Grounds for Refusal to Register a Trademark | Explained

This article aims at explaining the grounds for the refusal to register a trademark. Broadly these grounds are divided into Absolute grounds and Relative Grounds. The Absolute grounds for refusal of registration are governed by Section 9 of the Trademarks Act, 1999 which are objective.

On the other hand, the Relative grounds are specified under Section 11 of the Act[1], objections regarding which would be subject to the satisfaction of the Registrar of Trade Marks. Primarily this article would give a clear view to the readers on the possible complications under Sections 9 and 11, which are discussed in detail with landmark judicial pronouncements for a better understanding of the readers.

Grounds for Refusal to Register a Trademark

A mark that is capable of being graphically represented in such a way that it is capable of distinguishing the goods and services of one person from another is called a trademark.

A mark to be registered as a trademark has to satisfy three requirements as under the Trade Marks Act, 1999 which include:

1. It should be a mark
2. It should be capable of being represented graphically
3. It should be capable of distinguishing the goods or services of one person from those of others.

Yet another important requirement is that the mark should not come under any of the grounds for which the registration can be refused. Section 9 and 11 of the Act provide for the absolute and relative grounds on which the registration of a trademark can be refused. These grounds for refusal of registration shall be discussed in detail as part of a series on the grounds of refusal of registration of a trademark.

I. According to section 9(1), the following trademarks cannot be registered:

a) Trademarks that are not capable of distinguishing the goods or services of one person from that of another person.

The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks[2] – The Imperial Tobacco Company is a famous company that manufactures and distributes cigarettes with a label “SIMLA” throughout the country. In the year 1960 and in 1966, ITC Ltd. made an application to the Registrar for the registration of the above-mentioned trademark in his register in respect of Part A and Part B in the respective years.

However, the Registrar refused the application for the registration both times against which an appeal was preferred to the Calcutta High Court. The Calcutta High Court dismissed the appeal on the ground that the word “SIMLA” is a famous geographical place that cannot be registered as a trademark.

An application for registration of the trademark “Aggarwal Sweet Corner” was allowed registration in respect of sweets and namkeen, on the basis of the user, and therefore, opposition appeal was dismissed by the Intellectual Property Appellate Board in Aggarwal Sweet Palace vs. Asst. Registrar.[3]

In American Online Inc.’s Application, the applicant sought to register the word “YOU’VE GOT MAIL” as a trademark in various classes. The examiner refused the application finding the trademark was not distinctive. In the appeal, the Board of Appeal held that the trademark composed of common words to inform email users of the ordinary fact they have received a new mail and that the phrase must remain free from the individual monopoly rights.

b) A trademark which consists only of such marks or of such indications which may function in trade to specify the kind, quality, quantity, geographical origin, or time of production of goods or services or other characteristics of goods or services.

This clause prohibits the registration of marks that are descriptive and identify the characteristics of the product or service to which the mark pertains. A mark is descriptive if it provides or gives the information directly.

In M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks[4], it has been held by the court that the mark “RASOI” for edible oils cannot be registered as a trademark because such mark indicates the nature of the product.

In Central Camera Company Private Ltd v. Registrar of Trade Mark[5], the court held that the word “solar” undoubtedly refers to the sun and understood to be produced by or coming from the sun as solar energy.

It is common knowledge that the photographic work can be done in artificial light. In present, the goods involved were studio lights, photographic apparatus, projectors, etc. It was held that these goods have a direct reference to the character or quality of the goods.

c) A trademark that consists only of such marks or indication which have become customary in the current language or in bona fide and established practice of the trade. The word which has become publici Juris or general cannot be registered as they belong to the public at large. It has been held by the Division Bench of Delhi High Court that nobody can claim exclusive rights over the use of any word, abbreviation, or acronym which has become publici Juris.

German word “auto” is not registered for motor cars or their parts and fittings or anything related to such kind of services. Thus, where it has been found that a large number of people have been using the same mark in the relevant trade, then such a mark cannot be registered in the name of any one specific person.

In SBL Ltd v. Himalayan Drug Company[6], the Appellant filed a suit against the Respondent for infringement of trademark Liv.52 by use of the trademark Liv-T, which was dismissed on the ground that the mark ‘LIV’ is publici Juris and that ‘Liv’ will be considered as the generic on account of the fact that it is used in respect of medicine used for the treatment of ailment of ‘LIVER’ and non-distinctive part of the mark. The Division Bench of Delhi High Court held that nobody can claim exclusive rights over the use of any word, abbreviation, or acronym which has become publici Juris.

This section is not only applied to words but also to the colour combinations. Delhi High Court held that the colour red is a basic colour, red and white combination was held to be common to the toothpaste trade in the domestic and as well as international market and could not be monopolized by any party.

