55 judgments of the Delhi High Court, the Madras High Court and 3 other courts applying Trade Marks Act s.11, from 2023–2026, each with a headnote by BRB Legal.
Rectification allowed and KREOFLAT removed from the Register in Class 5, the mark having been registered despite the prior existence of PANKREOFLAT in the same class and without properly considering the earlier mark. The judgment restates the rule that the tests of confusing similarity are modified for medicinal products: confusion between pharmaceutical preparations can produce physically harmful results, so greater protection is required and a lesser quantum of proof of confusing similarity is called for than in an ordinary case.
Appeals dismissed and an injunction upheld in a dispute over a restaurant name. The appellants could not be treated as permissive users, the mark in question being the very mark registered in favour of the respondents, and the appellants' use for restaurants and like activities was allied and cognate to the registered specification. A prima facie case of infringement with likelihood of confusion under section 29(2)(b) was therefore made out, and following Midas Hygiene an injunction had to follow.
Appeal allowed and an order dismissing an opposition set aside. Although the goods differed and an earlier Supreme Court decision on the same mark had gone the other way, the Court identified a distinguishing feature: the applicant had adopted the word without any prefix or suffix and had reproduced the appellant's style of writing it, all in small letters. Given the appellant's long-established reputation in the mark, the phonetic identity combined with the imitated styling made the mark deceptively similar, and a customer familiar with the appellant's mark would be misled.
Interim injunction refused and an ex parte order vacated in a dispute over pharmaceutical marks built around two letters of the alphabet. The Court held that the plaintiff cannot claim protection against use of letters of the English language on the strength of a copyright registration in a stylised rendering of them, the letters in the impugned mark being written in a completely different manner. The overall impression of the competing trade dresses differed in font and colour scheme, so neither the marks nor the trade dress were deceptively similar and the plaintiff had no exclusive right in the letters themselves.
Appeal allowed, an order dismissing an opposition set aside, and the resulting registration expunged. Two points carry beyond the facts. The respondent had earlier been authorised for six months to sell goods under the appellant's mark on e-commerce platforms, which the Court read as implicit acceptance of the appellant's rights. And a mark owner is always entitled to expand its goods and services as a natural consequence of business expansion, so viewed commercially there could be confusion that the competing goods stem from the same trade source. With identical marks and similar goods sharing a consumer base and trade channels, section 11 barred registration.
Appeals partly allowed and an interim injunction in a passing off counterclaim set aside. The Division Bench held that the Commercial Court had done no more than catalogue the documents and recite sales figures without analysing whether those figures translated into goodwill or reputation in the mark, and without determining whether such goodwill had been acquired before the appellant's adoption. Following Pernod Ricard, that finding is the foundational requirement for passing off, and in its absence the injunction could not stand.
A carefully split outcome on a composite mark. The Court held that the word element was suggestive rather than descriptive but had not acquired distinctiveness, so the plaintiff had no exclusivity in it and the defendant remains free to use the word for its news programme. The device mark was another matter: the defendant's label was deceptively similar, the globe behind the word remaining very similar even in the defendant's revised version, and its use for the same service, class of consumers and trade channels amounted to infringement and passing off.
Appeal dismissed and the refusal of an interim injunction upheld. The Supreme Court compared BLENDERS PRIDE and IMPERIAL BLUE with LONDON PRIDE and found no visual, phonetic or structural resemblance capable of supporting infringement or passing off, resemblance being a sine qua non for both. The judgment works through the anti-dissection rule, the dominant feature test, the principle that no exclusive right attaches to common or descriptive terms, and the average consumer with imperfect recollection, and discusses the post-sale confusion doctrine as it has developed in the United Kingdom. Although the appellants held registrations for the composite marks, no evidence showed that any element, such as bottle shape, colour scheme or the word PRIDE, had acquired distinctiveness or secondary meaning. An earlier unsuccessful challenge to the use of PRIDE, where it was held that they had no independent registration for the word alone, also told against them.
