The examination of a trademark application in India operates at two distinct levels. The first level, governed by Section 9 of the Trade Marks Act, 1999, concerns the inherent qualities of the mark itself – whether it is distinctive, whether it is descriptive, whether it offends public policy. These are the absolute grounds and they are assessed without reference to any other mark on the register. The second level of examination is governed by Section 11 and it operates on an entirely different logic. Here, the question is not whether the mark is intrinsically registrable, but whether its registration would conflict with rights that already exist – rights vested in earlier marks, earlier applications and marks that have achieved the status of being well-known. These are the relative grounds for refusal and they form the subject of this article.
Relative grounds are so called because the objection is relative to something external to the application – an earlier trademark, an earlier application or an established reputation. A mark that is perfectly distinctive and free from any absolute ground objection may still be refused registration under Section 11 because its coexistence on the register with an earlier similar mark would create confusion in the marketplace, allow the later applicant to exploit another’s reputation or damage the distinctive character of a well-known mark. The relative grounds thus reflect the register’s function not merely as a repository of marks but as a system for managing the boundaries between competing commercial identities.
Section 11 is one of the most litigated provisions of the Trade Marks Act, 1999. It is the primary battleground in opposition proceedings, the source of the most contested examination objections and the statutory foundation for some of the most significant judicial decisions in Indian trademark law. A thorough understanding of its structure, its requirements and the case law that has shaped its interpretation is indispensable for any practitioner, applicant or examiner working in this field.
The Structure of Section 11
Section 11 is divided into several sub-sections, each addressing a distinct category of relative ground. Section 11(1) and Section 11(2) deal with conflicts arising from earlier trademarks. Section 11(3) extends protection to well-known trademarks beyond the class in which they are registered. Section 11(4) defines what constitutes an earlier trademark for the purposes of the section. Section 11(5) addresses the honest concurrent use exception. Section 11(6) to Section 11(9) set out the criteria for determining whether a trademark is well-known. Section 11(10) imposes a duty on the Registrar to protect well-known trademarks and to reject applications that would conflict with them.
Together, these provisions create a layered framework that begins with straightforward conflicts between similar marks in the same class and extends to the protection of highly reputed marks against exploitation or dilution across entirely unrelated fields of commerce.
Section 11(1) – Likelihood of Confusion with an Earlier Mark
Section 11(1) provides that a trademark shall not be registered if, because it is identical with or similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.
This provision contains several distinct requirements, each of which must be satisfied before a refusal on this ground can be sustained. The marks must be identical or similar. The goods or services must be identical or similar. And there must exist a likelihood of confusion, including the likelihood of association. The structure is conjunctive – a refusal requires all three elements to be established. A mark that is similar to an earlier mark but applied to entirely unrelated goods will not ordinarily fall within Section 11(1), though it may fall within Section 11(2) or Section 11(3) if the earlier mark is sufficiently reputed.
The likelihood of confusion is the central inquiry under Section 11(1) and it is here that the bulk of the jurisprudence is concentrated. The test has been articulated and refined across decades of judicial decisions, producing a body of principles that guides both examination practice and opposition proceedings.
The Supreme Court established the foundational Indian test for deceptive similarity in Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142). The Court held that the question of deceptive similarity must be approached from the perspective of a person of average intelligence and imperfect recollection, not from the perspective of an expert or a person examining the marks side by side with meticulous attention. The average consumer does not carry a mental photograph of a trademark – they carry an impression of it, sometimes vague and sometimes distorted by imperfect memory. The question is whether that impression, when encountered in connection with the later mark, would lead to confusion about the commercial origin of the goods.
This foundational principle – the imperfect recollection standard – has been applied consistently by Indian courts for over six decades and remains the bedrock of the likelihood of confusion inquiry. The Corn Products decision also introduced the practice of considering the dominant feature of a composite mark, holding that where a mark consists of multiple elements, the comparison should focus on the element that dominates the overall impression, while not ignoring the mark as a whole.
The Multi-Factor Analysis – Similarity of Marks
The assessment of similarity under Section 11(1) is conducted on three planes: visual similarity, phonetic similarity and conceptual similarity. No single plane is determinative and the overall impression produced by the marks on the average consumer is the ultimate criterion.
Visual similarity concerns the appearance of the marks as they would be encountered in the marketplace – on labels, packaging, signage and advertising. Marks that share structural features, proportions, colour schemes or graphic elements are visually similar. The degree of visual similarity is assessed holistically, with attention to both the similarities and the differences between the marks.
