Nikolaos Voutyrakos

Jindal Global Law School

Handout – Relative grounds of trade mark (in)validity

Section 11 Trade Marks Act 1999: ‘(1) Save as provided in section 12, a trade mark shall not be registered if,
because of ----
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark;
or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered
by the trade mark.
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with
the earlier trade mark.
(2) A trade mark which----
(a) is identical with or similar to an earlier trade mark and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is
registered in the name of a different proprietor.
shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use
of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute
of the earlier trade mark.
(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented-
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course
of trade: or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark
or other earlier right consents to the registration, and in such case the Registrar may register the mark under special
circumstances under section 12.’

A. Relative grounds in relation to earlier trade marks

1. Double identity
Identity of marks
CJEU, Case C-291/00, SA Société LTJ Diffusion v SA Sadas (2003): ‘There is therefore identity between
the sign and the trade mark where the former reproduces, without any modification or addition, all the elements
constituting the latter… [I]nsignificant differences between the sign and the trade mark may go unnoticed by
an average consumer.’

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 Nikolaos Voutyrakos
Jindal Global Law School

Identity of goods/services
Art 16(1) TRIPS Agreement: ‘In case of the use of an identical sign for identical goods or services, a
likelihood of confusion shall be presumed.’
BUT note the ‘functions doctrine’ – CJEU, Case C-482/09, Budejovicky Budvar v
Anheuser-Busch (2011): ‘[A] long period of honest concurrent use of two identical trade marks designating
identical products neither has nor is liable to have an adverse effect on the essential function of the trade mark
which is to guarantee to consumers the origin of the goods or services.’ 1

2. Confusing similarity – section 11(1) Trade Marks Act

Two scenarios:
(a) Identity of marks, similarity of goods, likelihood of confusion
(b) Similarity of marks, identity/similarity of goods, likelihood of confusion

Preliminary issues:
i. The ‘average consumer’ figure:
Specsavers International Healthcare v Asda Stores (2012), per Kitchin LJ: ‘the matter must
be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be
reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make
direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his
mind, and whose attention varies according to the category of goods or services in question.’ 2

1 Read this judgment in light of section 12 Trade Marks Act: ‘In the case of honest concurrent use or of other special circumstance
which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade mark
which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject
to such conditions and limitations, if any, as the Registrar may think fit to impose.’
2 Similar is the position in India – F. Hoffmann-La Roche v Geoffrey Manners AIR (1970): ‘It is also important that the

marks must be compared as a whole. The true test is whether the totality of the proposed trademark is such that it is likely to cause deception or
confusion or mistake in the minds of persons accustomed to the existing trademark.’

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 Nikolaos Voutyrakos
Jindal Global Law School

But note the notion of the average consumer may change over time, because (average)
consumers gradually become more sophisticated in assessing trade marks. See Austin,
Trademarks and the Burdened Imagination (2004): ‘Oddly, consumers appear to be getting smarter about
brands, yet trademark rights continue to expand. In traditional trademark infringement cases, the core issue is
whether ordinarily prudent consumers would be confused in some legally relevant way by the defendant’s use of
a contested symbol. Finding that consumer confusion is “likely” is usually enough to enjoin a defendant from
using a contested mark. It also helps determine the scope of a trademark proprietor’s rights, by establishing that
the defendant was doing something that only the trademark proprietor was entitled to do. But if consumers are
becoming increasingly sophisticated, we might anticipate that they are likely to be confused less often.’ 3

ii. Interdependence between the factors:

CJEU, Case C-39/97, Canon v MGM (1998): ‘A global assessment of the likelihood of confusion implies
some interdependence between the relevant factors, and in particular a similarity between the trade marks and
between these goods or services. Accordingly, a lesser degree of similarity between these goods or services may be
offset by a greater degree of similarity between the marks, and vice versa.’

Similarity of marks
CJEU, Case C-251/95, Sabel v Puma (1997) – the ‘global appreciation’ test: ‘The likelihood of
confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of
the case… That global appreciation of the visual, aural or conceptual similarity of the marks in question, must
be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and
dominant components… However, in circumstances such as those in point, where the earlier mark is not