A refusal on deceptive similarity was quashed as cryptic and non-speaking. The applicant's reply had argued that the two marks move in different trade channels, one a finishing product in the textile industry and the other used in building construction, and had cited the four cardinal factors for deceptive similarity, none of which the order addressed. The mark should have been published and any opposition left to be filed.
A refusal was quashed as a non-speaking order passed in breach of natural justice. The Registrar asserted for the first time in the order that the cited marks were in use, without disclosing how he knew and without any opportunity to rebut it, and raised the want of acquired distinctiveness under the proviso to section 9 for the first time there too. The cited registrations were territorially restricted and did not cover the state in which the applicant trades.
A refusal under section 11 was quashed as non-speaking because the order never disclosed which of the several grounds in that section it rested on. The cited mark covered medicines sold only against a doctor's prescription while the applicant's goods were lifestyle products bought off the shelf, so the two did not meet the same purchaser. The right course was to publish and let any opposition be filed.
A refusal over a cited mark covering a different range of beverages was quashed for total non-application of mind. The question of rejecting the application at that stage did not arise: the mark should go to the journal, and any opposition that follows can be decided on its merits after a fair hearing.
Refusal of the mark PLANET E SCHOOL set aside and the Registry directed to process the application. Applying the anti-dissection rule as explained in South India Beverages, the Court held that composite marks must be compared as wholes and that it is impermissible to find deceptive similarity by comparing one portion of a mark with a portion of another where the composites viewed as wholes are dissimilar. Examining the component parts is a legitimate preliminary step, but deciding likelihood of confusion solely on a prominent feature while ignoring the rest violates the rule. The appellant offered to limit its claim, and the Court accepted that limitation.
The use and registration of a trade mark confer rights only in respect of identical or similar goods or services, unless the mark is declared to be a well known trade mark. All three citations belonged to one fertiliser company and were applied to chemical products, while the applicant's mark was for filters used in purifying air and drinking water.
Documents filed for the first time in the appeal, never produced before the Registry, cannot be considered by the Court. The appellant was left to file a fresh application and put the documents on record there, with the Registry to decide de novo.
Refusal of a device mark set aside and the matter remanded. The show cause hearing notice bore no proper dispatch date and was never served, the appellant learning of it only on the day of the hearing during a routine follow-up, and its letter raising that grievance was not considered before the refusal issued. The Court held that principles of natural justice demand a right of hearing unless excluded by law, and that no person is to be condemned unheard. The respondent fairly agreed that a hearing should be given.
A writ against a refusal based on a cited mark failed on two counts. The proprietor of the cited mark had not been impleaded, and section 91 provides a statutory appeal. The petition was dismissed, but expressly not on merits.
Three applications were refused under sections 9 and 11. The grounds of decision, when sought, merely extracted the statutory wording of sections 9(1)(b) and 11(1)(b). There was no discussion of the documents filed on user rights or on the growth of the events run under the marks.
Faced with a section 11 citation, the appellant undertook to have the cited mark rectified and asked that its own refused application be kept alive so that seniority from the filing date was not lost. The refusal was set aside and the application restored to its original number pending that step.
The companion appeal on a different class, decided the same day in identical terms. The appellant undertook to have the cited mark rectified and the refused application was restored to its original number so that the seniority claim from the filing date survived.
Appeal dismissed and the interim injunction restraining use of SVT HOTEL SPECIAL for asafoetida confirmed. A registered mark is prima facie valid under section 31, and to displace that at the interlocutory stage the defendant must show that the registration is ex facie impermissible or was granted in gross violation of the Act, a high threshold not met here. Whether HOTEL SPECIAL merely denotes the intended purpose of bulk sale to hoteliers, and so attracts section 30, is a matter of evidence and not a ground to refuse an injunction against a mark registered after ten years of use. The defendant's use of the registered symbol on an unregistered mark supported the restraint against passing off. The trial court's reasoning that a claim of prior use amounted to an admission of distinctiveness was wrong, but did not warrant interference given the limited scope of Order XLIII Rule 1.
