INTRODUCTION
A trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one enterprise from those of other enterprises and may include the shape of goods, their packaging, and a combination of colors. Trademarks are protected by intellectual property rights.
We will be restricted just to trademarks, specifically about the grounds for refusal of trademark classification and these are very basic and most important sets of things that we need to learn. If we hold them properly, you will not have difficulties navigating through the trademark law. This will also give us an understanding of trademark law in general and how it functions. It need not necessarily register your trademark to have rights in your mark. But, if you decide to register your trademark and apply for registration, your mark will be examined by the trademark registry. By checking out the bases and grounds on which they are relying to whether the trademark is registrable or not.
GROUNDS FOR REFUSAL OF TRADEMARK
Primarily looking at section 9 and section 11 of the Trademark Act, 1999 provides for the absolute and relative grounds for the refusal of a trademark. The mark will be seen as what it stands for and then it will be evaluated whether it should be registered or not and then the registry will tell you this is not something that is not acceptable. Those reasons will be falling under these sections.
Section 9. Absolute grounds for refusal of registration
Section 9 generally talks about absolute grounds where we don’t compare one mark with the other mark by examining the marks.
- Under section 9 1(a), it defines something that is stated in the definition of the trademarks the marks must be generic, they should not be devoid of any distinctive character and they should be unique and they should create their own identity. If they don’t possess any of these points such marks are not to be registered.
- Detailing with the example under section 9 1(b), if any person is manufacturing and selling cars and names the mark as cars that is something very describing what he was doing, such kinds of marks are not allowed to be registered.
- This example clearly explains section 9 1(c). Let us consider an example of a Fish market where multiple sellers and consumers are involved in fish trading. For the sake of simplicity let us assume a fish of kind ‘X’. Among that specific kind, let us again consider a specific fish ‘Y’. The fisherman community refers to the same Fish ‘Y’ with a nickname and the same is referred to by consumers differently. The same fish is referred to by some other name in different parts of the world. Thus, when the Fisherman community across a big portion of geography within India knows the fish ‘Y’ by a name that could not be registrable. Because it is very customary in the current language and very commonly used amongst the people in the larger community that exists.
Below is an instance that follows the above section 9.
Imperial Tobacco Co. Of India Ltd. vs Registrar Of Trade Marks And Anr.
- Provided that a trademark shall not be refused registration if, before the date of application for registration, it has acquired a distinctive character as a result of the use made of it or is a well-known
But there is an exception which means that even though you were using any of these terms which fall under any of these categories your mark will be registered. For suppose, if anyone starts a business with a very generic name and the business is going well for over two years since its inception, if the consumers could easily recognize it and use it as a landmark location, then this exception will be helpful during this cases and trademark shall be registered.
- Under section 9 2(a), the trademark which confuses people would not be registered.
- According to section 9 2(b), if anyone sells cigarettes by using any god name as their mark it wouldn’t get registered because it is likely to hurt anyone regarding religious matters.
- The marks portray nudity as something which is not acceptable, generally to the public that is a scandalous or obscene matter. then, those are also not registered under section 9 2(c).
- According to section 9 2(d), the Act says that any Indian flag or national emblem shouldn’t be registered as a trademark.
- According to section 9 3(a), if the product that you are trading those product shapes cannot be used as a trademark. For example, any type of fruit and its shapes.
- Under section 9 3(b), the goods obtain any technical output and are functional. For example, taps shall not be registered. Instead, they are patented which is one of the IPs and it deals with technical processes that resolve technical issues.
- According to section 9 3(c), say, a diamond is beautiful or valuable taken out from mine. Over some time it has many cuts something which has been carved and cut into a certain way, and with many cuts, it derives its value. There, that shape is not going to be registered.
Explanation — for this section, the nature of goods or services about which the trademark is used or proposed to be used shall not be a ground for refusal of registration.
- It is not the registry’s duties to interfere in things like selling alcohol is not good and stop selling this. Instead, they have to register the marks which possess the qualities and examine things needed and register.
Section 11. Relative grounds for refusal of registration
The relative grounds define that it compares the mark with the other mark and if it is similar in any kind and it already exists and creates confusion among the people in identifying the goods and services in association with the likelihood of confusion with products and marks that are trading. A mark that is hugely popular in the market not only acquired distinctiveness but is something that becomes a household name that is widely known amongst the public in general. For example, Parle-G, dairy milk, etc. when it comes to automobiles BMW, Maruti Suzuki, etc. so these are the marks already declared by the registry and called well-known marks. Whereas the relative grounds deal with the comparison of marks by examining the similarity and identical marks which already exist and these marks would not be registered. Under section 11, they are continuous provisions involved which are seen in the trademark Act.
CONCLUSION
The Trademarks Act, 1999 clearly explains the grounds that are mentioned in the provisions of section 9 and section 11, where it tells us about the refusal of marks in detail whereas in absolute grounds it tells us about the generic nature of names and explains the descriptive nature of marks and finally, third point deals with the customary in the current language or the trade. Whereas, on relative grounds section 11 tells that the marks that are similar or identical to any of the existing trademarks are also not registered. And there is an exception for the popularly known marks which are of prior use and have popularity in any location where the services are good and people recognize the business even though it is very generic and descriptive then it would be registered.
Author(s) Name: Harika Bokki (Sri Padmavathi Mahila Viswavidyalayam, Tirupati)
