Justice Manmohan Singh of the Delhi High Court has remarked in a judgment, “The world is a global village.” This sentiment captures the essence of our interconnected era, where globalization and interconnected markets continually redefine our world. Today, the judgments handed down in courtrooms across the globe can have far-reaching consequences and the ripples of these legal decisions extend far beyond their local jurisdictions, influencing economies and industries worldwide.
Welcome to “A View from Afar,” a series dedicated to examining international judgments and their far-reaching impacts. Through this series, we aim to bridge the gap between diverse legal systems and their global repercussions, offering you a panoramic view of the intricate interplay between law and commerce.
We will delve into landmark rulings from various corners of the world, unpacking the legal reasoning behind such decisions and scrutinizing their practical implications. Each article will provide a thorough analysis, shedding light on how these judgments affect not only the parties directly involved but also affect the regulatory frameworks, corporate strategies, and market dynamics on a global scale.
Whether it is a judgment delivered in the United States or the European Union, we will share our views on its profound impact in other jurisdictions navigating through the labyrinth of international jurisprudence.
In this installment of “A View from Afar”, we delve into a provisional refusal order issued by the Chinese Trademark Registry that arose from the refusal of a mark on the ground of phonetic and visual similarity. While analyzing foreign trademark prosecution trends, I came across this order and found the manner in which the applicant successfully overcame the refusal order and ultimately secured publication of the application.
The applicant did not attempt to advance the usual arguments that the marks should be assessed as a whole or that minor differences were sufficient to avoid confusion. Instead, they adopted a pragmatic and commercially grounded strategy. They relied on non-use cancellation of one cited mark and limited the scope of goods in respect of the remaining conflicting mark. This approach allowed the application to move forward without diluting the conceptual strength of the applicant’s own mark.
This case offers a useful opportunity to consider how the Indian Trade Marks Registry would likely approach a similar factual matrix, and more importantly, what strategic lessons Indian applicants can draw from it.
Similarity Objections under Indian Trade Mark Law
Refusals based on similarity are among the most common objections raised by the Indian Trade Marks Registry. Sections 11(1) and 11(2) of the Trade Marks Act, 1999 empower the Registry to refuse registration where a mark is identical or deceptively similar to an earlier trade mark for the same or similar goods or services, and where such similarity is likely to cause confusion.
In practice, applicants frequently respond to such objections by focusing exclusively on visual appearance, pronunciation, or conceptual distinctions between the marks. While these arguments are doctrinally valid, Indian trade mark jurisprudence demonstrates that success in prosecution often depends less on debating similarity in the abstract and more on selecting an appropriate legal strategy grounded in market realities.
Where two marks genuinely look and sound alike, repeatedly insisting on dissimilarity may only prolong prosecution and, in many cases, culminate in refusal. Indian trade mark law, much like other mature systems, offers practical statutory mechanisms that allow applicants to resolve conflicts without forcing artificial distinctions.
The Risk of Arguing Dissimilarity and Prosecution Estoppel
A particularly instructive aspect of the applicant’s strategy lies in what they consciously chose not to argue. The applicant did not plead that the marks were dissimilar or that they ought to be compared as a whole in a manner that eliminated confusion. This restraint was not accidental it was legally sound.
Arguments advanced during prosecution do not exist in a vacuum. Statements made on record before the Trade Marks Registry may later operate as a form of prosecution estoppel. Once an applicant secures registration by asserting that two marks are dissimilar, that position can be used against the applicant in subsequent enforcement or opposition proceedings.
If an applicant differentiates its mark from an earlier mark by downplaying similarity to overcome an objection, it risks weakening its own enforcement rights. In a later infringement or passing off action, such admissions may be relied upon by a defendant to argue that the proprietor is estopped from alleging confusion against a similar mark. The very argument that enabled registration may then operate as a limitation on the scope of exclusivity claimed.
Although Indian trade mark law does not expressly codify prosecution estoppel in the same manner as patent law, Indian courts have consistently frowned upon inconsistent positions and the doctrine of approbation and re-probation is well entrenched. A proprietor cannot deny similarity before the Registry to obtain registration and later assert confusion to restrain competitors.
Against this backdrop, the applicant’s approach becomes particularly instructive. By resolving the objection through non-use cancellation and limitation of goods rather than conceding dissimilarity the applicant preserved the inherent strength of its mark. The applicant did not suggest that similar marks could harmlessly coexist in the market; instead, it removed the legal basis of the conflict itself.
For Indian applicants, this distinction is critical. Clearing an objection by attacking the validity, relevance, or scope of a cited mark is fundamentally different from undermining one’s own mark through concessions on similarity. The former strengthens future enforcement; the latter may secure short-term registration at long-term cost.
Rectification and Non-Use Cancellation as a Practical Strategy
One of the most effective tools under Indian trade mark law is cancellation of a registered mark on the ground of non-use. Section 47 of the Trade Marks Act, 1999 provides that a registered trade mark may be removed if it has not been used for a continuous period of five years and three months from the date of registration.
Indian courts have emphasized that trade mark rights flow from actual use. The Register is not intended to be occupied by unused marks that merely serve to block honest traders. Courts have consistently criticized the practice of maintaining registrations without genuine commercial activity.
Where a cited mark appears dormant, initiating rectification or removal proceedings before the High Court or the Trade Marks Registry can be decisive. Once such a mark is removed, the similarity objection often collapses entirely. The inquiry then shifts from a comparison of marks to an assessment of whether the earlier mark deserved protection in the first place. Numerous applicants in India have successfully cleared objections by demonstrating that the cited mark existed only on paper and not in the marketplace.
Restricting Goods or Services to Resolve Conflict
The “Triple Identity Test” is a legal benchmark, primarily in trademark law, used to determine infringement by checking for identity in three areas: the mark/name, the goods/services, and the customer base/trade channel; if all three match, courts often presume a likelihood of consumer confusion, allowing for quick action against copycats.
Where a cited mark is valid and in use, but confined to a limited range of goods or services, an applicant may choose to restrict the scope of its application under Section 18 of the Act. By narrowing specifications and removing overlapping goods, applicants can often satisfy the Registry while retaining protection for their core business.
The Trade Marks Registry accepts such limitations, and Indian courts have acknowledged that confusion must be real and probable, not theoretical. This approach reflects how brands realistically coexist in the market and avoids unnecessarily rigid outcomes.
Co-Existence and Consent Arrangements
Another statutory route under Indian law is registration based on honest concurrent use or other special circumstances under Section 12 of the Act. In practice, this is often achieved through coexistence or consent agreements.
Such arrangements typically regulate the manner of use, scope of goods or services, trade channels, and branding elements. While the Trade Marks Registry is not bound by private agreements, they are given due consideration, particularly where the risk of consumer confusion is minimal.
A carefully structured coexistence arrangement can transform what appears to be a serious similarity objection into a manageable issue, without compromising the legitimate interests of either party.
Author’s Note
Viewed in this context, the Chinese Trademark Registry decision offers a valuable comparative lens for Indian practitioners and businesses. While procedural nuances differ across jurisdictions, the foundational principles of trade mark law remain aligned.
Indian trade mark law places considerable emphasis on use, market realities, and the likelihood of genuine consumer confusion. Where similarity exists, the more effective approach is often not to deny it, but to adopt a carefully calibrated strategy using the tools provided by the statute. In practice, trade mark prosecution is as much an exercise in foresight and judgment as it is in legal argument.
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