Apart from the conditions mentioned in the Part 1 there are some relative grounds/condition (Sec. 11) of Trademark Act, 1999, which you also should keep in mind before choosing a trademark.
The chances of refusal of application in case of Sec. 11 can be minimized by doing a public search or check data base via the link https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx of Trademark registry, whether there is any same or identical trademark is already in the data base or not. In case the same or identical is already on records, it is recommended that you should not apply for the same and look for some other name.
To understand the concept
of similarity we can refer a Supreme Court judgement in Cadila Health Care Ltd. v. Cadila
Pharmaceutical Ltd.3
In this case Supreme Court laid down certain
guidelines for adjudication of matters concerning deceptive similarity of
trademarks. In this particular case, the parties to the case were the
successors of the Cadila group. The dispute arose on the issue of selling of a
medicine by the defendant under the name “Falcitab” which was similar
to the name of a medicine which was being manufactured by the plaintiff under
the name “Falcigo”. Both the drugs were used to cure the same disease
and hence, the contention was that the defendant’s brand name is creating
confusion between the consumers. Injunction was demanded by the plaintiff. As a
defence, the defendant claimed that the prefix “Falci” has been
derived from the name of the disease, i.e., Falcipharam malaria.
The court observed that because of the
diversified population of the country and varying infrastructure of the medical
profession due to language, urban-rural divides, etc. and with the
probabilities of medical negligence, it is important that confusion of marks
should be strictly prevented in pharmaceuticals and drugs. The Court, thereby,
held that being medical products more precaution and care must be taken and the
names of the brand, therefore, being phonetically similar shall amount to being
deceptively similar.
Second is never choose a trademark which is similar or identical to the Well-known trademarks in the market like Bisleri, Sony, Toshiba, Ford, Yahoo etc.
As we know that trademark gives protection for the description of goods/ service one has applied for but in case of Well-known Trademarks, Trademark act gives well-known trademarks a wider scope of protection against the violators. The list of the well-known marks https://ipindiaonline.gov.in/tmrpublicsearch/well-known-trademaks-updated.pdf. The registry gives a wider protection to well-known trademark and there is less scope of getting your trademark register.
The same approach can be seen in the latest judgement given by Delhi High court in BAYERISCHE MOTOREN WERKE AG (BMW) V/S OM BALAJEE AUTOMOBILE (INDIA) PRIVATE LIMITED- in this case BMW who is manufacturing motorcycles under the mark BMW since 1923 and motor cars since 1928, under the said mark. It has assembly plants in 14 countries and a global sales network in more than 140 countries, has filed a case for getting the injunction (stay) against the Delhi based company who are manufacturing the E-rickshaws under the trademark “DMW” SINCE 2013 from restraining the defendants(OM BALAJEE AUTOMOBILE (INDIA) PRIVATE LIMITED) its officers, agents etc. from manufacturing, exporting, importing or offering for sale, advertising or in any manner dealing with goods not limited to E-Rickshaws, bearing the mark DMW or any other mark which are identical or deceptively similar to the plaintiff’s BMW marks.
The High court clearly states that brand of the defendant is visually and phonetically similar to the mark of the plaintiff. Further, the plaintiff’s mark is a well-known trademark and use of the aforesaid mark by the defendant on its product constitutes infringement. The defendant is obviously seeking to encash upon the brand quality and goodwill which the mark BMW enjoys in the market. Such use by the defendant is detrimental to the reputation of the registered mark BMW of the plaintiff company. The defendant is prima facie guilty of infringement of the trade mark of the petitioner (BMW).
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