Trademarks are marks used to identify goods or services manufactured by a particular company or individual. They are as unique as the Adidas three-line pyramids or the Nike brand. These marks help the consumer to identify the product and the manufacturer easily. To ensure that these signs are not used to misrepresent products or confuse consumers, they are protected by law. For legal protection, a trademark needs to be registered. Trademark registration will protect the marker from illegal use and will give the trademark owner all the rights over the mark.
Let’s discuss Section 9 in the Trade Marks Act, 1999: which talks about the Absolute grounds for refusal of registration.
(1) Trademarks:
(a) which do not have distinctive features, that is, which cannot distinguish the goods or services of one person from another;
(b) which specifically includes marks or indicators that may be applicable to the trade to indicate the nature, quality, value, purpose, price, place of origin or period of production of goods or service or other features of the goods or service;
(c) which only includes marks or indicators that have become the norm in the current language or by valid and established trade practices, may not be registered: Provided that a trademark may not be refused registration if before the date of application for registration has received a different letter due to its use or known trademark.
(2) A mark may not be registered as a trademark if:
(a) is a form of public deception or confusion;
(b) contains or incorporates any matter which may prejudice the religious affiliation of any class or class of citizens of India;
(c) covers or contains offensive or obscene material;
(d) its use is prohibited under the Emblems and Names (Prevention of Misuse) Act, 1950 (12 of 1950).
(3) A mark may not be registered as a trademark if it contains only:
(a) the condition of the assets, which is a natural consequence of the assets themselves; or
(b) the structure of the material required to obtain the technical result; or
(c) a condition that provides high value for goods.
Definition: For the purposes of this section, the nature of the goods or services in respect of a trademark used or proposed to be used may not be a reason for refusing registration.
Section 11 in the Trade Marks Act, 1999: talks about the Relative grounds for refusal of registration.
(1) A trademark may not be registered if, by reason of:
(a) its ownership with a previous trademark and similarity of goods or services covered by a trademark; or
(b) its similarity to the previous trademark and ownership or similarity of the goods or services covered by the trademark, there is a possibility of public confusion, including the possibility of being associated with the trademark.
(2) Trademark:
(a) resembles or resembles a previous trademark; and
(b) must be registered for goods or services other than the previous trademark registered in the name of the separate owner, may not be registered, if or to what extent, the trademark is a trademark. A well-known trademark in India and the use of the latest trademark for no apparent reason may inadvertently benefit or harm the unique brand or reputation of the trademark.
(3) A trademark may not be registered if, or to the extent that its use in India is prohibited:
(a) as a result of any law, in particular, the law of transfer to protect the unregistered trademark used during a trade; or
(b) Due to copyright law.
(4) Nothing in this section shall preclude the registration of a trademark in which the holder of a former trademark or other right prepares the registration,
and in which case, the Registrar may register the mark under special circumstances under Section 12.
(a) a registered trademark or meeting request referred to in Section 154 with an application date before that trademark in question, taking into account, where applicable, the essentials required for trademarks;
(b) a trademark which, on the date of application for registration of the trademark in question, or where applicable, of the required value in respect of
the application had the right to be protected as a known trademark.
(5) A trademark may not be refused registration on the grounds set out in Subsections (2) and (3) unless the objection to any reason or more of those reasons is raised by the owner of the previous mark in the disputed decisions.
(6) The Registrar must, in determining whether a trademark is a recognised trademark, take into account any facts he deems necessary in determining the trademark as a recognised trademark, including –
(i) the knowledge or recognition of such trademark in the appropriate public body, including Indian information obtained as a result of the promotion of the
trademark;
(ii) the length, breadth, and location of any use of such trademark;
(iii) the length, width, and location of any trademark promotion, including advertising or public display and presentation, exhibition, or exhibition of goods
or services in which the trademark operates;
(iv) the length and location of any registration of any application for registration of such mark under this Act in a manner that indicates the use or recognition of the trademark;
(v) a record of the successful enforcement of rights in that trademark; in particular, the extent to which a trademark has been recognized as a trademark
known by any court or Registrar under that record.
