Trademark registration gives exclusive rights to your brand or logo. To start, one needs to file an application with the Indian Trade Marks Registry. The Registry will review your application and send you an examination report. A reply is filed to the examination report within 30 days. The registry will either accept or refuse your application. The refusal of a trademark application can occur based on two key categories: absolute grounds, under section 9 of Trade Marks Act, 1999 and relative grounds, under section 11 of Trade Marks Act 1999.
Absolute Grounds [Sec.9 of Act]
a. Lack of Distinctiveness [Sec.9 (1) of the Act]:
Distinctiveness means ability of your trademark to identify and distinguish the goods or services from those of others. Like, give it a thought, what makes Cadbury apart from Kitkat? a. Cadbury uses a rich purple, while KitKat features a vibrant red and white, b. Brand Name and Logo, c. Cadbury bars are often rectangular; KitKat has its iconic four-finger design and etc. Thus, if the trademark doesn’t help distinguish one person’s goods or services from another’s in a market place, it can’t be registered.
Also, trademarks should not describe the goods or services—like their kind, quality, quantity, or other characteristics. This includes marks that tell consumers what the product is or its attributes. For example, a generic trademark like “Apple” for fruit wouldn’t qualify, but “Apple” for electronics would.
Moreover, terms that have become common in everyday language or trade practices can’t be registered either under Trade Marks Act. This prevents companies from monopolizing terms that everyone in the industry uses. However sometimes there is an exception too. Xerox has achieved significant distinctiveness in the market, becoming synonymous with photocopying to the extent that its name is often used as a verb for the act itself.
Also watch : Absolute grounds for refusal of a trademark (Section 9 Trademarks)
b. Public Confusion and Offense [Sec.9 (2) of the Act]:
Trademark registration is governed by specific criteria designed to protect consumers and uphold societal values.
| Criteria | Description | Example |
| Deceptive Marks | Marks that mislead the public cannot be registered. | Using “Coca-Cola” for an unrelated beverage. |
| Offensive Marks | Trademarks that offend religious sentiments are prohibited. | “Shiva Shoes,” which may disrespect Hindu beliefs. |
| Scandalous or Obscene Marks | Marks considered vulgar or obscene are ineligible for registration. | “Foul Mouth Hot Sauce,” due to its offensive language. |
| Violation of Emblems and Names Act | Marks that misuse protected symbols or names are barred from registration if they imply government endorsement. | Using the Indian national flag or “Bharat” misleadingly. |
These criteria collectively ensure that trademarks respect cultural sensitivities and maintain clarity in the marketplace, preventing consumer confusion and promoting ethical branding practices.
c. Shape and Function Issues [Sec.9 (3) of the Act]:
| Criteria | Description | Example |
| Shape from Nature of Goods | Marks consisting solely of shapes essential to the product’s existence cannot be registered. | A bottle shape that is standard for all beverages. |
| Technical Result | Marks whose shapes are necessary for achieving a technical result are ineligible for registration. | A design that improves vehicle aerodynamics. |
| Substantial Value | Marks whose shapes give substantial value to goods cannot be monopolized through trademark. | A luxury car’s unique body shape enhancing desirability. |
| Proviso on Nature of Goods | The nature of goods or services does not automatically disqualify a mark from registration. | A distinctive logo for a beverage brand is still eligible despite being related to drinks. |
Relative Grounds [Sec.11 of Act]
The relative grounds for refusal under Section 11 of the Act is based on the similarity between the applicant’s trademark and already applied or registered trademarks.
- Identity and Similarity: A trademark cannot be registered if it is identical or very similar to an existing trademark that covers similar goods or services. This is to avoid confusing consumers about the source of the products.
- Well-Known Trademarks: If a trademark is similar to a well-known trademark, it may be refused registration even if it’s for different goods or services. This is to prevent taking unfair advantage of the reputation of the well-known mark.
- Legal Restrictions: Registration can be denied if using the trademark would violate existing laws, such as those against passing off or copyright infringement.
- Consent for Registration: If the owner of an earlier trademark agrees, then a new trademark can be registered even if it’s similar.
- Opposition Proceedings: A trademark cannot be refused on certain grounds unless the owner of the earlier trademark formally objects during opposition proceedings.
- Determining Well-Known Status: The Registrar looks at factors like public recognition and how long the trademark has been used to determine if it is well-known.
- Recognition in Relevant Public: Factors such as the number of consumers aware of the mark and its distribution channels are considered to assess its recognition.
- Status Confirmation: If a court or Registrar has already recognized a trademark as well-known, it will maintain that status for registration purposes.
- Conditions for Well-Known Status: There are no specific conditions required for a trademark to be considered well-known based on its use in India or prior registrations elsewhere.
- Bad Faith Considerations: The Registrar protects well-known trademarks from similar marks and takes into account any bad faith actions during opposition proceedings.
- Good Faith Registration: A trademark registered in good faith remains valid even if it is similar to a well-known mark, provided all relevant information was disclosed during registration.
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