The word similar is not defined in the Act. However, a trade mark is said to be deceptively similar to another if it so nearly resembles that other mark as to be likely to deceive or cause confusion.
The deceptively similar mark includes not only confusion but deception also. Near resemblance is mentioned in the Act in connection with registered trade mark in the name of the same proprietor which may closely resemble each other, so as to deceive or cause confusion in the mind of a user.
Image Source: legalzon.in
ADVERTISEMENTS:
The Registrar may require them to be registered as associated trade mark. The following factors are to be taken into consideration when deciding the question of similarity:
(I) The nature of the marks;-
(II) The degree of resemblance;
(III) The nature of goods in which they are likely to be used as trade mark;
ADVERTISEMENTS:
(IV) The similarity in nature, character and nature of goods in which it is used;
(V) The nature of the potential class of consumers; and
(VI) The visual and phonetic similarity.
Exploiting Trade Marks – The Owner of a Trade mark can exploit his mark to his best advantage by either assigning or transmitting or by Licensing.
ADVERTISEMENTS:
The registered trade mark is assignable and transmissible, in respect of either some or all the goods or services for which the trade mark is registered. The assignment or transmission of a trade mark must be in writing.
Transmission means transfer by operation of law, devolution to the representative of a deceased person and any other mode of transfer other than assignment.
If assignment or transmission of a trade mark would create multiple exclusive rights in more than one person, which might deceive or cause confusion, restrictions could be imposed on such assignment or transmission.
The confusion or deception could be in relation to same goods or services, same description of goods or services goods or services, or description of goods or services which are associated with each other.
The proprietor of a trade mark can assign or license it to a third party for use. The third party can be either a registered user or an unregistered user.
If someone wants to be a registered user of a trade mark, he has to make an application in a prescribed manner jointly with the proprietor of the trade mark, to the registrar, enclosing a copy of the agreement between them stating the trade mark and the specific uses to be covered by the user, the degree of control to be exercised by the proprietor, and whether there would be any more registered users permitted by the proprietor.
For an unregistered user, permitted by the proprietor, the use of trade mark shall be deemed to have been made by the proprietor and not by the person permitted by the proprietor.
The right to the use of the mark is not assignable and transmissible. Subject to any agreement between the parties, a registered user may sue for infringement as if he were the proprietor of the trade mark and make the registered proprietor a defendant in the case.