Phonetic similarity concerns the sound of the marks when spoken aloud. In a market where goods are frequently ordered verbally – over a counter, by telephone or by reference to a brand name in conversation – phonetic similarity is often the most practically significant dimension of the comparison. Marks that sound alike when pronounced, even if they differ in spelling or visual presentation, are phonetically similar.
Conceptual similarity concerns the ideas or impressions that the marks convey. Two marks may differ visually and phonetically while evoking the same idea or image – for example, a mark consisting of the word “LION” and a mark consisting of a lion device may be conceptually similar in a relevant sense. Conceptual similarity is particularly relevant where marks in different languages are compared or where a word mark and a device mark both evoke the same concept.
The Supreme Court addressed the multi-dimensional nature of the similarity analysis in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. ((2001) PTC 300 SC), one of the most frequently cited decisions in Indian trademark law. The Court set out a comprehensive list of factors relevant to the likelihood of confusion inquiry, including the nature of the marks, the degree of similarity between them, the nature of the goods or services, the class of consumers likely to buy the goods, the method of purchase and the evidence of actual confusion if available. The Court placed particular emphasis on the standard of care to be applied – holding that in the case of pharmaceutical products, the standard must be higher than in ordinary consumer goods cases, because the consequences of confusion can be grave for the health of consumers. A consumer who purchases the wrong pharmaceutical product due to trademark confusion may suffer serious harm and the law must account for this by applying a stricter standard of comparison.
Similarity of Goods and Services
The likelihood of confusion analysis under Section 11(1) requires not only that the marks be similar but that the goods or services covered be identical or similar. The assessment of goods and services similarity is conducted by reference to several factors: the nature of the goods or services, their intended purpose, their method of use, whether they are competitive or complementary, their channels of distribution and their typical consumer base.
Goods or services that are sold through the same channels to the same consumers for the same purpose are closely similar. Goods or services that compete directly in the same market are similar. Goods or services that are commonly used together or that are complementary – such as a printer and ink cartridges or a software platform and its technical support services – may also be regarded as similar even if they are technically in different classes.
The Nice Classification provides a useful but not conclusive guide to similarity. The fact that two marks are registered in different Nice classes does not automatically mean that the goods or services are dissimilar for the purposes of Section 11. The Registry and courts look beyond the classification to the actual relationship between the goods or services in the marketplace. Conversely, registration in the same class does not automatically establish similarity of goods – a class may contain goods that are commercially quite distinct from one another.
Section 11(2) – Marks with a Reputation
Section 11(2) extends the scope of relative grounds beyond the standard likelihood of confusion framework. It provides that a trademark shall not be registered if it is identical with or similar to an earlier trademark, is to be registered for goods or services that are not similar to those for which the earlier trademark is protected, but the earlier trademark has a reputation 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 trademark.
This provision addresses the phenomenon known in trademark law as dilution – the erosion of a mark’s distinctive character or the tarnishment of its reputation through use of a similar mark, even in entirely unrelated goods or services. It recognises that a mark with a substantial reputation has a value beyond its function as an identifier in a specific market and that this value deserves protection against exploitation or damage even where there is no likelihood of confusion in the conventional sense.
Section 11(2) thus operates where Section 11(1) would not – in the cross-class context, where the goods or services are dissimilar. The provision requires three additional elements over and above the similarity of marks: the earlier mark must have a reputation in India; the use of the later mark must be without due cause; and that use must either take unfair advantage of the earlier mark’s distinctive character or repute or be detrimental to it.
The Delhi High Court addressed the protection of reputed marks under the dilution framework in Tata Sons Ltd. v. Manoj Dodia & Ors. (CS(OS) 264/2008), where it held that the TATA mark had achieved such a degree of recognition across diverse fields of commerce in India that its use by a third party in any sector – however unrelated to the Tata Group’s own businesses – would constitute an attempt to ride on the goodwill of a mark of extraordinary repute. The court’s reasoning drew on the concept of dilution by blurring – the weakening of the mark’s capacity to serve as a unique identifier – as well as dilution by tarnishment – the association of the mark with inferior goods or services that damage its reputation.
Section 11(3) – Well-Known Trademarks
Section 11(3) provides that a trademark which is identical with or similar to a well-known trademark in India shall not be registered regardless of the goods or services for which the application is made, provided that the registration of the later mark would indicate a connection between those goods or services and the owner of the well-known trademark and the interests of that owner are likely to be damaged by such use.