Phonetic similarity was accepted, and yet it was held too early to decide whether the mark would be deceptively similar, because the Registry had not decided the question on any opposition but had only exercised its authority at the stage of scrutinising the application under section 11.
A preliminary objection raised under section 11(1) cannot become a refusal under section 11(2), and a summary refusal at the preliminary stage is premature: the Registrar should have let the mark go to publication and waited to see whether opposition followed. Section 11(1) is also subject to section 12, so the Registrar is not without power to impose suitable conditions, including a disclaimer, in place of refusing outright.
Refusal under section 11 set aside after the position on the cited marks changed during the appeal. Proprietors of three cited marks consented to registration subject to restrictions which the appellant accepted, undertaking to amend its description of goods. One cited mark was restricted in use to two states and covered batteries and inverters, and as to another the appellant was the prior user with an entirely different description of goods and a different class of purchasers. Advertisement before acceptance directed under the proviso to section 20(1).
The threshold at the pre-advertisement stage is low. Where there is an arguable case that the goods to which the applicant applies its mark are not similar to those of the cited mark, rejection before advertisement is not justified, because a registered proprietor is entitled to protection only where an identical or similar mark is used in relation to identical or similar goods. The applicant also held the identical mark registered in two other classes.
A multi-class application refused under sections 9 and 11 must be dealt with class by class, and the Court disposed of the appeal that way. Taking the citations class by class against their current Registry status, it allowed advertisement in every class where the cited marks had lapsed for non-renewal, been abandoned or refused, or where the applicant agreed to restrict its specification so that the goods no longer overlapped, and refused advertisement only in Class 22, where a live conflicting registration remained. The global registrations of the mark and the status of each citation as on the date of hearing were both treated as material. A restricted specification is the route to advertisement where a citation is live but the goods can be separated.
Refusal under sections 9 and 11 set aside on both citations. As to the first cited mark, its proprietor had consented to registration after the impugned order; the Court held that the consent of the proprietor of a cited mark is not by itself sufficient to preclude an objection by the Registrar, but taken together with the difference in goods, carbon black materials against chemicals used in purification through displacement chromatography, the objection no longer stood. As to the second, a composite label mark of at least three elements, section 17(1) makes clear that registration of a composite mark protects the mark as a whole, and section 17(2), opening with a non obstante clause, that protection does not extend to the individual elements unless the proprietor separately applies for and obtains registration of them. It was not the Registrar's case that the proprietor held any such separate registration for the element relied on, so that objection failed too.
A device mark of three elements was refused as a common surname and geographical name, and over a cited mark in Kannada. Distinctiveness must be judged on the mark as a whole, so the absolute ground failed. The proprietor of the cited mark had sued the applicant, a contempt order in that suit had expressly permitted this very use with the place name in a smaller font, and the suit was later dismissed as withdrawn, so the relative ground failed too.
The Registry objected to a three-word mark by combining one word taken from each of three different cited marks, a fusion unknown to trade mark law. The order itself said only that the mark was objectionable under sections 9 and 11, which is completely devoid of reasons, and the applicant had claimed and evidenced use from 2006.
Refusal under sections 9 and 11 set aside. Only two of the cited marks were registered as on the date of the search report, both had lapsed for want of renewal, and in any event their goods, telecommunication and sound reproduction equipment, were not similar to the solid state power sources claimed. Section 11(1) is to be worked in two stages: first whether identical or similar marks are used on identical or similar goods, and only if that is crossed, whether confusion on the part of the public is likely, including by association.
A refusal bereft of reasons, with grounds of decision issued about a year later recording conclusions that were not preceded by any reasoning. Evidence of use ran from 2010 with invoices, the applicant's contention that the words bore no relation to the goods was never dealt with, and one cited mark had since been refused registration.
