Introduction
The proprietor of a trademark is eligible to apply for registration of the trademark (Section 18 of the Trade Marks Act, 1999). However, the legislature has imposed some restrictions on trademark registration and provided for the grounds on which registrations of a trademark can be refused. These grounds are given under two heads in the Act. – Absolute Grounds in the Section 9 of the Trade Marks Act, 1999 and Relative Grounds in the Section 11 of the Trade Marks Act, 1999 (Hereinafter referred as the Act). These grounds are given in detail below.
Absolution Grounds for Refusal of trademark registration
Section 9 of the Act from sub-section 1 to 3 provides the absolute grounds for refusal of trademark registration.
Section 9(1)
Devoid of any distinct character [Sec. 9(1)(a)]
Section 9(1) prohibits the registration of those trademarks which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person.
As the ability of a mark to distinguish goods originating from two different persons is essential for it to be considered a trademark, requirement of distinctiveness is also necessary for trademark registration. This provision also prohibits a trader from getting statutory monopoly through registration over a mark which another trader might legitimately wish to use in trade.
In Amritdhara Pharmacy v. Satyadeo Gupta [AIR 1963 SC 449], the court declared that the word “AMRITDHARA” was a mere combination of two common hindi words and is not an invented word. So, it is not distinct in itself.
In Techlegal Solutions (P) Ltd. v. Genelia Riteish Deshmukh1, the court held that the term “Lai Bhaari” is not an expression newly invented. It is a very old and well known expression in Marathi. It has a known meaning : excellent. So, it can’t be granted trade mark protection.
Descriptive Words [Sec. 9(1)(b)]
Section 9(1)(b) prohibits the registration of those trademarks 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 of the goods or rendering of the services or other characteristics of the goods or services.
A test of descriptiveness is whether a particular word conveys essentials, intended use, qualities or functions of a product to a person who doesn’t know about the product.
In Profitmaker Trade Mark Case2, it was found that the word “Profitmaker” is clearly descriptive. A potential consumer assumes that the product will help them make profits.
In F. Hoffmann La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt. Ltd.3, the court held that
“The word DROPOVIT is not a descriptive word but an invented word …… It does not remind an ordinary person knowing English of the original words out of which it is coined unless he is so told or unless at least he devotes some thought to it. It follows that the word DROPOVIT being an invented word is entitled to be registered.”
Customary words and indications [Sec. 9(1)(c)]
Section 9(1)(b) prohibits the registration of those trademarks which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade.
In Online India Capital Co. (P) Ltd. v. Dimension Corporate4, the court denied giving protection to the word ‘mutualfund’ to the plaintiff, as the word was used in the domain names of the plaintiff and the defendant, which were <www.mututalfundsindia.com> and <www.mutualfundindia.com>.
Acquired Distinctiveness & Well Known Trade Mark
Proviso of Section 9(1) says 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.
This means that even a common word which is not inherently distinctive can acquire distinctiveness and a secondary meaning over time, apart from its primary meaning, by use and its association to certain goods or services.
In Mahendra and Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.5, the Court observed
“… the name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name ‘Mahindra’ with certain standards of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs’ group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities”
Section 9(2)
Deceptive Mark [Sec. 9(2)(a)]
Section 9(2)(a) says that a mark shall not be registered as a trademark if it is of such a nature as to deceive the public or cause confusion.
The Supreme Court of India in the matter of Cadila Health Care Ltd. v. Cadila Pharmaceuticals ltd.6, gave list of factors that needs to be considered to decide deceptive similarity of two marks:
- The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
- The degree of resemblance between the marks, phonetically similar and hence similar in idea.
- The nature of the goods in respect of which they are used as trade marks.
- The similarity in the nature, character and performance of the goods of the rival traders.
- The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
- The mode of purchasing the goods or placing orders for the goods and
- Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Religiously susceptible mark [Sec. 9(2)(b)]
Section 9(2)(b) says that a mark shall not be registered as a trademark if it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.
It must be noted that this ground is available only to the religious susceptibilities of citizens of India and not of any foreign national.
In Bhole Baba Milk Food Industries v. Parus Food Specialities (P) Ltd.7, the court denied protection for the word “KRISHNA” for its use as trademark. The court held that a regning deity’s name can’t be monopolised for commercial gains.
Scandalous/Obscene mark [Sec. 9(2)(c)]
Section 9(2)(c) says that a mark shall not be registered as a trademark if it comprises or contains scandalous or obscene matter. The
Prohibited symbols and signs [Sec. 9(2)(d)]
Section 9(2)(d) says that a mark shall not be registered as a trademark if its use is prohibited under the Emblems and Names (Preventions of Improper Use) Act, 1950.
Section 9(3)
Section 9(3) especially deals with the grounds to refuse for registration of a shape as trademark. There are three grounds given on which registration of a shape as a trademark can be absolutely refused.
Shape due to nature of goods [Sec. 9(3)(a)]
Section 9(3)(a) says that a mark shall not be registered as a trade mark if it consists exclusively of the shape of goods which results from the nature of the goods themselves.
Shape producing technical result [Sec. 9(3)(b)]
Section 9(3)(a) says that a mark shall not be registered as a trade mark if it consists exclusively of the shape of goods which is necessary to obtain a technical result.
Value adding shapes [Sec. 9(3)(c)]
Section 9(3)(a) says that a mark shall not be registered as a trade mark if it consists exclusively of the shape which gives substantial value to the goods.