This provision goes further than Section 11(2) in one critical respect: it does not require that the later mark’s use would take unfair advantage of or be detrimental to the well-known mark. It simply requires that the registration of the later mark would indicate a connection between the goods or services and the owner of the well-known mark and that the owner’s interests would be damaged. This is a broader and more protective standard, reflecting the heightened protection that international trademark norms – including the TRIPS Agreement and the Paris Convention – require for well-known marks.
The concept of a well-known trademark is defined in Section 2(1)(zg) of the Act as a mark that has become so well-known to a substantial segment of the public that the use of that mark in relation to other goods or services would be likely to be taken as indicating a connection with the registered proprietor. Section 11(6) to (9) set out the criteria that the Registrar and courts must take into account in determining whether a trademark is well-known, including the extent of knowledge of the mark among the relevant public, the duration and extent of the mark’s use, the duration and extent of advertising and publicity of the mark, the geographical extent of the trading area in which the mark is used and the evidence of successful enforcement of the mark’s rights.
The Trade Marks Registry maintains a list of marks determined to be well-known and inclusion in that list provides significant evidentiary weight in subsequent proceedings. However, the absence of formal recognition by the Registry does not preclude a court from independently determining that a mark is well-known in the context of opposition or infringement proceedings.
In Rolex Sa v. Alex Jewellery Pvt. Ltd. & Ors. (2009), the Bombay High Court addressed the well-known trademark provisions in the context of a luxury Swiss watch brand, holding that ROLEX had achieved universal recognition of such a degree that its use or imitation in any commercial context would damage the brand’s interests. The court’s analysis of the criteria for well-known status under Section 11(6) to (9) remains a leading authority on how those criteria are to be assessed and weighed.
Section 11(4) – Definition of Earlier Trademark
Section 11(4) defines what constitutes an earlier trademark for the purposes of the relative grounds analysis. An earlier trademark means a registered trademark or an application for registration that, when registered, would be an earlier trademark by virtue of its filing date or convention priority date. It also includes a well-known trademark – whether registered or unregistered – that had become well-known before the application date of the later mark.
The inclusion of unregistered well-known trademarks within the definition of earlier trademarks is significant. It means that an applicant cannot avoid a relative ground refusal simply by observing that the mark relied upon by the opponent or examiner is not on the register. Where a mark has achieved well-known status through use and reputation without registration, it is still capable of supporting a refusal under Section 11(3).
This provision reflects India’s obligations under Article 6bis of the Paris Convention, which requires member states to protect well-known marks against conflicting registrations and use, regardless of whether the well-known mark is registered in the country concerned.
Section 11(5) – Honest Concurrent Use
Section 11(5) creates an exception to the relative grounds refusal where the applicant can establish honest concurrent use or other special circumstances. It provides that nothing in Section 11(1) and (2) shall prevent the registration of a trademark where the proprietor of the earlier trademark or other earlier right consents to the registration or where the applicant can show that there has been honest concurrent use of the trademark applied for or other special circumstances that make it proper for the trademark to be registered.
Honest concurrent use arises where two traders have independently adopted the same or a similar mark, have used it concurrently in the same market over a substantial period without knowledge of each other’s use and where each has thereby established a reputation and goodwill in the mark. In such circumstances, the strict application of the relative grounds would deny registration to an applicant who has acted in good faith and built a legitimate business around the mark. Section 11(5) prevents that outcome by permitting the Registrar to exercise discretion in favour of registration, typically subject to conditions such as geographical limitations on use or disclaimers.
The courts have applied the honest concurrent use doctrine with some caution, recognising that it is an exception to the general rule and should not be applied in a manner that creates or perpetuates market confusion. In Kores (India) Ltd. v. Khoday Eshwarsa & Son (AIR 1985 Bom 95), the court examined the circumstances in which concurrent registration of similar marks could be permitted without detriment to the public, articulating the principle that the concurrent use exception must be applied with care to ensure that the trademark’s origin-indicating function is not compromised.
The Role of Actual Confusion
While the likelihood of confusion test is prospective – it asks whether consumers are likely to be confused, not whether they have actually been confused – evidence of actual confusion is nevertheless highly probative in relative grounds proceedings. Where an opponent or examiner can point to instances of actual confusion – misdirected mail, mistaken orders, consumer complaints attributing one trader’s goods to another – that evidence significantly strengthens the case for refusal. Actual confusion demonstrates that the theoretical likelihood of confusion is not merely theoretical but has manifested in commercial reality.
