law: Trade Marks Act, 1999  
  11. Relative grounds for refusal of
  
  registration.- 
  (1) Save as provided in section 12, trade mark
  
  shall not be registered if, because of- 
  (a) its identity with
  
  an earlier trade mark and similarly 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 of 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 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.
  Explanation.- For the purposes of
  
  this section, earlier trade mark means- 
  (a) a registered trade
  
  mark or convention application referred to in section 154 which has a date of
  
  application earlier than that of the trade mark in question, taking account,
  
  where appropriate, of the priorities claimed in respect of the trade marks.
  (b) a trade mark
  
  which, on the date of the application for registration of the trade mark in
  
  question, or where appropriate, of the priority claimed in respect of the
  
  application, was entitled to protection as a well-known trade mark.
  (5) A trade mark shall not be refused
  
  registration on the grounds specified in sub-section (2) and (3), unless
  
  objection on any one or more of those grounds is raised in opposition
  
  proceedings by the proprietor of the earlier trade mark.
  (6) The Registrar shall, while determining
  
  whether a trade mark is a well-known trade mark, take into account any fact
  
  which he considers 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 gods
  
  or services to which the trade mark applies.
  (iv) the duration and
  
  geographical area of any registration of or any publication 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 recognized as a well-known trade mark
  
  by any court on Registrar under that record.
  (7) The Registrar shall, while determining as
  
  to whether a trade mark is known or recognized in a relevant section of the
  
  public for the purposes of sub-section (6), take into account.
  (i) the number of
  
  actual or potential consumers of the goods or services.
  (ii) the number of
  
  persons involved in the channels of distribution of the goods or services.
  (iii) the business
  
  circles dealing with the goods or services.
  To which that trade mark applies.
  (8) Where a trade mark has been determined to
  
  be well-known in at least one relevant section of the public in India by any
  
  court or Registrar, the Registrar shall consider that trade mark as a
  
  well-known trade mark for registration under this Act.
  (9) The Registrar shall not require as a
  
  condition, for determining whether a trade mark is a well-known trade mark, the
  
  any of the following, namely:- 
  (i) that the trade
  
  mark has been used in India,
  (ii) that the trade
  
  mark has been registered.
  (iii) that the
  
  application for registration of the trade mark has been filed in India.
  (IV) that the trade
  
  mark –
  (a) is well known in ;
  
  or
  (b) has been
  
  registered in; or
  (c) in respect of
  
  which an application for registration has been filed in, any jurisdiction other
  
  than India; or
  (v) that the trade
  
  mark is well known to the public at large in India.
  (10) While considering an application for
  
  registration of a trade mark and opposition filed in respect thereof, the
  
  Registrar shall—
  (i) protect a well
  
  known trade mark against the identical or similar trade marks ;
  (ii) take into
  
  consideration the bad faith involved either of the applicant or the opponent
  
  affecting the right relating to the trade mark.
  (11) Where a trade mark has been registered in
  
  good faith disclosing the material information’s to the Registrar of where
  
  right to a trade mark has been acquired through use in good faith before the
  
  commencement of this Act, then, nothing in this Act shall prejudice the
  
  validity of the registration of the trade mark or right to use that trade mark
  
  on the ground that such trade mark is identical with or similar to a well known
  
  trade mark.