Absolute grounds for refusal of Trade Mark

I. The trademarks that are:

 Incapable of distinguishing the goods/services of the applicant with

those of others;
 or may serve in trade to designate kind, quality, purpose, value,
geographical origin;
 or have been commonly used in the current language or established
practices of trade;
shall not be registered.
Exception:If before the date of application, the mark has acquired
distinctiveness by use or it is a well-known mark, it cannot be denied
registration.

II. A Mark shall not be registered as a Trade Mark if it causes:

 Confusion or deceives the public; or

 Hurts religious susceptibilities of class/ section of citizens of India; or
 Comprises/contains scandalous/obscene matter which is against the
morality of the public; or
 Is prohibited under the Emblems and Names Act, 1950

III. 3-Dimensional Mark or Shape of Goods

These may be registered as a trademark.However, the Act states that a Mark
shall not be registered as a Trade Mark if:

 it consists exclusively of the shape of goods itself or the shape of goods

necessary to obtain a technical result; or
 The shape which adds substantial value to the goods- the shape
should have visual appeal to add value and not be of a functional
nature to fall within the purview of this provision.
 The nature of goods or services in relation to which trademark is used
or proposed to be used shall not be a ground of refusal of registration.

IV. Chemical element/compound:

No word which is the name of a chemical element/ compound (not mixture)
or which is declared by the World Health Organization and notified by the
Registrar of Trade Marks as aninternational non-proprietary name /
deceptively similar to such names shall be registered as a trademark.Even if
the aforementioned word has acquired distinctiveness as a trademark it still
cannot be registered as a trademark.
Relative grounds for refusal of Trade Mark

I. Except in case of honest concurrent use, a Trade Mark shall not

be registered if:

 There is a likelihood of confusion for the public because the

trademark being applied for is identical with an earlier trademark and
the goods/ services of the two marks are similar; or
 The trademark being applied for is similar to an earlier trademark and
the goods/ services of the two marks are identical.

II. Passing off or Copyright Infringement:

A trademark shall not be registered if its use is liable to be prevented by
virtue of law of Passing off orLaw of Copyright.

III. Earlier Trade Mark:

The term “Earlier Trade Mark” for the purpose of ‘Relative Grounds for
Refusal of Registration’ by the Indian Trade Mark Office means a Registered
mark or a convention application (from a citizen of a country/group of
countries with which India has a treaty/ agreement) for which the date of
application was earlier than the trademark sought to be registered.

IV. Living or Recently Deceased Person:

If an application for registration is in respect of a trademark which falsely
suggests a connection with a living person or a person who died within 20
years prior to the date of application,then the Trade Mark Registrar may,
prior to proceeding with the application, require the applicant to furnish
consent in writing of such living person; or legal representative of the
deceased person. The Registrar may refuse to proceed with the application if
such consent is not furnished.

Conditions for Registration of Trade Marks 

The proprietor of a trademark must not only use but also register the
trademark, failing which a suit for infringement cannot be filed. Therefore,
in order to acquire effective trademark rights, registration, as well as the use
of the said trademark in relation to the particular goods/services, is
essential. The Trade Marks Act, 1999 does not specifically prescribe the
grounds or conditions on the satisfaction of which a trademark will be
granted registration. However, it prescribes the grounds for refusal of
registration of trademarks. The grounds for refusal of registration of a
trademark can be dealt under two categories under the Act, viz., 

 Absolute grounds for refusal of registration (Section 9) 

 Relative Grounds for refusal of registration (Section 11)
Therefore, the Trade Marks Act, 1999 embodies a wide scope for registration
of marks by registering those marks which are not prohibited from
registration under the absolute or relative grounds for refusal of registration,
provided it is a “trademark” within the meaning of Section 2(1)(zb) of the Act
and is capable of distinguishing the goods of one person from those of
others. 

Absolute Grounds for Refusal of Registration 

Section 9 of the Trade Marks Act, 1999 lays down the absolute grounds for
refusal of registration. The absolute grounds for refusal of registration of a
trademark is related to public policy. The legislative intent behind this
provision is to protect the legitimate interest of the traders as well as the
public who are genuine and bona fide users of various marks in the form of
signs, symbols, logos, words, etc. which have been acquired by them in
relation to their goods/services. 

