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IP Case Digest · Trade Marks Act s.11(2)

Section 11(2), Trade Marks Act: case law

3 judgments of the Delhi High Court and the Madras High Court applying Trade Marks Act s.11(2), from 2023–2026, each with a headnote by BRB Legal.

3judgments
2courts
2023–2026years

Legrand France & Ors. v. Bhawani Singh & Anr., C.O. (COMM.IPD-TM) 197/2024

Delhi High Court · Rectification allowed

Rectification allowed and MLOGRAND removed from the Register. Two independent grounds. First, the petition pleaded non-use and went unanswered, so the averment was deemed admitted and removal followed under section 47(1)(a) on that ground alone. Second, MLOGRAND is a colourable imitation of LEGRAND: the letter E was merely replaced by O, the dominant element GRAND was subsumed whole, the prefix M is insignificant, and the French pronunciation of the two is identical. The respondent had also applied for a device mark and abandoned it once opposed, which the Court read as evidence of mala fide intent to associate with the petitioners.

7-Eleven International LLC v. The Deputy Registrar of Trade Marks, The Registrar of Trade Marks, and Ravi Foods Private Limited, (T) CMA (TM) Nos.110 & 157 of 2023

Madras High Court · Registration refused

Appeals dismissed and the refusal of registration upheld, though for different reasons than the Registrar gave. The judgment turns on what "intention to use" requires: an applicant must have a definite and present intention to deal in the goods at the time of registration, a resolve or settled purpose, not a mere general intention of extending the business at some future time to anything it might think desirable. That the applicant had applied in 1994 but had still not commenced business or sales in India by the time opposition proceedings began over a decade later in 2007 was an additional, though not decisive, factor weighing against it.

The Ryzman Family Partnership v. The Registrar of Trade Marks, (T)CMA(TM)/108/2023

Madras High Court · Set aside

Refusal under sections 9 and 11(1)(a) set aside. Section 11(1) applies only where the mark applied for is identical or similar to an earlier mark and the goods or services are identical or similar. Here there was some similarity between the marks but the goods were not identical, the applicant's mark being for skin care preparations and the cited mark for a rust and stain remover used on stainless steel surgical instruments. Whether goods are similar cannot be decided merely by reference to the class in which the application is filed: goods within the same class may be different and goods in different classes may be similar. The determination takes account of multiple factors, including whether the goods can be used as substitutes, whether they are directly complementary, their origin and their intended purpose. The goods being dissimilar, section 11(1) had no application, and registration could be refused on that footing only if the proprietor of the earlier mark established that it is well known and that section 11(2) is satisfied. The absolute grounds relied on had not been raised in the examination report at all, and a mark must be compared as a whole rather than split into its components.

Other provisions of the Trade Marks Act

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