3 The England and Wales Court of Appeal offered a good summary in Comic Enterprises v Twentieth Century Fox (2016): ‘i)
the average consumer is a hypothetical person or, as he has been called, a legal construct; he is a person who has been created to strike the right
balance between the various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion
of free trade in an openly competitive market, and also to provide a standard […] which […] courts may then apply;
ii) the average consumer is not a statistical test; the national court must exercise its own judgment in accordance with the principle of proportionality
[…] to determine the perceptions of the average consumer in any given case in the light of all the circumstances; the test provides the court with a
perspective from which to assess the particular question it has to decide;
iii) in a case involving ordinary goods and services, the court may be able to put itself in the position of the average consumer without requiring
evidence from consumers, still less expert evidence or a consumer survey. In such a case, the judge can make up his or her own mind about the
particular issue he or she has to decide in the absence of evidence and using his or her own common sense and experience of the world. A judge
may nevertheless decide that it is necessary to have recourse to an expert’s opinion or a survey for the purpose of assisting the court to come to a
conclusion as to whether there is a likelihood of deception…’

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Jindal Global Law School

especially well known to the public and consists of an image with little imaginative content, the mere fact that
the two marks are conceptually similar is not sufficient to give rise to likelihood of confusion.’ 4

Similarity of goods
Canon v MGM – the ‘Canon factors’: ‘In assessing the similarity of the goods or services concerned,…
all the relevant factors relating to those goods or services themselves should be taken into account. Those factors
include, inter alia, their nature, their end users [should read ‘intended purpose’] and their method of use and
whether they are in competition with each other or are complementary.’ 5

But what is complementarity?

CJEU, Case T-169/03, Sergio Rossi v OHIM (2005): ‘[T]he fact that consumers regard a product as a
complement of or accessory to another is not sufficient for them to believe that those products have the same
commercial origin. For that to be the case, consumers would also have to consider it usual for those products to
be sold under the same trade mark, which normally implies that a large number of the producers or distributors
of the goods are the same.’ => narrow meaning
CJEU, Case T-443/05, El Corte Ingles v OHIM (2007): ‘It should be noted that the Board of Appeal
held that there was no likelihood of confusion on the part of the relevant public solely on the basis of a comparison
of the goods concerned. However, even a slight similarity between the goods concerned would have required the
Board of Appeal to ascertain whether a high degree of similarity between the signs could have given rise, in the
mind of a consumer, to a likelihood of confusion as to the origin of the goods.’ => broad meaning

4 But sometimes we need some rules of thumb in applying the global appreciation test – see CJEU, Case T-261/17, Bayer
v EUIPO/Uni-Pharma Kleon Tsetis (2019): ‘Where a trade mark is composed of both verbal and figurative elements, the former are, in
principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing the name than
by describing the figurative element of the mark.’ For a summary of the rules of thumb see infra, fn 6 at the next page.
5 Other factors are sometimes also taken into account, e.g., channels of distribution, relevant public, usual origin.

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 Nikolaos Voutyrakos
Jindal Global Law School

Likelihood of confusion6
Canon v MGM: ‘[T]he risk that the public might believe that the goods or services in question come from
the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood
of confusion.’ 7
Likelihood of association – part of likelihood of confusion
Sabel v Puma: ‘[T]he criterion of ‘likelihood of confusion which includes the likelihood of
association with the earlier mark’ […] is to be interpreted as meaning that the mere association which
the public might make between two trade marks as a result of their analogous semantic content is not
in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of
that provision.’

3. Dilution (a. blurring; b. tarnishment; c. free-riding) – section 11(2) Trade Marks Act
Rationale – Opinion of AG Jääskinen in CJEU, Case C-323/09, Interflora v Marks &
Spencer (2011): ‘Trade mark dilution relates to the idea that the proper purpose of trade mark law should
be to protect the efforts and investments made by the trade mark proprietor and the independent value (good

6 Even though from the US, where the trade mark law differs from India, a practically useful test to ascertain (or refute)
likelihood of confusion comes from a US case, Polaroid v Polarad Elecs. Corp (1961). This case establishes what is
known as the ‘polaroid factors’, essentially a guide to decide upon likelihood of confusion, which can be summarised as
follows:
• Strength of the earlier user’s mark. The stronger/more distinctive the earlier mark, the more likely the confusion.
• Similarity of the marks. The more similarity between the two marks, the more likely the confusion.
• Similarity of the goods/services. The more that the goods/services are related, the more likely the confusion.
• Likelihood that the earlier user will bridge the gap. If it is probable that the earlier user will expand into the later
user’s product area, the more likely there will be confusion.
• The later user’s intent in adopting the mark. If later user adopted the mark in bad faith, confusion is more likely.
• Evidence of actual confusion. Proof of consumer confusion is not required, but when the trade mark owner can
show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement.
• Sophistication of the buyers. The less sophisticated the consumer, the more likely the confusion.
• Quality of the junior user’s products or services. In some cases, the lesser the quality of the later user’s goods,
the more harm is likely from consumer confusion.
In Indian trade mark law, the leading authority is Cadila v Cadila (2001). This is a passing off case, but the Supreme Court
also opined on the principles which should be taken into account in assessing confusing similarity:
• To check the nature of the marks which includes word marks, label marks and composite marks.
• To check the degree of similarity between such marks which include ideological and phonetic similarity.
• To check the similarity of nature, performance and character of the goods of both traders involved.
• To identify the class of consumers who might buy the goods based on the marks they require, their intelligence,
education and the degree of care they might employ in buying or consuming such goods.
• To check the nature of the goods for which they are used as trade marks.
• To identify the mode of purchase when buying such goods.
• Any other such related circumstances which may be relevant in the matter of dissimilarity between such
competitive marks.
7 Similarly, see Balkrishna Hatcheries v Nandos Int’l (2007) & Amritdhara Pharmacy v Satyadeo (1963).

