goods or services that are not similar to those for which the earlier trade mark is registered, if the earlier trade mark is a well-known trade mark in India and the use of the later mark would (a) take unfair advantage of, or (b) be detrimental to, the distinctive character or repute of the earlier mark.

The protection is conditional. The proprietor must establish (i) the earlier mark is a well-known trade mark in India, and (ii) the use of the later mark falls into one of the three identified harms — unfair advantage, detriment to distinctive character, or detriment to repute. Section 11(2) is the textual implementation of Article 16(3) of TRIPS and Article 6bis of the Paris Convention, and is the principal vehicle by which trans-border well-known marks obtain Indian protection.

Section 11(3) — passing-off and copyright as bars

Section 11(3) bars registration of a later mark whose use in India is liable to be prevented (i) by virtue of any law, in particular the law of passing-off protecting an unregistered trade mark in the course of trade, or (ii) by virtue of the law of copyright. The provision recognises that an earlier user of an unregistered mark can prevent a later applicant from securing registration, by reference to the same factual showing that would support a passing-off action — goodwill, misrepresentation by the defendant, and consequent damage. The trans-border reputation of the earlier mark is sufficient; physical sale of goods in India is not required.

The copyright limb catches a particular class of conflicts. Where a label or device used as a later trade mark reproduces a pictorial work in which copyright subsists in another person, the use of the trade mark would amount to copyright infringement. Section 11(3) directs the Registrar to refuse registration in such circumstances, even without a separate copyright proceeding. The provision is wide enough to catch artistic works originating in any country that is a party to the Berne Convention or the WTO. The passing-off mechanism preserved by Section 11(3) is examined in detail in the chapter on the passing-off action under Sections 27, 134 and 135.

Nature of deception or confusion

Three categories of confusion are recognised in the case law: (i) confusion as to goods — the buyer takes one product for another by reason of the similar mark; (ii) confusion as to trade origin — the buyer thinks the goods come from the same source as goods bearing a similar familiar mark; and (iii) confusion as to trade connection — the buyer believes the two enterprises are commercially connected, even where neither identity of source nor identity of goods is alleged. The third category is what makes possible the protection of well-known marks against use on dissimilar goods.

Comparison of marks — the principles

Justice Parker's classical formulation in Pianotist Application ((1906) 23 RPC 774) remains the doctrinal bedrock. To determine whether two marks are deceptively similar, the tribunal must take the two words, judge them by their look and by their sound, consider the goods to which they are to be applied, consider the nature and kind of customer likely to buy those goods, and consider all the surrounding circumstances. If, on that holistic view, there is confusion in the mind of the public that will lead to confusion in the goods, registration must be refused.

Building on Pianotist, the courts have settled the following essential principles:

1. Likelihood is sufficient; actual confusion need not be proved. The tribunal must be satisfied that there is a real and tangible danger of confusion if the mark is registered. A reasonable doubt entertained by an ordinary person is enough.
2. Meticulous comparison is the wrong test. The question is one of first impression; a person familiar with both marks will be neither deceived nor confused. The relevant person is one who knows only one mark and has perhaps an imperfect recollection of it.
3. Marks must be compared as wholes. It is not right to take a part of one word and compare it with a part of the other. Two component-different words may, taken together, convey the same impression. Thus "Amritdhara" was held similar to "Lakshmandhara" by the Supreme Court in Amritdhara v. Satya Deo (AIR 1963 SC 449), even though the prefix differed.
4. Similarity in structure, sound and idea matters. Both visual and phonetic similarity is relevant, and so is the idea conveyed. Translated equivalents — "Sun" and "Suraj", "Red Fort" and "Lal Qilla" — convey the same idea and are treated as similar.
5. Distinguishing or essential features control. The tribunal must identify the salient feature that the consumer would retain in memory; if that feature has been adopted, peripheral differences in get-up are immaterial.
6. Surrounding circumstances must be considered. The class of customer (literate or illiterate, expert or layperson), the price-point of the goods, the trade channel, and the prevailing market context all enter the inquiry.

