Yes, a society registered under trademarks can file a suit against a company
using a similar name, especially if the company's name is likely to cause
confusion with the society's registered trademark, and the goods or services are
similar or related.
Here's a more detailed explanation:
Trademark Infringement:
Under the Indian Trade Marks Act, 1999, a registered trademark owner has
exclusive rights to use that trademark, and others cannot use a similar or
identical mark in relation to similar goods or services without authorization.
Likelihood of Confusion:
The key factor in a trademark infringement case is whether the use of the similar
name is likely to confuse consumers, leading them to believe that the company's
goods or services are associated with the society's registered trademark.
Similarity of Goods/Services:
The closer the goods or services offered by the company are to those of the
society, the stronger the case for trademark infringement.
Suit for Infringement:
If a society believes that a company is infringing its registered trademark, it can
file a suit in court seeking an injunction to prevent the company from using the
infringing name and potentially damages for the infringement.
Section 29 of the Trade Marks Act:
Section 29 of the Act specifically addresses infringement, stating that a person
infringes a registered trademark if they use it as their trade name or part of their
trade name, or use it as the name of their business concern or part of the name,
of their business concern dealing in products or services in respect of which the
trade mark is registered.
Section 11 of the Trade Marks Act:
Section 11 deals with the registration of similar or identical trademarks,
disallowing registration if there is a likelihood of confusion or association with an
earlier trademark.
Passing Off:
Even if a trademark is not registered, a society can still take action under the law
of "passing off" if a company's use of a similar name is likely to mislead the
public into believing that their goods or services are connected with the society's
unregistered trademark.
Honest Concurrent Use:
The only way a similar or identical trademark can be registered is by using the
defence of honest concurrent use, provided under Section 12 of the Act.
As a result, the legal definition of the mark as provided in Section 2(1)(m) of the
Act is critical, which states that a mark comprises a device, brand, heading,
label, ticket, name, signature, word, letter, numerical, form of products,
packaging, or combinations of colours or any combination thereof.30 Nov 2022
Section 29(4) in The Trade Marks Act, 1999
(4)A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade,
a mark which—(a)is identical with or similar to the registered trade mark;
and(b)is used in relation to goods or services which are not similar to those for
which the trade mark is registered; and(c)the registered trade mark has a
reputation in India and the use of the mark without due cause takes unfair
advantage of or is detrimental to, the distinctive character or repute of the
registered trade mark.
Section 20 in The Companies Act, 1956
20. Companies not to be registere
Yes, a court can cancel a company name if it's identical to or
deceptively similar to a registered trademark, especially if the
company's activities are likely to cause confusion or deception, as
outlined in the Trademarks Act, 1999. d with undesirable names .-
(1)No company shall be registered by a name which, in the opinion of the Central
Government, is undesirable.(2)[ Without prejudice to the generality of the
foregoing power, a name which is identical with, or too nearly resembles,-(i)the
name by which a company in existence has been previously registered, or(ii)a
registered trade mark, or a trade mark which is subject of an application for
registration, of any other person under the Trade Marks Act, 1999, may be
deemed to be undesirable by the Central Government within the meaning of sub-
section (1).(3)The Central Government may, before deeming a name as
undesirable under clause (ii) of sub-section (2), consult the Registrar of Trade
Marks.] Section 20 in The Companies Act, 1956
20. Companies not to be registered with undesirable names .-
(1)No company shall be registered by a name which, in the opinion of the Central
Government, is undesirable.(2)[ Without prejudice to the generality of the
foregoing power, a name which is identical with, or too nearly resembles,-(i)the
name by which a company in existence has been previously registered, or(ii)a
registered trade mark, or a trade mark which is subject of an application for
registration, of any other person under the Trade Marks Act, 1999, may be
deemed to be undesirable by the Central Government within the meaning of sub-
section (1).(3)The Central Government may, before deeming a name as
undesirable under clause (ii) of sub-section (2), consult the Registrar of Trade
Marks.]
Yes, a court can cancel a company name if it's identical to or deceptively similar
to a registered trademark, especially if the company's activities are likely to
cause confusion or deception, as outlined in the Trademarks Act, 1999.
Section 2(1)(h) of the Trade Marks Act, 1999 defines the word “deceptively
similar” as “A mark shall be deemed to be deceptively similar to another mark if
it so nearly resembles that other mark as to be likely to deceive or cause
confusion”. It implies that two enterprises may be labeled as deceptively similar
if the company's mark is so close to an already established trademark that
utilizing it will lead customers to inaccurately identify the two companies.
tandards For Determination Of Deceptive Similarity
The criteria for detecting deceptive similarity were established long ago by the
Hon'ble Supreme Court in the matter of Cadila Healthcare Ltd v. Cadila
Pharmaceutical Ltd. in 2001. The court established specific guidelines for this
particular scenario. It ruled that the following factors should be taken into
account in determining whether a mark is deceptive: a) the nature of the
products or services the mark relates to; b) the degree of resemblance between
the two marks, and c) The type of mark—whether it be a word, symbol, or
phrase, and the target audience that the company offers are also significant
factors.
