Trademark Refusal in India

Absolute Grounds For Refusal Of Registration

Section 9 of the Act lays down scenarios in which the trademark will not be registered as below:

• Marks which are devoid of any distinctive character. Such marks are not capable of distinguishing the goods or services of one person from those of another.
• Marks which which serve in trade to define the kind, quality, quantity, intended purpose, values or geographical origin of goods or services rendered.
• Marks which have become customary in the current language or the established practices of the trade.
• Marks which deceives or cause confusion to the public.
• Marks which are likely to hurt the religious sentiments of any class or sections of citizens of India.
• Marks which contain scandalous or obscene matter.
• If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
• Marks which consist of the shape of goods which result from the nature of goods themselves.
• Marks which consist of the shape of goods which is necessary to obtain a technical result.
• Marks which consist of the shape which gives substantial value to the goods.

Exception: The trademark shall not be refused registration if the mark has acquired a distinctive character as a result of prolonged use or is a well-known trademark before the date of application for registration.

Relative Grounds For Refusal Of Registration

Section 11 of the Act provides relative grounds for refusal of registration. This section provides exceptions to the grounds of refusal. If the exceptions are complied with, then the trademarks under section 11 can be registered.
Section 11(1) states the following grounds for refusal –

• Trademarks which are identical with similar goods or services.
• Trademarks which are similar of earlier trademarks with identical goods or services.

Exception: If there is an honest concurrent use of the trademark, the Registrar of Trademarks may allow the registration.

Section 11(2) states the following grounds for refusal –

• Trademarks is identical with or similar to an earlier trade mark; and with different goods and services but
• Which would be likely to take unfair advantage of the well known similar or identical earlier trademark in India.

Section 11(3) states the following grounds for refusal –

• The usage of the trademark is prevented by the law of passing off protecting an unregistered trademark used in the course of trade.
• The usage of the trademark is prevented by virtue of law of copyright.

Section 11(4) provides an exception that the trademarks shall not be refused registration if the the proprietor of the earlier trade mark or other earlier right consents to the registration or unless an objection is raised in opposition proceedings by the proprietor of the earlier trademark.