Leading case — Sunder Parmanand Lalwani v. Caltex (India) Ltd.

In Sunder Parmanand Lalwani v. Caltex (India) Ltd. (AIR 1969 Bom 24), the Bombay High Court refused registration of the mark "Caltex" for watches in the face of opposition from Caltex (India) Ltd., the long-established proprietor of the same mark for petroleum products. Although the goods were entirely different and there was no overlap in trade channels, the court held that the strong reputation of the opponents' mark, combined with the applicant's failure to offer any plausible explanation for choosing the word "Caltex", supported the inference of an intention to trade on the opponents' goodwill — and therefore the existence of a tangible danger of deception or confusion. The case is the foundational Indian authority on protection of a reputed mark against use on dissimilar goods, and reads naturally into the Section 11(2) regime introduced by the 1999 Act.

Leading case — Prem Nath v. Registrar, Trade Marks

In Prem Nath v. Registrar, Trade Marks (AIR 1972 Cal 261), the Calcutta High Court refused registration of a device of "a Lion with a Goddess seated upon it" for chaffcutter blades and knives, in the face of opposition from the proprietor of an earlier registered "Lion Brand" mark for the same goods. The court held that the essential feature of the appellant's earlier mark was the device of a lion; the addition of a goddess in the respondent's mark did not displace the lion as the dominant impression. The principle — a question of confusion is decided not by side-by-side comparison but by the impression on the average customer with imperfect recollection — became one of the most quoted articulations in Indian trade-mark law.

Leading case — K.R. Krishna Chettiar v. Sri Ambal and Co.

In K.R. Krishna Chettiar v. Sri Ambal and Co. (AIR 1970 SC 146), the Supreme Court refused registration of "Sri Andal Madras Snuff" in the face of opposition from the proprietor of "Sri Ambal Parimala Snuff". There was no visual resemblance between the two labels, but the court held that ocular comparison is not the only test; phonetic similarity matters, and "Ambal" and "Andal" had such close phonetic affinity as to be undistinguishable in pronunciation. The case is authority for two propositions: (i) phonetic similarity alone can support refusal; and (ii) the religious or scholarly distinction between two words (Ambal as the consort of Lord Siva, Andal as the consort of Ranganatha) is irrelevant where the relevant consumer cohort would not draw it.

Honest concurrent use — Section 12 as exception to Section 11

Section 11(4) provides that nothing in Section 11 shall prevent the registration of a trade mark where the proprietor of the earlier trade mark consents, and Section 12 separately allows the Registrar to permit registration by more than one proprietor of identical or similar marks for the same or similar goods, in the case of honest concurrent use or other special circumstances. Five conditions must be established for concurrent registration: honesty of adoption and continuing use; concurrent use with the earlier proprietor's mark; commercially significant and substantial quantum of use, having regard to duration, area and volume of trade; minimal degree of confusion; and a balance of inconvenience favouring registration.

Honesty of adoption is the sine qua non. If the adoption was dishonest, no length of subsequent use will cure the defect. The Bombay High Court in the Toshiba Appliances case, 2002 (24) PTC 654, refused concurrent registration of "TOSIBA" against the opposition of "TOSHIBA", holding that the applicant could not explain how it hit upon the word and that the use was therefore not bona fide.

Vested rights of the prior user — Section 34

Section 34 saves the vested rights of an earlier user of a trade mark against a later registered proprietor. If a person, or his predecessor in title, has continuously used a trade mark from a date earlier than the use or registration of the later mark, the registered proprietor cannot interfere with that prior use. The provision is a statutory recognition that registration does not confer superior rights over prior unregistered use; the prior user retains the right to use the mark and to apply for its registration. The protection extends only to the goods or services and territory in which the prior user has actually used the mark, and to the get-up actually used. The administrative office before which these competing claims are first ventilated is examined in the chapter on the Trademark Registry and the Registrar.