(7) The Registrar must, in determining whether a trademark is known or recognised in the appropriate public body for the purposes of Subsection (6),
consider:
(i) the number of genuine buyers or potential buyers of goods or services;
(ii) the number of persons involved in distribution stations or services;
(iii) business circles relating to goods or services in which the trademark operates.
(8) Where a trademark is determined to be known in at least one relevant public sector in India by any court or Registrar, the Registrar shall regard such a trademark as a recognised trademark of registration. Could you do it?
(9) The Registrar shall not require such condition to determine that a trademark is a recognised trademark, in any of the following, namely:
(i) that the trademark be used in India;
(ii) that the trademark is registered;
(iii) that an application for the registration of a trademark be submitted to India;
(iv) that trademark:
(a) is well known; or
(b) is registered with; or
(c) where an application for registration has been lodged, in any place other than India; or
(v) that the trademark is widely known to the general public in India.
(10) In considering an application for the registration of a trademark and the objections thereof, the Registrar must:
(i) to protect a known trademark of the same or similar trademarks;
(ii) consider the serious misconduct involved by another applicant or opponent affecting a trademark-related right.
(11) Where a trademark is registered in good faith discloses essential information to the Registrar or where a trademark right is acquired in good faith before the commencement of this Act, nothing in this Act shall interfere with it. The validity of the trademark registration or the right to use the trademark because the trademark is the same or similar to a known trademark.
The first stage objections that generally received in the trademark examination report:
The objection is one of the first stages of the registration process. The examiner/registrar may lodge an objection under Sections 9 (Complete Reasons for Refusal) and Section 11 (Related Reasons for Refusal) of the Act on two grounds:
- If the application contains incomplete/incorrect information; or
- If there is already a similar trademark available;
- A third party may object to the registration of the trademark instead of to the public interest. There are two ways in which a third party gets a chance to challenge a trademark registration.
- If the mark is published in the Trademark Journal or,
- If the applicant uses the mark prior to its registration. In this case, the status of the application will be changed to advertise before acceptance.
How to respond to an objection?
Once an objection is raised by the Registrar, the applicant will be given reasonable notice of the objection and reasons for the objection. The Applicant’s foremost thing is to put a reply before the Register. This must be done within one month from the date of receipt of the examination report. Failure to lodge an objection within one month will change the status of the application to Abandoned.
While responding to the raised objection in the examination the Applicant needs to stabilise the distinctive with respect to the applied mark for the good and services. Further, the mark should be inherently capable of distinguishing the goods/services from other similar goods/services in the market.
The mark that the Applicant has applied should restrict by non claiming of the exclusive rights in the specific terms mentioned in the applied mark for the registration.
Moreover, the mark should be considered to be deceptively similar with a rival mark when it causes confusion in the mind of an average consumer as to the ownership of two marks Moreover, it should be be noted that the confusion must be probable and not merely possible. To analyse whether the mark is deceptively similar, the mark is to be taken as a whole with its structural, visual, conceptual and phonetic similarities with the rival marks to see what may cause confusion in the minds of people with average intelligence and imperfect recollection.
Case laws:
Sun Pharma Laboratories Ltd. vs. Lupin Ltd. and Ors. ((2018) 74 PTC 103)
The Hon’ble High Court of Delhi in the present case noted that: “while comparing the trademarks, the trademarks have to be taken as a whole.”
Prem N. Mayor and Ors. v. Registrar of Trade Marks & Ors., AIR 1969 Cal 80
The Hon’ble court observed that “…distinctiveness primarily being a matter of fact, evidence can be given regarding distinctiveness in fact. There are no narrow or rigid rules about distinctiveness. Such distinctiveness may either be in individual features or general arrangement. A mark should therefore be considered as a whole on its total impression and as a general rule, attempts to dissect a mark in order to destroy distinctiveness have been disapproved…”.
Corn Products Refining Company vs. Shangrila Food Products Limited, AIR 1960 SC 14
The Supreme Court ruled that “It is well recognized that in deciding a question of similarity between two marks, the marks have to be considered as a whole”.
Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited, 2001 PTC 541 (SC)
The Hon’ble court said that “…It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole”.
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.
