Trademark registration is an important legal process that grants exclusive rights to a business or individual over the use of its brand or logo. Primarily, the registration process involves filing an application with the Indian Trade Marks Registry. The Registry will then examine the application, prepare an examination in writing and send a copy of the examination report to the applicant within 30 days. The Registry will either refuse or conditionally accept the application. There are two main grounds on which the Registry may refuse to register the trademark. These grounds are listed under Section 9 and Section 11 of the Indian Trade Marks Act, 1999.
Section 9: Absolute grounds for refusal
Absolute refusal for trademark registration under Section 9 of the Act is made on the inherent qualities of the trademark. For example, a trademark that is lacking a distinctive character or consists exclusively of marks or indications that have become customary in the trade will be refused registration. Let’s say you try to register the trademark "Green Tea" for your tea business, it may be refused because the term "green tea" is too common and not distinctive enough to identify your business. This is because a trademark should be unique and distinct in order to differentiate it from other trademarks in the market.
Additionally, a trademark that is likely to cause confusion or deception among consumers, either by its similarity to existing trademarks or by its descriptive or generic nature, will also be refused registration. This includes trademarks that make false claims about the products or services they represent. For example, if you try to register the trademark "100% Silk Sarees" for your saree business, but your sarees are not made from silk, your trademark is likely to be refused. Further, a mark cannot be registered if it contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India or is scandalous or obscene. If a mark’s use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950, then it cannot be registered.
Finally, marks that consist exclusively of shapes that result from the nature of the goods themselves, or of marks that are necessary to obtain a technical result or give substantial value to the goods, are also not capable of being registered. For example, if a pen has a unique shape that allows for a comfortable grip, the shape of the pen cannot be registered as a trademark because it is necessary to obtain a technical result - a comfortable grip.
Section 11 - Relative grounds for refusal
The relative grounds for refusal under Section 11 of the Act is based on the similarity between the applicant’s trademark and already registered trademarks. For example, a trademark that is identical or similar to an existing registered trademark will be refused registration. Let's say you want to register the trademark "Tasty Pie" for your bakery business. However, if there is already a registered trademark for "Tasty Pies" in the same industry, your application is likely to be refused, as the trademark is too similar to an existing registered trademark, and may lead to confusion among consumers.
While determining the similarity of trademarks, the nature of the goods and services to which they are applied is taken into account and also establishing the likelihood of confusion among the consumers in determining the similarity. The registration will be refused if the mark is similar to a well-known trademark that exists in India. The use of the mark is refused if it is prevented under the law of passing off or copyright laws.
If the trademark is similar or identical to an earlier trademark, it can still be registered if the earlier trademark has not acquired distinctiveness through use or has been abandoned or with the previous owner’s consent to the registration of the new trademark. The Registrar may refuse to register if the trademark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.
Trademark registration in India is a crucial process that involves meeting certain legal requirements and avoiding the grounds for refusal under the Trade Marks Act of 1999. By understanding the absolute and relative grounds for refusal, and ensuring that their trademark meets the legal requirements, applicants can increase the chances of their application being accepted and their brand being legally protected.
It is important to note that the onus is on the applicant to ensure that their trademark does not fall under any of the grounds for refusal. This includes conducting a thorough search of existing trademarks in the relevant industry and ensuring that the trademark is distinctive and not likely to cause confusion among consumers.