The provision attached to subsection (1) provides that a trademark shall be registered if, before the date of application for registration, such a trademark has acquired a distinctive character by its usage or it is a well-known trademark.

In Shalimar Chemical Works v. Deputy Registrar[7] the trademark “CHEF” of the appellant which has been used in respect of various goods particularly species, edible oil, edible products had acquired special distinctiveness merely by the way of widespread sale and promotional activity.

II. According to section 9(2) following trademark shall not be registered:

a) If such a trademark is likely to deceive the public or can even cause confusion.

In the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd[8], the plaintiff had stamped upon their goods the words ‘tanned leather cloth’ whereas only about one-third of their whole produce was in tanned cloth. It was held by the House of Lords that the plaintiffs were disentitled for relief as they were misrepresenting the nature of the goods.

b) If such a trademark is hurting the religious sentiment of any class or section of Indian citizens. It is not difficult to find the name of any god or goddess or any religious head as a trademark in India.

The use of names or devices of deities on footwear will be considered disrespectful. Likewise, the use of Hindu gods in respect of beef or meat products or the use of Muslim saints for pork products would be offending the religious sentiments of respective sections of the public.

In Amritpal Singh v. Lal Babu Priyadarshi[9], the word RAMAYAN was refused registration on the grounds that:

Firstly, it was not capable of distinguishing the goods of the applicant and

Secondly, that it was likely to hurt religious sentiments of a class of society.

c) If such a trademark contains any kind of scandalous or obscene matters.

A mark that is contrary to morality or is considered obscene must not be registered and the onus will fall on the applicant to prove it so by the evidence to overcome the objection.

In Ghazillian’s Trade Mark Application, the trademark in question consisted of two words “Tiny Penis” in class 25 in respect of clothing, footwear, and headgear. The Registrar refused the registration on the ground that the mark was contrary to the accepted principles of morality. The appellate authority while dismissing the appeal, concluded that this trademark would cause greater offense than mere distaste to a significant section of the public. The offence resides in the fact that an accepted social and family value is likely to be significantly undermined.

d) If the use of such trademark is prohibited under the Emblem & Names (Prevention of Improper use) Act, 1950

Emblem and Names (Prevention of Improper) Act, 1950, prohibits the improper use of certain emblems and names for professional and commercial purposes. Section 4(b) of the act prohibits the registrar from registering a trademark or a design that holds any emblem or name and use of it shall be in contravention of section 3 of the Act.

Mahatma Gandhi, Pandit Nehru, National Flag, etc. cannot be used as a Trademark.

III. According to section 9(3), a mark shall not be registered if it consists exclusively of:

a) The shape of the product that results from the nature of the goods themselves.

the shape of an egg tray, whose purpose is to hold eggs, would fall within the context of section 9(3) (a) and would not be considered as capable to distinguish from others.

b) The shape of the product that, is necessary to obtain a technical result.

the shape of a square pinned plug, if the pins are not square they will not fit into the standard socket therefore it is mandatory to achieve that standard shape which is a technical result. Hence shall not be registrable under section 9(3) (b).

c) The shape of the product which adds substantial value to the goods.

shapes that are more effective than other alternatives for performing a particular task add substantial value to the goods are not registrable.

IV. Relative grounds for refusal of registration governed by Section 11 of the Trademarks Act.

1. A trademark shall not be registered, if it’s identical with an earlier trademark and also if goods or services covered by the trademark are similar, or similar to an earlier trademark and is identical or similar to the goods or services covered by the trademark, resulting in confusion to the public in relating the trademark or the goods or services to the earlier trademark.

2. A trademark which is identical or similar to an earlier trademark and is to be registered for goods or services which are not similar to those registered in the name of a different owner shall not be listed.
3. A trademark shall not be registered if or to the extent that its use in India is liable to be prevented by virtue of any law, in particular the law of passing off protecting an unregistered trademark used in the course of trade or by the virtue of the law of copyrights.

Conclusion

To conclude, it is important to inspect the trademarks for the presence of any prohibition that is specified under Section 9 and Section 11 of the Trademarks Act,1999 to avoid complications at the time of registration.

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[1] Section 11 of The Trademark Act, 1999 (“Act”) contains a general rule of the law of registration of Trademark i.e. a Trademark cannot be permitted to be registered if it is either identical or similar to an earlier Trademark and due to such identity or similarity is likely to cause confusion in the minds of the general public as to its association in some way or the other with the earlier Trademark.

[2] Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks, AIR 1977 Cal 413

[3] Aggarwal Sweet Palace v. Asst. Registrar, 2005(30) PTC 336 (IPAB)

[4] Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks, AIR 1955 Cal 519

[5] IPLR Volume 5 1980 page 1

[6] AIR 1998 Delhi 126

[7] MANU/IC/0047/2009

[8] (1865) 11 HL Cas 523

[9] 2005 (30) PTC 94 IPAB

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