Section 11

11. Relative grounds for refusal of registration.—

(1) Save as provided in section 12, a trademark shall not be registered if, because of—

(a) its identity with an earlier trade mark and similarity of goods or services covered by the trademark; or

(b) its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.

(2) A trademark which—

(a) is identical with or similar to an earlier trademark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trademark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trademark is a well-known trademark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark.

(3) A trademark shall not be registered if, or to the extent that, its use in India is liable to be prevented—

(a) by virtue of any law, in particular, the law of passing off protecting an unregistered trademark used in the course of trade; or

(b) by virtue of the law of copyright.

(4) Nothing in this section shall prevent the registration of a trademark where the proprietor of the earlier trademark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12.

Explanation.—For the purposes of this section, earlier trademark means—

(a) a registered trademark or an application under section 18 bearing an earlier date of filing or an international registration referred to in section 36E or convention application referred to in section 154 which has a date of application earlier than that of the trademark in question, taking into account, where appropriate, of the priorities, claimed in respect of the trademarks;]

(b) a trademark which, on the date of the application for registration of the trademark in question, or where appropriate, of the priority claimed in respect of the application, was entitled to protection as a well-known trademark.

(5) A trademark shall not be refused registration on the grounds specified in sub-sections (2) and (3) unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trademark.

(6) The Registrar shall, while determining whether a trademark is a well-known trademark, take into account any fact which he considers relevant for determining a trademark as a well-known trademark including—

(i) the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trademark;

(ii) the duration, extent and geographical area of any use of that trademark;

(iii) the duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trademark under this Act to the extent that they reflect the use or recognition of the trademark;

(v) the record of successful enforcement of the rights in that trademark, in particular the extent to which the trademark has been recognised as a well-known trademark by any court or Registrar under that record.

(7) The Registrar shall, while determining as to whether a trademark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services; (iii) the business circles dealing with the goods or services, to which that trademark applies.

(8) Where a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act.

(9) The Registrar shall not require as a condition, for determining whether a trademark is a well-known trademark, any of the following, namely:—

(i) that the trademark has been used in India;

(ii) that the trademark has been registered;

(iii) that the application for registration of the trademark has been filed in India;

(iv) that the trademark—

(a) is well-known in; or

(b) has been registered in; or

(v) that the trademark is well-known to the public at large in India.

(10) While considering an application for registration of a trademark and opposition filed in respect thereof, the Registrar shall—

(i) protect a well-known trade mark against identical or similar trademarks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trademark.

(11) Where a trademark has been registered in good faith disclosing the material information to the Registrar or where the right to a trademark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trademark or right to use that trademark on the ground that such trademark is identical with or similar to a well-known trademark.