Trademark Objection in India - Understanding Sections 9 and 11 with Case Studies

The following topics will be covered in this detailed post:

Table of Contents

• Introduction
  • Brief Overview of Trademark Registration in India
  • Importance of Understanding Grounds for Objections
• Absolute Grounds for Refusal: Section 9
  • Section 9(1): Inherent Characteristics of the Trademark
  • Section 9(2): Potential Misconceptions and Sensitivities
  • Section 9(3): The Shape of Goods and Their Exclusivity
  • Overcoming Objections Under Section 9
• Relative Grounds for Refusal: Section 11
  • Similarity with Prior Trademarks
  • Section 11(2) & (3): Well-Known Trademarks
  • Section 11(3): Laws of Passing Off and Copyright
  • Overcoming Objections Under Section 11
• Conclusion
• FAQs on Trademark Objections in India

Introduction

In the bustling marketplace of India, where businesses vie for consumer attention, trademarks serve as a beacon, helping brands distinguish themselves and assure customers of their authenticity. A trademark, in essence, is not just a logo or a name; it’s a symbol of trust, quality, and the very identity of a business. As India continues to grow as a global hub for commerce and innovation, the importance of trademarks has never been more pronounced.

The process of trademark registration in India is governed by the Trademarks Act, 1999. While the act facilitates businesses in securing their unique symbols of trade, it also ensures that these symbols do not mislead consumers or infringe upon the rights of other businesses. Thus, before a trademark is granted registration, it undergoes rigorous scrutiny to ensure it meets the criteria set out in the act.

However, it’s not uncommon for trademark applications to face objections. These objections are raised based on specific grounds detailed in the Trademarks Act. For businesses and individuals looking to secure their trademarks, understanding these grounds for objections is paramount. It not only aids in ensuring a smoother registration process but also helps in crafting trademarks that are unique, non-infringing, and in line with the legal guidelines.

In this article, we delve deep into the grounds for trademark objections, focusing on Sections 9 and 11 of the Trademarks Act. Through detailed explanations and illustrative case studies, we aim to provide a comprehensive understanding of why certain trademarks face objections and how businesses can navigate these challenges.

Absolute Grounds for Refusal: Section 9

The Trademarks Act, 1999, categorizes the grounds for refusal of trademark registration into two primary types: absolute and relative. The absolute grounds, as detailed in Section 9, pertain to the inherent nature of the trademark itself, irrespective of external factors or comparisons with other trademarks.

2.1. Section 9(1): Inherent Characteristics of the Trademark

Source Senior Attorney, Anu Sharma, Company360.in

Trademarks, by their very definition, should be distinctive. They should serve as unique identifiers for goods or services, setting them apart from others in the market. However, not all marks meet this criterion.

• a) Incapability of Distinguishing Goods/Services: A trademark that fails to distinguish the goods or services of one entity from another is deemed non-distinctive.
  • Case Study: In the case of Imperial Tobacco Co. of India Ltd. v. The Registrar of Trademarks, the company sought to trademark the name ‘Simla’ for its cigarettes. The Registrar denied the application, and the High Court of Calcutta upheld this decision, noting that ‘Simla’, being a popular geographical location, was unregistrable as a trademark.
• b) Descriptive Nature of the Trademark: If a trademark merely describes the kind, quality, or other characteristics of a product or service, it may be seen as lacking distinctiveness.
  • Case Study: In M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trademarks, the court ruled against the registration of the mark “Rasoi” for edible oils, as it merely described the nature of the product.
• c) Commonality in Current Language or Trade Practices: A mark that has become a common term in everyday language or is widely used in trade practices cannot be monopolized by one entity.
  • Example: A hypothetical scenario could involve a company trying to trademark the term “Fast Food” for a restaurant chain. Given its generic nature and widespread use, such a trademark would likely face objections.

2.2. Section 9(2): Potential Misconceptions and Sensitivities

Source Senior Attorney, Anu Sharma, Company360.in

Trademarks should not only be distinctive but also respectful and non-deceptive. The act recognizes the potential of certain marks to mislead consumers or offend sensitivities.

• a) Deceptive Nature: A trademark that can potentially deceive the public, either due to its inherent nature or its use, is objectionable.
  • Example: A brand selling synthetic juices might face objections if it tries to trademark the term “100% Natural”.
• b) Religious Sensitivities: India, with its diverse cultural and religious tapestry, requires trademarks to be sensitive to potential religious sentiments.
  • Case Study: In Amritpal Singh v. Lal Babu Priyadarshi, the Registrar denied the trademark for the word ‘Ramayan’. The reasons were twofold: it couldn’t distinguish the products, and it had the potential to hurt religious sentiments.
• c) Scandalous or Obscene Matter: Trademarks that might be deemed scandalous or obscene are not allowed.
  • Example: A brand attempting to use explicit imagery or language in its trademark would likely face objections.
• d) Prohibition under the Emblems and Names Act: Certain names and emblems are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950, and cannot be used as trademarks.
  • Example: Trademark applications using names like “Mahatma Gandhi” or “Pandit Nehru” would be unregistrable.