Cases related to shape of goods as trademark
In M.R.F. Ltd. v. Metro Tyres Ltd.8, the court granted injuction to the plaintiff against use of a tread pattern similar to that of plaintiff’s tread pattern in autorickshaw tyres. The court observed that all tyres have same shape (circular). That only distinctive feature is tread pattern and other feature of arrangement and similarity of pattern may cause the customer to presume same origin.
In Gorbatschow Wodka KG v. John Distilleries Ltd.9, the court granted the protection of trademark to a bottle design. (A onion type shape on top of a cylinderical bottle shape).
Relative Grounds for refusal of trademark registration
Section 11 of the Act provides the relative grounds for refusal of trademark registration. However, this provision excludes a person using a trade mark as per the special circumstances of honest and concurrent use under section 12 of the Act. All the relative grounds for refusal of trademark registration are given in details below
Likelihood of Confusion (or Association) [Sec. 11(1)]
Section 11(1) provides that similarity/identity of a mark with earlier trademark can be a ground for refusal of trademark registration.
There are two grounds for refusal due to similarity/identity of a mark with another mark. These grounds are –
- Its identity with an earlier trade mark and similarity of goods or services covered by the trade mark, or
- Its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark.
If due to any of the above-mentioned grounds, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark, that trade mark can’t be registered.
To decide whether there is a likelihood of confusion or not various factors has been taken into consideration by the courts. Like, in Schering Corpn. v. Getwell Life Sciences India (P) Ltd.10, the court took price range of the products into consideration as a factor to determine whether the mark is deceptively similar or not. The court held that the price ranges of the plaintiff’s products is so distinct that no reasonable person would confuse the product of defendant as that of plaintiff’s.
Non-similar goods but Well Known trade mark [Sec. 11(2)]
If a trade mark is (a) identical or similar to an earlier trade mark and (b) to be registered for different goods or services which are not similar to the goods or services for which the earlier trade mark is registered by a different proprietor, then it shall not be registered if following two conditions are fulfilled –
- The earlier trade mark is a well known trade mark, and
- If the new trade mark is registered then it would take unfair advantage of the earlier trade mark, or, it would be detrimental to the distinctive character or repute of the earlier trade mark.
This provision incorporated the doctrine of dilution in the Indian Trademark law.
Doctrine of Dilution
The dilution of trademark was first discussed by the renowned author Mr. Frank Isaac Schechter in his article “The Rational Basis of Trademark Protection”. He argued that trademark protection should extend to preventing people from destroying originality and uniqueness of the mark.
In Daimler Benz Aktiegesellschaft vs Hybo Hindustan11, the matter was concerning the defendant using the word “BENZ” for underwears with a “Three Pointed Human Being in a Ring” which closely resembles the mark of the car manufacturer Mercedes. Court granted injunction from use of the word and mark by the defendant. Court also observed
The Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else’s reputation with reference to goods, especially so when the reputation extends world wide.……”Benz” is a name given to a very high priced and extremely well engineered product. In my view, the defendant cannot dilute that by using the name “Benz” with respect to a product like under-wears.
Registration prevented by law [Sec. 11(3)]
The registration of a trademark can be prevented due operation of laws in two cases.
- If use of any mark is prevented by virtue of any law (particularly law relating to passing off) which protects an unregistered trade mark.
- If the law of copyright prevents its use as a trademark.
Exemptions of relative grounds for refusal
Registration with consent [Sec. 11(4)]
When a proprietor of an earlier trademark (or other rights) has consented for registration of a new trademark which is similar to earlier trademark then such registration shall not be prevented by grounds given under section 11 of the Act. The registrar may register such a trademark under special circumstances of the section 12 of the Act for honest and concurrent use.
No opposition by proprietor [Sec. 11(5)]
If any marks falls within the scope of section 11(2) means similar to a well known trade mark and section 11(3) means registration prevented due to law of copyright or a law protecting an unregistered trademark, then registration can’t be refused unless the proprietor of the earlier trade mark raises objection in opposition proceeding.
Good Faith [Section 11(11)]
If a trade mark has been registered in good faith disclosing all material information or the right to use a trade mark was acquired through use in good faith before commencement of this act, then the validity of that trade mark or right to use such trademark can’t be challenged on the ground of its similarity or identity with earlier trademark.
Conclusion
A trademark holds a great value for a trader. So, it becomes a basic requirement of the Trade Mark law to protect the interest of a trader willing to get a trademark registered as well as protecting the trademarks of existing traders. This is where the grounds for refusal of trademark registration plays a crucial role. The refusal of trademark registration based on these grounds maintains the basic element of trademarks being distinctive and being capable of distinguishing goods of different traders.
- 2014 SCC Online Bom 695 ↩︎
- 1994 RPC 613 ↩︎
- AIR 1970 SC 2062 ↩︎
- 2013 SCC Online IPAB 131 ↩︎
- AIR 2002 SC 117 ↩︎
- (2001) 5 SCC 73 ↩︎
- (2011) 48 PTC 235 (Del) ↩︎
- (1990) 10 PTC 101 (Mad) ↩︎
- (2011) 47 PTC 100 (Bom) ↩︎
- (2008) 37 PTC 487 (Del) ↩︎
- AIR 1994 DEL 239 ↩︎