Conversely, where two marks have coexisted in the same market over a substantial period without evidence of actual confusion, that history of peaceful coexistence is relevant to the assessment. It does not preclude a finding of likelihood of confusion – it is possible for marks to coexist without actual confusion for reasons unrelated to their similarity – but it is a factor the Registrar and courts take into account.
The Consent of the Earlier Proprietor
Section 11(5) also permits registration where the proprietor of the earlier trademark consents to the registration of the later mark. Such consent is typically formalized through a letter of consent or a coexistence agreement, in which the earlier proprietor acknowledges the application and agrees not to oppose or challenge the registration. Coexistence agreements may impose conditions – such as limitations on the goods or services covered, geographical restrictions or undertakings about the form in which the mark is used – and the Registrar will take such conditions into account in determining whether to permit registration.
Consent and coexistence agreements are a pragmatic mechanism for resolving potential conflicts between marks without the expense and uncertainty of contested opposition proceedings. They are particularly useful where two traders have genuinely distinct markets or consumer bases or where the similarity between their marks is superficial rather than substantive.
Bad Faith as a Relative Ground
Although bad faith is not explicitly enumerated as a separate sub-section of Section 11, Section 11(10)(ii) provides that the Registrar shall refuse registration of a trademark if the application is made in bad faith. This provision reflects the principle that the trademark register is a register of honest commercial activity and that applications made with the intent to free-ride on another’s reputation, block a competitor or appropriate a mark that the applicant knows to belong morally or commercially to another are incompatible with the integrity of the register.
Bad faith encompasses a wide range of conduct, including the filing of an application for a mark that the applicant knows to be the trademark of a third party with an established use and reputation, the filing of a mark identical to a foreign well-known mark before that mark’s owner has had the opportunity to enter the Indian market and the filing of multiple applications for identical or similar marks with no genuine intention to use them in trade.
The Delhi High Court addressed bad faith in Marico Limited v. Agro Tech Foods Limited (2010), where it examined a situation in which the defendant had adopted a mark bearing close resemblance to the plaintiff’s established brand and held that such adoption, in the absence of any credible explanation, was indicative of an intention to take advantage of the plaintiff’s goodwill. The court’s reasoning reflects the principle that trademark law protects not merely the technical rights of the registered proprietor but the integrity of the commercial system that trademark registration is designed to support.
Conclusion
Section 11 of the Trade Marks Act, 1999 provides a comprehensive framework for the protection of existing trademark rights against encroachment by later applications. Its structure – moving from likelihood of confusion in the same class, to unfair advantage or detriment in different classes, to the absolute protection of well-known marks regardless of class – reflects a sophisticated understanding of the different ways in which a later mark can harm the owner of an earlier one.
The provision’s enduring importance lies in the recognition that trademark rights are not merely private property rights between traders – they are a guarantee to consumers that the marks they rely upon to identify the origin and quality of goods and services will not be diluted, confused or appropriated by others. Relative grounds refusal is the mechanism through which that guarantee is enforced at the registration stage, before harm to consumers or existing proprietors can occur.
For applicants, Section 11 underscores the necessity of a thorough pre-filing search and a careful assessment of the register before committing to a mark. For practitioners, it demands familiarity with the rich body of judicial decisions that has given the statutory criteria their operational content. And for the trade and the public alike, it represents the law’s commitment to a trademark system in which registered rights mean what they say and the register can be trusted as an accurate reflection of the commercial landscape.
References
- The Trade Marks Act, 1999, Section 11 – https://ipindia.gov.in/trade-mark.htm
- The Trade Marks Rules, 2017 – https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_68_1_Trade_Marks_Rules_2017.pdf
- Manual of Trade Marks Practice and Procedure, Trade Marks Registry – https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_72_1_TM_Manual.pdf
- Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142
- Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) PTC 300 (SC)
- Tata Sons Ltd. v. Manoj Dodia & Ors., CS(OS) 264/2008 (Delhi High Court, 2011)
- Rolex SA v. Alex Jewellery Pvt. Ltd. & Ors., 2009 (41) PTC 284 (Bom)
- Marico Limited v. Agro Tech Foods Limited, 2010 (44) PTC 736 (Del)
- Kores (India) Ltd. v. Khoday Eshwarsa & Son, AIR 1985 Bom 95
- TRIPS Agreement, Article 16 – https://www.wto.org/english/docs_e/legal_e/27-trips.pdf
- Paris Convention, Article 6bis – https://www.wipo.int/treaties/en/ip/paris/
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