2.3. Section 9(3): The Shape of Goods and Their Exclusivity

While most people commonly associate trademarks with logos, names, or symbols, the shape of goods or their packaging can also be trademarked. However, the act sets specific criteria to ensure that such shapes do not grant undue monopolistic rights to businesses or hinder competition.

• a) Shape Due to the Nature of Goods: If the shape of a product is determined primarily by the nature of the product itself, it cannot be registered as a trademark.
  • Example: Consider the shape of a tennis ball. Its round form is intrinsic to its function in the game of tennis. Thus, a company cannot claim exclusive rights to the round shape of tennis balls.
• b) Shape Essential for a Technical Result: Shapes that are necessary to achieve a technical outcome cannot be trademarked. This ensures that functional aspects of products remain available for all to use.
  • Example: The design of a screw or a gear, which is essential for its technical function, cannot be trademarked.
• c) Shape Adding Substantial Value: If the shape of a product adds significant value to it, primarily in terms of aesthetic appeal, it might be deemed unregistrable. This is to prevent the monopolization of designs that provide a competitive advantage due to their aesthetic appeal.
  • Example: A unique and aesthetically pleasing design of a vase, which makes it more attractive to consumers, might face objections if one tries to trademark it. Such designs are better protected under design patents.

2.4. Overcoming Objections Under Section 9

Understanding the grounds for refusal under Section 9 is the first step. Businesses should also be aware of how to navigate these objections. A few strategies include:

• Rebranding: If a trademark faces insurmountable objections, it might be prudent to consider rebranding or choosing a different mark.
• Providing Evidence of Distinctiveness: For marks that have acquired distinctiveness over time, businesses can present evidence of their extensive use, consumer recognition, and market reputation.
• Legal Consultation: Engaging with legal experts specializing in trademark law can provide insights into the nuances of the act and help in crafting a robust response to objections.

Relative Grounds for Refusal: Section 11

While Section 9 focuses on the inherent nature of the trademark itself, Section 11 of the Trademarks Act, 1999, delves into the relative grounds for refusal. These grounds are based on the relationship between the applied-for trademark and other existing trademarks. The primary concern here is to prevent confusion among consumers and protect the rights of existing trademark holders.

Source Senior Attorney, Anu Sharma, Company360.in

3.1. Similarity with Prior Trademarks

Trademarks that bear a resemblance to earlier trademarks, especially in cases where the goods or services are similar or identical, can lead to confusion among consumers.

• i) Misunderstanding Due to Identical Marks: If a trademark is identical to an earlier one and the associated goods or services are similar, it may be refused registration.
  • Example: A new beverage company trying to use a logo strikingly similar to a well-established beverage brand would likely face objections due to potential consumer confusion.
• ii) Identical Marks and Comparable Goods/Services: Even if the goods or services aren’t identical, if they are deemed similar and the marks are identical, objections can arise.
  • Example: A company producing “Apple” branded shoes might face objections from the tech giant Apple Inc., given the identical nature of the mark and potential for confusion.

3.2. Section 11(2) & (3): Well-Known Trademarks

The act provides special protection to trademarks that are well-known in India, ensuring that their reputation isn’t diluted or tarnished.

• a) Trademarks Identical or Similar to Earlier Ones: If a new trademark is similar or identical to a well-known trademark, even if they aren’t in the same industry, it might be refused registration.
  • Case Study: In Dilip Chand Agarwal v. Escorts Ltd., the opposite party sought to register the trademark “Escorts” for household appliances. However, the well-known trademark “Escorts” for vehicles opposed the registration. The court sided with the latter, refusing the registration of the new trademark.
• b) Famous or Well-Known Trademarks: The act recognizes the reputation of well-known trademarks and prevents others from taking undue advantage of their established goodwill.
  • Case Study: In the case of ICICI Bank Ltd. v. Chuandong XU, the court observed that the trademark ICICI had been used extensively and was highly distinctive. Given its widespread recognition, the court deemed it a well-known mark, offering it broader protection.

3.3. Section 11(3): Laws of Passing Off and Copyright

Beyond the act itself, other legal principles can also serve as grounds for objection.

