Registration of trademark

Section 9 and 11 specify the grounds for refusal of a TM.

Section 9. Absolute grounds for refusal of registration.- (1) The trade marks -

(a) Which are devoid of any distinctive character, that is to say, not capable of

distinguishing the good or services of one person from those of another person.

(b) Which consist exclusively of marks or indications which may serve in trade to

designate the kind, quality, quantity, intended purpose, values, geographical origin or the

time of production f the goods or rendering of the service or other characteristics of the

goods or service.

© Which consist exclusively of marks or indications which have become customary in

the current language or in the bona fide and established practices of the trade.

Shall not be registered:

Provided that a trade mark 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 trade mark.

1. A mark shall not be registered as a trade mark if-

(a) it is of such nature as to deceive the public or cause confusion.

(b) It contains or comprises of any matter likely to hurt the religious susceptibilities of

any class of section of the citizens of India.

© It comprises or contains scandalous or obscene matter.

(d) Its use is prohibited under the Emblems and Names (Prevention of Improper Use)

Act, 1950 (12 of 1950).

1. A mark shall not be registered as a trade mark if it consists exclusively of-

2. the shape of goods which results from the nature of the goods themselves. Or

(a) the shape of good which is necessary to obtain a technical result, or

(b) the shape which gives substantial value of the goods.

Explanation.- For the purposes of this section, the nature of goods or services in relation

to which the trade mark is used to proposed to be used shall not be a ground for refusal of

registration. 

 

11. Relative grounds for refusal of registration.- (1) Save as provided in section 12,

trade mark shall not be registered if, because of- (a) its identity with an earlier trade mark

and similarly of goods or services covered by the trade mark, or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods of

services covered by the trade mark.

There exists a likelihood of confusion on the part of the public, which includes the

likelihood of association with the earlier trade mark.

(2) A trade mark which - (a) is identical with or similar to an earlier trade mark, and

(b) is to be registered for goods or services which are not similar to those for which the

earlier trade mark is registered in the name of a different proprietor.

Shall not be registered if or to the extent the earlier trade mark is a well-known trade

mark in India and use of the later mark without due cause would take unfair advantage of

or be detrimental to the distinctive character or repute of the earlier trade mark.

(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to

be prevented - (a) by virtue of any law in particular the law of passing off protecting an

unregistered trade mark used in the course of trade, or

(b) by virtue of law of copyright.

(4) Nothing in this section shall prevent the registration of a trade mark where the

proprietor of the earlier trade mark or other earlier right consents to the registration, and

in such case the Registrar may register the mark under special circumstances under

section 12.



Explanation.- For the purposes of this section, earlier trade mark means-

(a) a registered trade mark or convention application referred to in section 154 which has

a date of application earlier than that of the trade mark in question, taking account, where

appropriate, of the priorities claimed in respect of the trade marks.

(b) a trade mark which, on the date of the application for registration of the trade mark in

question, or where appropriate, of the priority claimed in respect of the application, was

entitled to protection as a well-known trade mark.

(5) A trade mark shall not be refused registration on the grounds specified in sub-section

(2) and (3), unless objection on any one or more of those grounds is raised in opposition

proceedings by the proprietor of the earlier trade mark.

(6) The Registrar shall, while determining whether a trade mark is a well-known trade

mark, take into account any fact which he considers relevant for determining a trade mark

as a well-known trade mark including - (i) the knowledge or recognition of that trade

mark in the relevant section of the public including knowledge in India obtained as a

result of promotion of the trade mark.

(ii) the duration, extent and geographical area of any use of that trade mark.

(iii) the duration, extent and geographical area of any promotion of the trade mark,

including advertising or publicity and presentation, at fairs or exhibition of the gods or

services to which the trade mark applies.

(iv) the duration and geographical area of any registration of or any publication for

registration of that trade mark under this Act to the extent they reflect the use or

recognition of the trade mark.

(v) the record of successful enforcement of the rights in that trade mark, in particular, the

extent to which the trade mark has been recognised as a well-known trade mark by any

court on Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or

recongnised in a relevant section of the public for the purposes of sub-section (6), take

into account.

(i) the number of actual or potential consumers of the goods or services.

(ii) the number of persons involved in the channels of distribution of the goods or

services.

(iii) the business circles dealing with the goods or services.

To which that trade mark applies.

(8) Where a trade mark has been determined to be well-known in at least one relevant

section of the public in India by any court or Registrar, the Registrar shall consider that

trade mark as a well-known trade mark for registration under this Act.

(9) The Registrar shall not require as a condition, for determining whether a trade mark is

a well-known trade mark, the any of the following, namely:-

(i) that the trade mark has been used in India,

(ii) that the trade mark has been registered.

(iii) that the application for registration of the trade mark has been filed in India.

(IV) that the trade mark - (a) is well known in; or

(b) has been registered in; or

© in respect of which an application for registration has been filed in, any jurisdiction

other than India; or

(v) that the trade mark is well known to the public at large in India.

(10) While considering an application for registration of a trade mark and opposition filed

in respect thereof, the Registrar shall--

(i) protect a well known trade mark against the identical or similar trade marks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent

affecting the right relating to the trade mark.

(11) Where a trade mark has been registered in good faith disclosing the material

informations to the Registrar of where right to a trade mark has been acquired through

use in good faith before the commencement of this Act, then, nothing in this Act shall

prejudice the validity of the registration of the trade mark or right to use that trade mark

on the ground that such trade mark is identical with or similar to a well known trade

mark. 

 

Hope this will suffice. 

Thanks

In case, the mark is Non-distinctive or Deceptive, the mark will be refused.