Acquiescence — Section 33

Section 33 introduces a five-year acquiescence rule. Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark — being aware of that use — he is no longer entitled, on the basis of the earlier mark, to apply for a declaration of invalidity of the later mark or to oppose its use, unless the registration of the later mark was not applied in good faith. The proprietor of the later mark, in turn, is not entitled to oppose the use of the earlier mark. The provision is rooted in the equitable principle that no party who sleeps on his right is entitled to relief — "a Rip Van Winkle policy", as the Delhi High Court put it in Sudhir Bhatia v. Midas Hygiene Industries (P) Ltd., 2002 (24) PTC 94. Acquiescence is a course of conduct inconsistent with the assertion of an exclusive right; mere silence or inaction without more amounts only to laches.

Bona fide use of own name — Section 35

Section 35 protects the bona fide use by a person of his own name, the name of his place of business, the name of any predecessor in business, or a bona fide description of the character or quality of his goods or services. The right to use one's own name is not, however, a right to use the name as a trade mark; the use must be bona fide, meaning honest use without intention to deceive or to divert goodwill that another trader has built. Trading must not only be honest, but must not even unintentionally be dishonest, as the Bombay High Court put it in Bajaj Electrical Co. v. Metal & Allied Products (AIR 1988 Bom 167).

Well-known marks — Section 11(6) to (10)

Section 11(6) lists the factors the Registrar must consider in determining whether a trade mark is a well-known trade mark: knowledge or recognition in the relevant section of the public (including knowledge in India obtained through promotion); duration, extent and geographical area of use; duration, extent and geographical area of promotion (including advertising); duration and geographical area of registration or applications; and the record of successful enforcement of the rights in the mark. The factors are conjunctive guideposts, not necessary conditions; the totality of circumstances determines the question.

Section 11(7) defines the "relevant section of the public" — actual or potential consumers, persons involved in distribution, and business circles dealing with the goods or services. Section 11(8) establishes a one-court rule: where a trade mark has been determined to be well-known by any court or Registrar in at least one relevant section of the public in India, the Registrar shall consider it well-known for registration purposes. Section 11(9) lists five conditions that the Registrar shall not require — actual use in India, registration in India, application in India, registration or use abroad, and well-known status to the public at large in India. None of these is necessary; their presence is helpful but their absence is not fatal.

Section 11(10) imposes a duty on the Registrar to protect a well-known trade mark against an identical or similar later mark, and to take into account any bad faith of the applicant or the opponent. The duty is suo motu; the Registrar must protect a well-known mark in every registration proceeding even where the proprietor of the well-known mark has not filed an opposition. Section 11(11) preserves the validity of trade marks registered or rights acquired in good faith before the commencement of the 1999 Act, even where they conflict with later well-known marks. The protection regime is taken up at length in the chapter on well-known trademarks, and the dilution-by-tarnishment dimension in the chapter on use of a trademark, genuine use and acquiescence under Section 33.

Leading case — Carrefour v. V. Subburaman

In Carrefour v. V. Subburaman, 2007 (35) PTC 225, the IPAB held that the well-known French retail mark CARREFOUR (in use globally since 1960, with 7,000 stores across 30 countries) was a well-known trade mark within the meaning of Section 11. The respondent's adoption of the mark for furniture from 2000 was held to be in bad faith, the respondent having offered no plausible explanation for selecting a French word in India for a category in which the proprietor's reputation extended. The case illustrates the operative reach of the well-known mark regime: a foreign proprietor with no Indian physical presence can still successfully oppose a later Indian registration, on Section 11(2) grounds.

Onus of proof and the Registrar's duty

Under Section 11(1), the cognizance of conflict is to be taken by the Registrar suo motu in the ex officio examination — any other person may also oppose. The onus is on the applicant for registration to prove that the proposed mark does not come within the prohibition; that onus does not shift at any stage. In cases under Section 11(2) and (3), the proprietor of the earlier mark must oppose the registration. The Registrar, in any event, has a continuing duty to maintain the purity of the register and to refuse registrations that conflict with earlier rights, registered or unregistered.

