Can i Trademark Combinations of Two Words if Both the Two Words are Separately Registered by Someone else?
Can you trademark two words together?
A trademark protects not only the specific mark that is used in commerce but also marks that are deceptively similar to the used mark. No, unless you use both differences of the symbol in commerce. A trademark encompasses not only the specific mark being used in trade and commerce but also marks that are identical or similar to the used mark.
For example, if a person wishes to trademark XYZ123 but XYZ and 123 are two separate companies that have their trademark registered. The authorities will decide how similar XYZ123 is to XYZ and how similar XYZ123 is to 123 and then decide on giving a trademark. This can reduce confusion amongst people and hence the decision is made from a case to a case.
The resemblance between arbitrary or meaningless parts of the marks is weighted more heavily than resemblances between elements that simply describe the goods or services. Resemblances among elements at the start of the mark are more important than resemblances between elements at the end of the mark. Resemblances between elements at the start of the mark are more important than resemblances between parts at the end of the mark.
There is a 2020 judgement sky enterprise Private Limited versus Abaad masala and company, where the defendant restrained from using the words white Chinese pepper masala and black Chinese pepper masala because both the names were trademarked by the plaintive. The court held that as it is already a registered trademark it cannot be used by the defendant because it describes the quality of the product and might create confusion. The court also held that the defendant can use pepper masala or black masala or Chinese masala and not white Chinese paper masala or black Chinese paper masala. The court passed orders for an interim injunction restraining the use and also observed that due to the long use of the plaintiff’s company the products have got massive recognition. This judgement focuses on the concept of combining descriptive words into a new trademark
Can two similar names be trademarked?
The only way to register a similar or identical trademark is to use the defence system of honest concurrent use, which is provided for in Section 12 of the Act. In this case, the law gives the Registrar decision-making authority. As a result, the Registrar has sole discretion over the grant of honest concurrent use.
In India, the law for honest concurrent use had first been established in the 1958 case of Kores(India) Ltd. v. M/s Eshwarsa and Sons.
In this case, 5 factors were established to use the defence of honest and concurrent use.
- The extent of use in terms of quantity, area, and period.
- The amount of inconvenience caused to either party if the concurrent use is permitted.
- The level of confusion generated, and inconvenience that may be caused to the public.
- Honesty element
- Evidence of confusion
Can a similar trademark be registered?
If two companies have a similar name but the scope of their business is different and they fall under different industries, falling under the ambits of different markets then there is no scope of confusion and granting a trademark is valid. But in case there are two trademarks registered under the same classification of businesses, it might create confusion amongst people and the trademark could not be granted. In this situation, only one company will get a trademark registered and it would be necessary to figure out which company had registered for the trademark first. Delta Airlines and Delta Faucet, Is one of the most prominent examples where the company names are the same but one deals in airlines and the other deals in the faucet. This creates no confusion because the industry is different and the use of the products by those companies is different.
Can I use one trademark for multiple products?
To protect trademarks in multiple categories of goods or services, a company does not need to file separate trademark applications. It is possible to file a single classification trademark application to have the trademark registered in distinct classes of products and services
Can you register multiple trademarks?
Only one mark can be registered in one application, in case you are willing to register more than one trademark then you need to make more applications. You cannot register multiple trademarks in a single application. One can also go for a multi-class application, where an applicant can apply for a particular trademark in more than one class. A multi-class trademark application is used to register a provider mark or a trademark in two or more products categories. It is a trademark application in which the application authenticates the trademark protection application to have its trademark recorded in more than one product category.