• Passing Off: This common law principle prevents businesses from misrepresenting their goods or services as those of another. If a new trademark can lead to such misrepresentation, it might be refused registration.
  • Example: A new soft drink brand using packaging very similar to Coca-Cola might face objections based on the principle of passing off.
• Copyright: If a trademark infringes upon someone’s copyright, it can be grounds for refusal.
  • Example: A logo that replicates a copyrighted artwork without permission would face objections.

3.4. Overcoming Objections Under Section 11

Facing objections under Section 11 requires a strategic approach:

• Evidence of Distinct Market Presence: If a business can prove that their trademark has been operating without causing confusion, despite its similarity to an earlier mark, it might overcome the objection.
• Consent from the Prior Trademark Holder: In some cases, obtaining consent from the holder of the earlier trademark can help in getting the new trademark registered.
• Legal Defense: Engaging in a legal defense, showcasing the differences between the marks and the lack of potential confusion, can be a viable strategy.

With a comprehensive understanding of both absolute and relative grounds for trademark objections, businesses can be better equipped to navigate the challenges of trademark registration in India. As we conclude, it’s essential to remember that trademarks are more than just symbols; they are the very essence of a brand’s identity and reputation.

Conclusion

In the dynamic business landscape of India, trademarks serve as a cornerstone for brand identity, consumer trust, and market differentiation. As we’ve explored in this article, the journey to securing a trademark is layered with legal intricacies, governed by the Trademarks Act, 1999. While the act aims to protect the interests of businesses and consumers alike, it also sets forth stringent criteria to ensure that trademarks are distinctive, non-deceptive, and respectful of existing rights.

Understanding the grounds for objections, both absolute and relative, is not just a legal necessity but a strategic imperative. It empowers businesses to craft trademarks that resonate with their brand ethos while aligning with legal guidelines. Moreover, with the insights from the case studies, businesses can glean practical lessons on navigating potential pitfalls.

In the ever-evolving world of commerce, where brands jostle for consumer attention, a robust trademark is a powerful ally. It not only distinguishes a brand from its competitors but also encapsulates its values, promises, and aspirations. By arming themselves with knowledge and foresight, businesses can ensure that their trademarks stand the test of time, legal scrutiny, and market dynamics.

As we conclude, it’s worth reiterating that while the process might seem daunting, with the right guidance, research, and understanding, securing a trademark becomes a fulfilling journey, marking a brand’s unique footprint in the sands of commerce.

FAQs on Trademark Objections in India

1. What is a trademark objection?

• A trademark objection is raised when the Registrar finds certain grounds, as per the Trademarks Act, 1999, to refuse the registration of a trademark. It indicates that there are specific issues with the trademark application that need to be addressed.

2. How is a trademark objection different from a trademark opposition?

• A trademark objection is raised by the Registrar during the examination of the trademark application. In contrast, a trademark opposition is filed by a third party, usually another trademark holder, after the trademark is advertised in the Trademark Journal.

3. How long do I have to respond to a trademark objection?

• The applicant has 30 days from the issuance of the examination report (which contains the objection) to respond. If no response is filed within this period, the trademark application can be deemed “abandoned.”

4. Can I challenge the Registrar’s decision on an objection?

• Yes, if the Registrar’s decision post the response is not favorable, the applicant can request a hearing. If still unsatisfied, the decision can be challenged before the Intellectual Property Appellate Board (IPAB).

5. Are there any specific guidelines for trademarks related to geographical names?

• Yes, as per Section 9 of the Trademarks Act, trademarks that are exclusively the name of a place known for a particular product or service (e.g., “Darjeeling” for tea) may be deemed descriptive and can face objections.

6. How can I ensure my trademark doesn’t face objections?

• It’s advisable to conduct a thorough trademark search before application, ensuring the mark is distinctive, non-descriptive, and doesn’t infringe on existing trademarks. Consulting with a trademark attorney can also provide valuable insights.

7. What happens if two similar trademarks are registered in different classes?

• Trademarks are registered class-wise. If two similar trademarks are for different goods/services (falling under different classes), they can co-exist unless one is a well-known trademark, which enjoys broader protection.

8. Can a rejected trademark application be re-applied?

• Yes, one can re-apply for a trademark registration. However, it’s crucial to address the reasons for the initial rejection to increase the chances of approval in the subsequent application.

9. Are international trademarks automatically protected in India?

• No, international trademarks need to be registered in India separately. However, India is a signatory to the Madrid Protocol, which facilitates international trademark registration.

10. Can a sound or smell be trademarked in India?

• Yes, non-conventional trademarks like sounds and smells can be registered in India, provided they are distinctive and can be graphically represented.