A one-line order refused the mark as objectionable under sections 9 and 11, where the examination report had raised only a relative ground under section 11. Two of the three cited marks were abandoned. For the third, counsel offered to delete from the specification the one description of goods the two marks had in common, and the application proceeded for the rest.
A one-sentence refusal, that the mark was objectionable under sections 9 and 11, was set aside. The examination report had raised no section 9 objection at all. The applicant held more than a hundred registrations sharing the same prefix, including the prefix registered as a word mark on its own, and the proprietor of the cited marks had been permanently injuncted by a civil court from using that prefix in any manner.
The elements of the mark were derived from the subject matter, one from urea or urine and the other from a kidney supplement, and the protection ordinarily extended to a mark built from derived elements is lower than for an arbitrary or fanciful one. With the reason for adoption explained and many marks sharing those elements already on the register, the mark was accepted.
The grounds of decision concluded that the application was on a proposed-to-be-used basis when it claimed use from a date before filing and evidence of that use was on record. A conclusion that a mark is generic or descriptive cannot be drawn without reference to the goods it is applied to, and each cited mark carried one of the two words, never both.
A refusal consisting of a single sentence, that the mark was objectionable under sections 9 and 11, was held completely bereft of reasons, and the grounds of decision supplied later under Rule 36(1) added only further conclusions. The mark derived from the applicant's corporate name, was not applied to the goods its words name, and had been registered abroad in identical form. Lack of reasons alone was enough to set the order aside.
During the appeal the appellant obtained registration of the corresponding word mark in the same class, without any accompanying disclaimer. That being so, the Registrar could not object to the device mark in that class, and the appeal succeeded on that ground alone, the Court expressly declining to go into whether the mark was otherwise registrable under section 9.
Refusal under section 11 set aside and remanded. The cited registrations had all been filed long after the appellant's adoption of the mark in 1933, and the appellant held the corresponding domain name and showed extensive global use. On that material the case could fall within section 12, which permits registration by more than one proprietor on honest concurrent use or other special circumstances, and the Registrar was directed to consider it.
The sole ground of refusal was a relative one. Of the three cited marks, two had since been removed from the Register and the third was the subject application itself, so the objection was no longer valid. The mark was ordered to be advertised before acceptance.
Three defects. An objection under section 11 cannot be taken at all where the examination report identifies no similar or identical earlier mark in support of it. The order reproduced the language of section 9(1)(b) without saying how the mark fell within any of its grounds. And a user affidavit was not mandatory under the rules in force when the application was filed, which gave the Registrar only a discretion to call for one, which he never exercised.
Of the four cited marks one was the applicant's own and one had been abandoned. For the remaining two the applicant produced letters of consent from the registered proprietor, together with registrations of the identical mark obtained in other jurisdictions on the strength of the same consents, which indicated co-existence.
A mark is descriptive only if the goods are actually marketed in a way that bears out the description: unless the products were sold as preferred or recommended by doctors, the mark was suggestive and not descriptive. The only commonality with the cited marks was a prefix that the Registry had already registered to several others in the same class.
Five identical refusals fell together. A status table showed the citations abandoned or facing removal for non-renewal, and the applicant's mark was a coined phrase presented as a device with distinctive colouring, font and a stylised symbol, while the citations carried one or other of the two words as prefix or suffix. The applicant's own registrations of the identical mark and of its prominent feature in other classes also defeated the objection that the mark was non-distinctive.
Two dictionary words used together did not directly describe a positive quality of the services and only hinted at their intended nature, so the mark was suggestive at the highest even though it had the potential of being commendatory. A user affidavit showed use in India since 2013, identical registrations existed in several jurisdictions, and half of the ten cited marks were the applicant's own.
A tagline made of dictionary words can function as a source identifier so long as the expression does not describe or relate to the features of the goods and services. A question used to elicit someone's perception of a situation designates nothing about the goods in the classes applied for, and the examiner appeared to have relied solely on the dictionary meanings of the words.