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 Nikolaos Voutyrakos
Jindal Global Law School

will) of the trade mark. This ‘property-based’ approach to trade marks differs from the ‘deception-based’ idea
that trade mark law primarily protects the origin function with a view to preventing consumers and other end
users from erring as to the commercial origin of goods and services. The property-based approach also protects
the communication, advertising and investment functions of trade marks with a view of creating a brand with
a positive image and independent economic value (brand equity or good will). Consequently, the trade mark can
be used for various goods and services having nothing in common apart from being under the control of the trade
mark proprietor.’

Elements: (i) the later mark is identical with/similar to an earlier (registered) mark; (ii) the
earlier trade mark has a reputation in India; (iii) the use of the later mark must either take
unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier
trade mark; and (iv) the use of the later mark is without due cause.

Reputation – well known-marks: Section 2(1)(zg) Trade Marks Act: ‘“Well-known trade mark”,
in relation to any goods or services, means a mark which has become so [reputed] to the substantial segment of
the public which uses such goods or receives such services that the use of such mark in relation to other goods or
services would be likely to be taken as indicating a connection in the course of trade or rendering of services
between those goods or services and a person using the mark in relation to the first- mentioned goods or services.’
Section 11(6) Trade Marks Act:8 ‘The Registrar shall, while determining whether a trade mark is a well-
known trade mark, take into account any fact which he consider relevant for determining a trade mark as a
well-known trade mark including--
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in
India obtained as a result of promotion of the trade mark:
(ii) the duration, extent and geographical area of any use of that trade mark:
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or
publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies,
(iv) the duration and geographical area of any registration of or any application for registration of that trade
mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of, the rights in that trade mark, in particular, the extent to which the
trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.’

8 To be read together with sub-sections (7) and (9).

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 Nikolaos Voutyrakos
Jindal Global Law School

a. Blurring (detriment to distinctive character)

CJEU, Case 252/07, Intel v CPM (2008): ‘[D]etriment to… distinctive character…, also referred to
as… ‘blurring’,… is caused when that mark’s ability to identify the goods or services for which it is registered
and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion
of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier
mark, which used to arouse immediate association with the goods and services for which it is registered, is no
longer capable of doing so.’ The same case also tells us the test we need to follow: ‘It follows that
proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark
requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which
the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a
change will occur in the future.’

b. Tarnishment (detriment to repute)

CJEU, Case C-487/07, L’Oréal v Bellure (2009): ‘[D]etriment to the repute of the mark, also referred
to as ‘tarnishment’ or ‘degradation’, ...is caused when the goods or services for which the identical or similar sign
is used by the third party may be perceived by the public in such a way that the trade mark’s power of attraction
is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services
offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the
image of the mark.’
Red Bull v Sun Mark (2012), per Arnold J: ‘Red Bull contends that the strapline is detrimental to the
repute of the trade mark because it implies that RED BULL is BULL[SH*T]. In my view the average
consumer would appreciate, as I have already said, that the strapline was a play on words. As such, the average
consumer would appreciate that there was an element of humour in the strapline. Accordingly, I do not think
that the average consumer would take the strapline as seriously reflecting on the qualities of RED BULL. I
am therefore not persuaded that the use is detrimental to the repute of the trade mark.’

c. Free-riding (taking unfair advantage of distinctive character/repute)

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 Nikolaos Voutyrakos
Jindal Global Law School

L’Oréal v Bellure: ‘As regards the concept of ‘taking unfair advantage of the distinctive character or the
repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment
caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar
sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics
which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-
tails of the mark with a reputation… The advantage arising from the use by a third party of a sign similar to
a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the
repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in
order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without
paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to
create and maintain the mark’s image.’

B. Relative grounds in relation to earlier rights – section 11(3) Trade Marks Act
1. Unregistered marks
Protection through the vehicle of passing off
2. Copyright

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