A trademark shall not be registered on the following grounds 2:

 the mark lacks any distinctive character; 
 the mark designates the kind, quality, intended purpose, values,
geographical origin or the time of production of the goods or services
rendered;
 the mark has become customary in the current language or in the
bonafide and established practices of the trade; 
 the mark deceives the public or causes confusion;
 the mark is likely to hurt the religious sensitivities of any class or
section;
 it comprises scandalous or obscene matter;
 The Emblems and Names (Prevention of Improper Use) Act, 1950
prohibits its use;
 if the mark exclusively consists of the shape of goods which results
from the nature of the goods themselves;
 it exclusively consists of the shape of goods which is necessary to
obtain a technical result;
 the shape gives substantial value to the goods. 
However, a trademark has acquired a “distinctive character” as a
consequence of its use or is a “well-known trademark”, prior to the date of
application for registration, the trademark shall not be refused for
registration. The distinctive character which allows one to distinguish the
goods/services of one person from others may be inherent or acquired.
Therefore, it is crucial to have regard to the inherent features of the
trademark which makes it possible to distinguish the goods/services of one
from another.  

In Hindustan Development Corp.  v Deputy Registrar of Trade

Marks3, the issue involved was centred around the word “Rasoi” and
whether it could be registered as a trademark for hydrogenated groundnut
oil or not. It was held that the grammatical significance of a mark does not
refer to the quality of goods, instead, it must be construed from the point of
view of the public at large. Thus, to the general public, the word “rasoi”
means cooking. The use of groundnut oil that is hydrogenated is for the
purpose of cooking, which in turn forms a part of its character. Therefore,
the word “rasoi” has a direct reference to the “character” of goods. 
Furthermore, even if the word “rasoi” did not directly impute the good’s
character or quality, the word must be “distinctive” for it to be registrable.
This distinctiveness must indicate that the goods for which the mark is used
are the goods of the proprietor and is capable of distinguishing the goods of
the proprietor from those of others. Moreover, even if the word “rasoi” is
distinctive it cannot be registered because it is a common word and no one
can exclusively use such words and deprive others of using the common
words of a language which are public property. Therefore, in the instant
case, the word “rasoi” could not be registered as it lacked distinctiveness
associated with the applicant’s goods. 

Similarly in Geep Flashlight Industries v Registrar of Trade

Marks  the word “Janta ” used for electric torches was sought for
4,

registration. The Registrar refused registration on the ground that it was

neither distinctive nor had the capability to distinguish the product of the
applicant from those of others. The word “Janta” is a common word and
indicative of the fact that the goods are not expensive and meant for the
common man thereby referring to the quality or character of the goods. In J
R Kapoor v Micronix India5 the Supreme Court held that the word
“micro” used for the production of electronic goods was descriptive of
microtechnology and thus no one could claim exclusive use of it. 
Relative Grounds for Refusal of Registration
Section 11 of the Trade Marks Act, 1999 lays down the relative grounds for
refusal of registration. The legislative intent of this provision is to protect the
interest of the owners of registered trademarks. 

 Section 11(1) provides that where the public is likely to get confused
on account of a mark being identical or similar to an earlier trademark
and a subsequent mark for certain goods/services is identical or similar
to the goods/services represented by an earlier mark, such a mark shall
not be registered. Therefore, if the subsequent mark is associated with
the public to an earlier mark it is likely that such similarity between the
marks is sufficient to cause confusion and thus bring it within the scope
of Section 11(1). However, where the goods/services are identical there is
no need to prove confusion. But the similarity between an earlier and a
subsequent trademark and where the goods/services are similar or
identical the likelihood of confusion must be proved. 
In Toshiba Appliances Co. v Kabushiki Kaisha Toshiba6 the applicant’s
mark ‘TOSIBA’ which was applied for registration had a close resemblance
to the opponent’s trademark ‘TOSHIBA’ which was used in respect of
electronic goods. This resemblance in the two marks was likely to confuse or
deceive the users. The court in the instant case held that the applicant’s
mark ‘TOSHIBA’ was deceptively similar to the opponent’s mark ‘TOSHIBA’.
There was a phonetic similarity between the two marks. 
There are certain essential principles which must be kept in mind while
comparing trademarks that are likely to confuse or deceive the users viz.:

 The actual probability of deception which can lead to passing off need
not be proved. The likelihood of the mark to confuse or deceive the
purchaser is sufficient to bring the mark within the scope of Section
11(1). 
 The confusion or deception caused by two marks has to be judged
from the vantage point of a person with an imperfect recollection, who
only knows one word and is not familiar with both the words. Therefore,
a meticulous comparison of two similar words will be of little help. 
 When two words are being compared, they must be compared as a
whole. It would be inappropriate to compare two different parts of two
words which are being compared. 
In Amritdhara Pharmacy v Satya Deo1 the similarity of the words
‘Amritdhara’ and ‘Lakshmandhara’ was under consideration used in relation
to medicinal preparations. Both these words when read or spoken together
had a similarity which could lead to confusion. The Supreme Court held
that an ordinary purchaser who is of “average intelligence” and “imperfect
recollection” cannot be expected to bifurcate the words into its component
parts and compare the etymological meaning or consider the meaning of the
component words as ‘current of nectar’ (Amritdhara) or ‘current of
Lakshman’ (Lakshmandhata). 
An ordinary person is more likely to consider the overall structure and
phonetic similarity of the words as a whole and associate it with the nature
of medicine previously purchased by him. Therefore, the “true test” is
whether the proposed trademark, in this case, the words, when considered
in totality is likely to cause confusion in the minds of those who are already
familiar with a prevailing trademark or not. 

 The structural i.e., the appearance as well as the phonetic similarity

must be taken into consideration. 
 The meaning and ideas conveyed by the words should also be taken
into account. The words which convey the same meaning or ideas are
likely to cause confusion.
 Under Section 11(2) a trademark shall not be registered under two
circumstances:
 Where the trademark is identical or similar to an earlier trademark;
 Where the goods/services for which a trademark is to be registered is
not similar to the goods/services for which an earlier trademark is
registered in the name of a different proprietor. 
The above two conditions are applicable when:

 the earlier trademark is a “well-known trademark” in India; and 

 the use of the later or subsequent trademark will amount to taking an
unfair advantage or harmful to the “distinctive character” or prejudicial
to the reputation of the earlier trademark.  
A well-known trademark is defined under Section 2(1)(zg) of the Trade Mark
Act, 1999 and it means “a mark which has become so to the substantial
segment of the public which uses such goods or receives such services that
the use of such mark in relation to other goods or services would be likely to
be taken as indicating a connection in the course of trade or rendering of
services between those goods or services and a person using the mark in
relation to the first-mentioned goods or services.” 

Therefore, special rights have been given to well-known trademarks under

the Act. Thus, the qualities or attributes of a well-known trademark may be
acquired by an ordinary trademark. This means that when a person sees a
trademark on some goods/services and is able to relate it to a trademark
present on some other goods/services, such a trademark can be said to be a
“well-known trademark”. Section 11(6) lays down the relevant facts that
must be considered by a Registrar while determining whether a trademark is
a well-known trademark or not.  

In Carrefour  v V Subburaman7 the applicants were using the word

CARREFOUR since 1960 for their retail business throughout the world. The
proprietor brought a suit of passing-off against the respondents for using
the trademark ‘Carrefour’ from July 2000 for furniture. In the instant case,
the trademark was not registered in India in favour of the applicant with
respect to furniture. However, it was registered in other countries in relation
to furniture and registered in India in relation to other goods. Therefore, a
large section of the public identified and associated the goods of the
applicants with the trade name “CARREFOUR” and was likely to draw a
connection between the products of the respondents with that of the
applicant, in the course of trade. Thus, the court held that “CARREFOUR” is
a well-known trademark. 
 Section 11(3) prescribes that a trademark shall not be registered if its
use in India is prevented owing to the following reasons:
 where an unregistered trademark used in the course of trade is
protected by the law of passing-off or by virtue of any other law;
 by the law of copyright. 
Therefore, the proprietor of an earlier trademark can oppose a later
trademark by virtue of Section 11(3).  

The law of passing-off protecting unregistered trademarks is also available to

proprietors of registered trademarks. The similar marks used on the same,
similar or dissimilar goods can be opposed by the proprietor as passing off
can be claimed by registered as well as unregistered users. Furthermore,
when a later trademark is similar to an earlier trademark which is protected
by copyright law and is sought to be used on any goods or services then
such a later trademark shall not be registered by virtue of Section 11(3). 

