Trademark Refusal in India

Trademark Refusal in India

A trade mark application is filed in a specific class in relation to specific goods and/or services.

As soon as the application proceeds to examination, the Registrar of trademarks may call for certain additional requirements for registration, refuse the application or accept it unconditionally.

The trademark refusal in India is usually under the ABSOLUTE grounds or RELATIVE grounds as below:

• Absolute grounds: The refusal of a trademark is often under Section 9(1) (a) of the Trade Marks Act 1999, if the mark is descriptive or non-distinctive as such that it is not capable of distinguishing the goods and services of one business from others, or is something that indicates kind, quality, quantity, intended purpose, values, geographical origin of the product.
• Relative grounds: The refusal of a trademark can also be under Section 11 (1) of the Trade Marks Act, 1999, if the mark is identical with or similar to earlier marks in respect of identical or similar goods and services, and due to this there exists a likelihood of confusion on the part of the public.

The examination report/Refusal order contains the reason for the refusal along with the conflicting marks if any. The applicant is supposed to file a response along with their arguments within one month of the date of receiving the communication.

Section 9: Absolute grounds for refusal of registration.

Summary of Section 9(1)

Trade marks cannot be registered if the below conditions are met:

1. Lack of distinctiveness: The mark doesn’t distinguish one person’s goods or services from another’s.
2. Are descriptive: The mark only describes the nature, quality, or other characteristics of the goods or services.
3. Are commonplace: The mark has become common term in the language or trade.

However, a trade mark can still be registered if it has gained distinctiveness through use or is already well-known.

Summary of Section 9(2)

A mark cannot be registered as a trade mark if it:

1. Misleads the public or causes confusion.
2. Offends religious feelings of any group in India.
3. Contains scandalous or obscene content.
4. Violates the Emblems and Names (Prevention of Improper Use) Act, 1950.

Summary of Section 9(3)

A mark cannot be registered as a trade mark if it:

1. Is the shape of the goods because of their natural form.
2. Is the shape needed for a technical result.
3. Is the shape that gives significant value to the goods.

However, the general nature of the goods or services is not a reason for refusing registration.

Section 11: Relative grounds for refusal of registration.

Summary of Section 11(1)

A trade mark cannot be registered if it is either:

• Identical to an earlier trade mark which covers similar goods or services, or
• Similar to an earlier trade mark and covers the same or similar goods or services,

and there is a risk that the public might confuse or associate it with the earlier trade mark.

Summary of Section 11(2)

A trade mark cannot be registered if:

• It is identical or similar to a well-known earlier trade mark,
• Even if it is for different goods or services, and
• Its use could unfairly benefit from or harm the reputation of the well-known earlier trade mark.

Summary of Section 11(3)

A trade mark cannot be registered if its use in India would violate:

• Laws protecting unregistered trade marks from being misused (passing off), or
• Copyright laws.

Summary of Section 11(4)

A trade mark can still be registered even if it is similar to an existing one, provided the owner of the existing trade mark agrees to it.

An “earlier trade mark” includes:

• A registered trade mark or application with an earlier filing or priority date, or
• A well-known trade mark recognized as such on the application date.

Summary of Section 11(5)

A trade mark won’t be refused registration based on certain grounds unless the owner of the earlier trade mark formally objects to it during the opposition process.

Summary of Section 11(6)

When deciding if a trade mark is well-known, the Registrar will consider factors such as:

• The trade mark’s legal history, including how it has been recognized by courts or the Registrar.
• How well the trade mark is recognized by the public, including its promotion in India.
• How long and where the trade mark has been used.
• The extent and geography of the trade mark’s promotion and advertising.
• The trade mark’s registration history and its reflection of use or recognition.

Summary of Section 11(7)

To determine if a trade mark is known or recognized by the relevant public, the Registrar will consider:

• The business circles that handle the goods or services.
• How many people buy or might buy the goods or services.
• How many people are involved in distributing the goods or services.

Summary of Section 11(8)

If a court or the Registrar has confirmed that a trade mark is well-known in at least one section of the public in India, he will treat it as a well-known trade mark for registration.

Summary of Section 11(9)

To determine if a trade mark is well-known, the Registrar does not require:

• Proof that the trade mark is known to the general public in India.
• Proof that the trade mark has been used in India.
• Proof that the trade mark is registered.
• Proof that the trade mark’s registration application was filed in India.
• Proof that the trade mark is well-known, registered, or applied for in any other country.

Summary of Section 11(10)

When reviewing a trade mark registration application and any opposition, the Registrar shall:

• Protect well-known trade marks from being registered if they are identical or similar to existing well-known trade marks.
• Consider any bad faith from either the applicant or the opponent that affects the trade mark rights.

Summary of Section 11(11)

If a trade mark was registered or used in good faith before this Act came into effect, it won’t be invalidated simply because it is identical to or similar to a well-known trade mark.known trade mark.

Overcoming Trademark Refusal in India

An applicant may file a review petition before the Registrar to review its decision within 30 days of such refusal notice.

Rule 119 of the Trade Marks Rules 2017 states that ‘An application to the Registrar for the review of his decision under sub-section (c)of section 127 shall be ma. in Form TM-M within one month from the date of such decision or within such further period not exceeding one month thereafter as the Registrar may on request allow, and shall be accompanied by a statement setting forth the grounds on which the review is sought’.

Section 127 in The Trade Marks At 1999 states the Powers of Registrar and sub clause (c) of the Section states that ‘the Registrar may, on an application made in the prescribed manner, review his own decision’.

Further, on dismissal of review petition, the applicant also has an option of filing an appeal before the Intellectual Property Appellate Board (IPAB) within 3 months of the dismissal.

We shall study the documents cited for provisional refusal of the case by the Indian Trademarks office and file our proper response to overcome the objections. As mentioned on this page, the response needs to be filed within ONE month of the date of communication of the refusal to the applicant. A notice of refusal is usually accompanied by a list of conflicting marks. We shall also study this list and offer our opinion on the possibility of successful registration of the mark.