Some Other Marks

Collective Marks

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• • “Collective Mark” is defined in the 1999 Act as a trade mark distinguishing the goods or services of members of an association of persons which is the proprietor of the mark from those of others. The association of persons, however, does not includes partnership within the meaning of Indian Partnership Act, 1932.

    Section 2 of the 1999 Act lays down that any reference to “Trade Mark” shall include reference to “Collective Mark” or “Certification Trade Mark”.

    Collective mark not to be misleading as to character of significance

    Section 62 of the Act prohibits the registration of collective mark, if it is likely to deceive or cause confusion on the part of public in particular if it is likely to be taken to be something other than a collective mark, and in such case the Registrar may require that a mark in respect of which application is made for registration comprises some indication that it is a collective mark.
    
    

    Well-known trade mark

    
    The term ‘well-known trade mark’ is defined under section 2(zg) as follows:
    “Well-known trade mark”, in relation to any goods or services means a mark which has become so as to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services. (Illustration – Airtel, Reliance, Britannia, Parle, Liberty, Raymond, Colgate, Bata etc.)
    

    For determining whether a mark is a well-known mark, the Registrar may take into account any fact
    which he considers relevant for the said purpose. He is also mandated to consider:

    • knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
    • the duration, extent and geographical area of any use of that trade mark;
    • the duration, extent and geographical area of any promotion of the trade mark; including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
    • The duration and geographical area of any registration of or any application for registration of that trade mark under the Act to the extent they reflect the use or recognition of the trade mark;
    • The record of successful enforcement of the rights in the trade mark. The extent to which trade mark has been recognized as a well known trade mark by any court or registrar;
    • If a mark is determined as well-known , by even one section of the public in India, by any court or registrar, it should be considered as well-known trade registration.

    
    For considering whether a mark is a well-known mark, the Registrar is mandated not to require the
    following aspects as necessary conditions:

    1. Mark has been used in India;
    2. That the trade mark has been registered;
    3. That the application for registration of the trade mark has been filed in India;
    4. That the trade mark–

    • is well-known in; or
    • has been registered in; or
    • in respect of which an application for registration has been filed in, any
    • Jurisdiction other than India; or
    • that it is well-known to the public at large in India;
    
    

    The principles for deciding the question of similarity of two marks

    1. The marks are remembered by general impressions of some of significant detail rather than by a photographic recollection of the whole.
    2. Overall similarity is the touch stone.
    3. Mark must be looked at from the first impression of a person of average intelligence and imperfect recollection.
    4. Overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied.
    5. The marks must be compared as a whole, microscopic examination being impermissible. Further, the nature of commodity, the class of purchaser, the mode of purchase and other surrounding circumstances must also be taken into consideration.

    
    

    Factors to be considered for deciding deceptive similarity

    
    For deciding the question of deceptive similarity, the following factors are to be considered:

    1. The nature of mark i.e., whether the marks are word marks or label marks or composite marks i.e., both word and label marks.
    2. The degree of resembleness between the marks, whether they are phonetically, visually or structurally similar and hence similar in idea.
    3. The nature of goods in respect of which they are used as trade marks.
    4. The similarity in the nature, character and performance of the goods of the rival traders.
    5. The class of purchaser who are likely to buy the goods bearing the marks.
    6. The mode of purchasing the goods or placing order of the goods.
    7. Any other surrounding circumstances.

    
    It is also settled that weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.
    
    

    Criteria for determining the deceptivity

    
    The Act does not lay down any criteria for determining what is likely to deceive or cause confusion within meaning of the provisions therein. Therefore, every case must depend upon its own particular fact, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registerable by reason of provisions embodied in Act.
    
    In such a case, the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases when it is considered that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by its resemblance to another already on the register if it is likely to do so in the course of its legitimate use in a market.