Why Section 11 matters for the exam

Examination questions on Section 11 typically frame either (a) a conflict-with-earlier-mark fact pattern asking the candidate to apply Section 11(1), the deceptive-similarity tests, and the principles from Pianotist, Amritdhara, Caltex, Krishna Chettiar and Prem Nath; or (b) a well-known-mark fact pattern asking the candidate to apply Section 11(2), the Section 11(6) factors, and the principles from Carrefour and the IPAB jurisprudence. The discipline is the same in both: identify the relevant sub-section, identify the test, apply the leading authority, and conclude.

Connect Section 11 to the broader scheme — to absolute grounds under Section 9, to the procedural framework in opposition to registration under Section 21, and to the remedial framework in the chapter on infringement of a registered trademark under Section 29. Note that Section 9(2)(a) (deception) and Section 11(1) overlap in many cases; Section 9 is open to any person while Section 11 principally protects existing proprietors. The structural picture, once these distinctions are clear, falls neatly into place. For the wider hub on the statute, see Trade Marks Act, 1999 notes.

Frequently asked questions

What is the difference between Section 11(1) and Section 11(2) of the Trade Marks Act, 1999?

Section 11(1) refuses registration where the later mark is identical or similar to an earlier mark and the goods or services are identical or similar, and there is a likelihood of confusion. Section 11(2) refuses registration where the later mark is identical or similar to an earlier well-known mark, but the goods or services are dissimilar, and the use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier well-known mark. The first protects against confusion in the same product space; the second protects well-known marks against dilution across product spaces.

How is deceptive similarity assessed under the 1999 Act?

By a holistic test rooted in Justice Parker's formulation in Pianotist Application ((1906) 23 RPC 774): take the two marks, judge them by look and sound, consider the goods, the kind of customer, and all surrounding circumstances. Indian decisions have settled six principles: likelihood of confusion is sufficient (actual confusion need not be proved); meticulous side-by-side comparison is the wrong test; marks must be compared as wholes; structural, phonetic and ideational similarities all matter; distinguishing or essential features control; and surrounding commercial circumstances — class of customer, trade channel, price-point — must be considered.

Can two parties register the same trade mark under the doctrine of honest concurrent use?

Yes — under Section 12 of the Trade Marks Act, 1999. The Registrar may permit registration by more than one proprietor of identical or similar trade marks for the same or similar goods or services if (i) adoption and use are honest; (ii) the use is concurrent with that of the earlier proprietor; (iii) the quantum of concurrent use is commercially significant; (iv) the degree of confusion is minimal; and (v) the balance of inconvenience favours the applicant. Honesty of adoption is the sine qua non — if the adoption was dishonest, no amount of subsequent use will cure the defect.

What is the doctrine of dilution and where is it located in the 1999 Act?

The doctrine of dilution is the protection of a senior mark against the gradual erosion of its distinctive character through use of a similar mark by another, even where there is no confusion as to source. The 1999 Act incorporates dilution textually in Section 11(1) ("likelihood of association" added to the confusion test) and in Section 11(2) (detriment to the distinctive character or repute of an earlier well-known mark). Two variants are recognised: dilution by blurring (the link between the senior mark and its goods is gradually weakened) and dilution by tarnishment (the senior mark's distinctive quality is sullied or impaired).

What is the effect of acquiescence under Section 33 of the 1999 Act?

Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he loses the right to apply for a declaration that the later registration is invalid or to oppose the use of the later mark — unless the later registration was not applied for in good faith. The proprietor of the later mark, in turn, is not entitled to oppose the use of the earlier mark. The principle is equitable: no party who sleeps on his right for five years should be entitled to relief, and silence over so long a period implies consent in fact.