Conclusion
From the above discussion, it can be concluded that the registration of a
trademark under the Trade Marks Act, 1999 is primarily concerned with the
‘distinctiveness’ of a mark and it is this ‘distinctive character’ of a mark used
for the goods/services that are sought to be protected. It is through this
distinctiveness of a trademark that the goods/services of a person can be
identified and distinguished from those of others. Moreover, the standard
required for trademark registration is not very strict. 

The Trade Marks Act, 1999 prescribes various grounds, both absolute and
relative which must be borne in mind before a trademark is approved for
registration. Where a trademark is likely to cause confusion or deception the
prohibition to register the said mark is absolute and this is to protect the
interest of the buyer. 

Similarly, a subsequent mark which is similar or identical to an earlier

trademark cannot be granted registration. This holds true even in cases
where the goods/services represented by a subsequent and an earlier mark
are identical or similar or where confusion or deception can be caused in the
minds of the public. In both these circumstances, the mark will be refused
registration.

Therefore, a trademark is of immense importance and significance as the

reputation, identity and goodwill associated with the goods/services become
coextensive with the trademark itself. The mark representing the
goods/services are not mutually exclusive, instead, it substantiates the
authenticity and distinctiveness attributed to such goods/services by the
mark and vice-versa. 

Extra for Section 9:

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

a) Trademarks which 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 1 -
The Imperial Tobacco Company is a famous company which 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
which cannot be registered as a trademark.

An application for registration of the trade mark "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. 2
In American Online Inc.'s Application,3 the applicant sought to register the
word "YOU'VE GOT MAIL" as a trade mark in various classes. The examiner
refused the application finding the trade mark was not distinctive. In appeal,
the Board of Appeal held that the trade mark 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)  Trademark which consist only of such marks or of such indications

which may function in trade to specify the kind, quality, quality,
geographical origin, or time of production of goods or services or other
characteristics of goods or services.
This clause prohibits the registration of marks which are descriptive that
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 Marks4, 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 photographical 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
direct reference to the character or quality of the goods.

c)  Trademark which consists only of such marks or indication which

have become customary in the current language or in bona fide and
established practice of trade. The word which have 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 right over the use of any word, abbreviation or
acronym which has become publici juris.
Example - 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 person.

In SBL Ltd v. Himalayan Drug Company6, the Appellant filed a suit against
the Respondent for infringement of trade mark Liv.52 by use of the trade
mark 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 treatment of ailment of
'LIVER' and non-distinctive part of the mark.7 The Division bench of Delhi
High Court held that nobody can claim exclusive right 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 colour red being 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
monopolised by any party.8

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

In Shalimar Chemical Works v. Deputy Registrar,9 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.

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

a) If such trademark is likely to deceive the public or can even cause
confusion.
In the Leather Cloth Company Ltd. v. American Leather Cloth Company
Ltd.10, 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 about the nature of the goods.

b)  If such 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.
Examples: The use of names or device of deities on foot wear will be
considered disrespectful. Likewise, the use of Hindu gods in respect of beef
or meat products or use of Muslim saints for pork products would be
offending the religious sentiments of respective sections of public.

In Amritpal Singh v. Lal Babu Priyadarshi11, 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 trademark contains any kind of scandalous or obscene

matters.
Obviously, a mark which is contrary to the 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,23 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 offence 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 purpose. Section 4(b) of the act prohibits the registrar from
registering a trademark or a design which holds any emblem or name and
use of it shall be in contravention of section 3 of the Act.

Example: Mahatma Gandhi, Pandit Nehru, National Flag etc. cannot be

used as Trademark

According to section 9(3) a mark shall not be registered if it consists

exclusively of:
a) The shape of goods which result from the nature of the goods
themselves.
Example - 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 goods which is necessary to obtain a technical result.

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

Footnotes

1 AIR 1977 Cal. 413

2 2005 (30) PTC 336 (IPAB)

3 [2002] E.T.M.R. 6, 59.

4 AIR 1955 Cal. 519

5 (1980) IPLR 1.

6 1997 (17) PCT 540

7 https://indiancaselaws.wordpress.com/2013/08/21/himalaya-
drugcompany-v-s-b-l-ltd/,

8 Colgate Palmolive ltd v. Patel (2005)

9 2012 (50) PCT 576

10 (1863)4 De G.J & S 137

11 2005 (30) PTC 94 (IPAB) 23 (2002) RPC 628, p.635