A one-line refusal under sections 9 and 11. The identical mark was already registered to the applicant in three other classes and in use since 1988, two of the three citations belonged to a sister concern in the same group of companies which had no objection, and the third had been abandoned after the applicant opposed it.
A refusal was upheld. The disputed element of the mark was a slight alteration of a registered certification mark which has acquired generic meaning, so its use could mislead the public into thinking the goods were certified. A disclaimer would not cure it, because disclaimers are never communicated to the public at large and the comparison must be of the distinctive elements on which exclusivity is claimed.
A device mark refused on both absolute and relative grounds was allowed. A nearly identical mark was already registered in two of the classes applied for; use since 2008 was proved by an affidavit of use together with felicitations and coverage in travel and lifestyle press, so the proviso to section 9(1) applied; and a word descriptive of the services in one class has no direct association with the goods in the others. Every citation but one had lapsed or been refused, and the single class in which that one sat was given up.
A composite of two ordinary dictionary words which has no dictionary meaning of its own, and which alludes to the purpose of the services without explicitly stating it, is suggestive and not descriptive. The applicant also held the identical mark registered in two other classes. On the relative ground, a single shared word did not make the marks similar when each was compared as a whole.
Where a dictionary word is used in conjunction with another and the combination draws no instant connection with the kind of goods, the mark is at best suggestive. The objection rested on the generic half of the mark, over which no exclusivity was claimed or asserted, and the applicant already held the distinctive half registered as a word mark in the very class refused.
Refusal under section 11 quashed and the application allowed outright. Section 11(1) requires the cumulative satisfaction of three criteria: that the marks are identical or similar; that the goods or services are identical or similar; and that registration would result in a likelihood of confusion, including association, on the part of the public. Likelihood of confusion is not to be easily presumed, and the nature of the goods and the class of their purchasers must be borne in mind. Here the cited registration was for paper caps used in toy pistols, not for toy pistols at all, while the applicant sought registration for water and colour spray guns, which are guns in form and not in substance and emit not fire but its antithesis. Similarity for the purposes of section 11(1) has to be of the goods or services, not of the occasion of their use, so the fact that both might be used at the same festivals was irrelevant. The Court added that registration of an eligible mark is a valuable commercial right carrying inalienable entitlements, chief among them protection against infringement, so an application can be rejected only if it falls strictly within the periphery of sections 9 and 11. Allegations of mala fide in the impugned order ought not to have been made without adequate evidence.
A refusal under sections 9 and 11 fell on both. The examination report had raised no section 9 objection at all, and a two-word compound run together without a space is a coined term with no direct reference to the goods, suggestive at the highest. Of the four citations one had already been removed from the register before the refusal, two were unrenewed, and the last shared only a single common word, which is not sufficient to establish a likelihood of confusion.
Allowed. On section 9(1)(b) the examiner had ignored material going to reputation and goodwill, namely registrations for SOUNDLINK in the European Union, Canada, Colombia, Peru, Chile, Korea, Russia, Hong Kong and the USA, continuous use since 2010, and widespread sales online and through 35 retail stores. On section 11 the court held that composite marks are to be compared by overall appearance and commercial impression rather than dissected into individual features, so commonality of the word "sound" alone was not prima facie likely to cause confusion.
Two points. The requirement to substantiate a user claim by affidavit was introduced by the 2017 Rules and could not be applied to an application filed in 2011, and that objection was in any event raised for the first time at the review stage. And the sole cited mark was assigned to the applicant while the appeal was pending, which removed the only surviving ground of refusal.
Allowed. The mark was held suggestive rather than descriptive of the goods. Several of the cited marks, including FRESH COVER, FRESH MAKE UP, FRESHEE and FRESH MIX, had already lapsed by the date of the impugned order, and the remainder were prima facie dissimilar when the competing marks were compared as wholes following Cadila Healthcare. The appellant's registrations for the identical device in the USA, Canada, Australia, Indonesia, Mexico and Hong Kong, as well as in India in other classes, were relevant and had been left out of account.
