Relative Grounds For Trademark Refusal

Relative grounds for trademark refusal is by reason of conflict with prior trademarks and well-known marks. However, sometimes a mark could be registered on the basis of "honest concurrent use" when supported by evidence to that effect. In this article, we look at Relative Grounds For Trademark Refusal in detail.

Trademark Search Process

Relative grounds for trademark refusal are by reason of conflict with prior trademarks. Hence, prior to objection, the trademark Examiner conducts a trademark search of same or similar trademarks in respect of same or similar description of goods and services. The trademark search is performed using phonetic search on the basis of the mark and a few variants of the mark. In case any same or similar trademark is found, then an objection is raised by the Trademark Examiner on Relative Grounds For Trademark Refusal.

Identical or Similar Trademark

The trademark laws define identical or similar trademarks as under:

Identical Trademark

A mark is identical with the trade mark where it reproduces without any modification or additions, all elements constituting the trade mark or where, viewed as a whole it contains differences so insignificant that they may go unnoticed by an average consumer

Similarity of Marks

The terms similarity of trademarks is to be construed as “deceptively similar” which expression has been defined “as so nearly resembling that other mark as to be likely to deceive or cause confusion”.

The main factor in determining similarity of marks is likelihood of confusion. For likelihood of confusion to exist it must be probable or should arise in the mind of average consumer. Know more about identical or similar trademarks.

Overcoming Objection under Relative Grounds

Relative Grounds For Trademark Refusal can be overcome by a trademark applicant by submitting to the Trademark Office as under:

Different Marks

The trademark applicant can submit a counter to the effect that the trademarks cited as conflicting marks in the trademark examination report are different than the applicant’s trademark; or goods or services mentioned in the application are different than those covered in marks cited as conflicting in the examination report.

Removing Conflicting Goods or Services

If a trademark application is filed with very wide specification of goods and services, then the applicant could remove some of the goods or services and provide a more precise specification to avoid conflict. When using exclusion as a means of overcoming a objection, it is necessary to ensure that all the goods and/or services considered to be both identical and similar to the cited mark are excluded from the application.

Consent from Trademark Owner

An objection under relative grounds can be overcome if the trademark owner agrees to the registration of the proposed trademark in writing. A consent letter containing assertion of trademark owner over the same/similar trademark(s) by virtue of registration and the goods/services to which the proprietor of the cited mark is consenting must be provided.

Honest Concurrent Use of Trademark

If the trademark applicant can demonstrate based on evidence that they have built up a sufficient amount of goodwill or common-law right in their mark, then the trademark application maybe allowed with conflict to an earlier mark. The Trademark Hearing Officer will mainly considered if common-law rights have accrued by reason of honesty of adoption, continuous & concurrent use of the trade mark, and without the owner of the earlier right having taken any prohibitive action against the applicant.

Division of Trademark Application

The trademark application could request for a division of the trademark application by filing form TM-53. After division, each divided application would be treated as separate application, with the same filing date. On division, if there are certain classes with no conflict, then such classes can be registered.

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Frequently Asked Questions

Common questions about Relative Grounds for Trademark Refusal in India.

Relative grounds for trademark refusal refer to situations where a trademark application conflicts with an existing or prior registered trademark or well-known mark. This objection arises due to the likelihood of confusion between the marks in relation to the goods or services they cover.

The trademark examiner conducts a trademark search using phonetic variations of the applied mark to identify any identical or deceptively similar marks. Similarity is assessed based on the likelihood of confusion arising in the mind of an average consumer between the two marks.

A trademark applicant can argue that the cited marks are different, or the goods/services are different to avoid conflict. They can also remove conflicting goods/services from the application, obtain consent from the existing trademark owner, or provide evidence of honest concurrent use of the mark.

Honest concurrent use refers to a situation where the trademark applicant can demonstrate, through evidence, that they have built up sufficient goodwill or common-law rights in their mark by continuously using it concurrently with the existing mark, without any prohibitive action from the earlier mark owner.

Yes, a trademark applicant can request for a division of their application by filing a specific form (TM-53). After division, each divided application is treated separately, and classes of goods/services without conflict can proceed to registration.

The Hearing Officer primarily considers if common-law rights have accrued to the applicant's mark due to honest adoption, continuous and concurrent use, and the lack of any prohibitive action from the earlier mark owner against the applicant.

Yes, if the owner of the cited conflicting trademark provides a consent letter asserting their ownership and consenting to the registration of the applicant's mark for specific goods/services, this can help overcome the relative grounds objection.

Likelihood of confusion is the main factor in assessing similarity between trademarks. If it is probable that an average consumer would be confused or deceived due to the similarity between the marks, it increases the chances of a relative grounds objection.

By removing goods or services from the application that are considered identical or similar to those covered by the cited conflicting mark, the applicant can narrow down the specification and potentially overcome the relative grounds objection.

A comprehensive trademark search is conducted by the examiner to identify any identical or similar marks for the same or similar goods/services before raising a relative grounds objection. The search helps assess the likelihood of confusion with prior marks.