Concept of Likelihood of Confusion under the Trademarks Act
Section 11(1) of the Trademarks Act, 1999 enacts the basic principles of trademark law that, no trademark shall be registered if it is identical or similar to an earlier registered trademark for similar goods or services. The requirements under section 11(1) is corollary to the exclusive right extended to the registered trademarks and to protect the rights of the traders in relation to the goods or services marketed by them under those trademarks.
The concept of likelihood of confusion or dilution resulting in refusal of registration, in section 11 has to be based upon:
- Identity of the trademark with an elder trademark and similarity of goods or services covered by earlier trademark
- Similarity of trademark with earlier trademark and the identity or similarity of the goods or services covered by earlier trademark.
If the trademark is not identical, but similar to the earlier trademark and the goods or services are identical or similar, the likelihood of confusion or association with earlier trademark shall have to be proved for successful opposition of registration.
Section 11(1) of the Trademarks Act prohibits the registration, when the trademark applied for is identical or is similar to an earlier trademark and the goods or services on which the later trademark is sought to be used are similar to goods or services covered by the earlier trademark.
It follows, that there cannot be on the Register simultaneously two or more registrations of the same or nearly resembling marks, in the name of the different proprietors, in respect of similar goods or services.
If the goods or services are identical, there does not appear to be any need to prove confusion or association with earlier trademark. Cognizance under section 11(1) has to be taken by the Registrar in its ex-officio examination.
Likelihood of Confusion:
Section 11(1)(a) and (b) become operative only if one of the two results are achieved:
- Likelihood of confusion on the part of public
- Likelihood of association with earlier trademark
Likelihood of confusion with the earlier trademark may arise, if there is a likelihood on the part of the public to associate the trademark sought to be registered with an earlier trademark.
Associating the later trademark with earlier or dilution: If the public shall associate or are likely to associate the subsequent mark with the earlier mark, it is a new ground of opposition and is referred as to doctrine of dilution. As per the Doctrine of Dilution, there is presumption that the relevant customers shall start associating the trademark with a new and different source.
Some Examples of Likely Hood of Confusion Section 11(1) Trademarks Act, 1999
PARKO FOR IDENTICAL ELECTRICAL GOODS:
The registration of trademark PARKO for electrical goods was refused as the proprietor of the identical registered trademark PARKO since 1964 in respect of of electrical goods opposed under section 11 and 12 of the Trademarks Act, 1958.
The Intellectual Property Appellate Board held that, the applicant was trying to take advantage of the reputation and goodwill built up by the opponent all the 21 years and that he adoption of the impugned mark by the applicant would definitely cause confusion and deception in the minds of public, even though some of the goods of applicant are different.
HABITAT for Similar Goods Refused:
In Habitat UK Limited Vs Habitat India Private Limited 2003 27 PTC 2003 27 PTC Bom, the registration of Habitat was refused on opposition by the owners of the identical mark, registered in respect of a wide range of products and widely reputed trademark. The choice of the mark by the applicant did not seem by chance but to exploit the international reputation and goodwill of opponents giving rise to the chances of confusion and deception.
