Trademark Refusals in India: A Deep Dive into Section 9

Introduction

The Trademarks Act, 1999 governs the registration, protection, and enforcement of trademarks in India. Section 9 of the Act plays a significant role in determining the registrability of a trademark by outlining the absolute grounds for refusal of registration. This section ensures that only distinctive marks, which serve the purpose of distinguishing the goods or services of one trader from those of others, are allowed registration.

Trademarks, being a unique identifier for businesses and their products, serve a crucial function in protecting both the interests of consumers and businesses. They ensure that consumers are not misled about the origin or quality of a product, and they also protect businesses by preventing competitors from using similar marks that might cause confusion. However, not every mark qualifies for registration. This is where Section 9 of the Trademarks Act, 1999 comes into play.

Section 9 of the Trademarks Act, 1999

Section 9 of the Trademarks Act, 1999 lays down the absolute grounds for refusal of trademark registration. It provides that a trademark shall not be registered if it lacks distinctiveness, is descriptive, or is likely to deceive or cause confusion. The key provisions of Section 9 are as follows:

 1. Lack of Distinctiveness (Section 9(1)(a))

A trademark must be capable of distinguishing the goods or services of one person from those of another. If a mark is devoid of distinctive character, it is unlikely to be registered. A mark is said to lack distinctiveness if it is too generic or common, making it indistinguishable from similar goods or services.

For instance, a mark that simply describes the type of goods, such as “Table” for furniture, would not qualify for registration as it does not distinguish one trader’s goods from another.

2. Marks that are Descriptive (Section 9(1)(b))

Trademarks that consist exclusively of marks or indications that describe the goods or services, their quality, quantity, intended purpose, value, geographical origin, or other characteristics cannot be registered. Descriptive marks are those that directly convey information about the product or service, such as “Sweet” for candies or “Fresh” for fruits.

However, descriptive marks can be registered if they have acquired distinctiveness or secondary meaning through extensive use. In such cases, the public associates the descriptive mark with a particular business, making it capable of distinguishing the goods or services.

3. Customary or Common Use (Section 9(1)(c))

A trademark shall not be registered if it consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade. This ground ensures that words or symbols that are commonly used in the trade cannot be monopolized by one entity through trademark registration.

For example, the use of a symbol such as a red cross for medical services, which has become customary, would not be registrable as a trademark by any single entity.

 4. Deceptive or Confusing Marks (Section 9(2)(a))

A trademark cannot be registered if it is of such a nature as to deceive the public or cause confusion. Deception or confusion may arise from the nature of the mark itself or its use. Marks that are likely to mislead consumers regarding the quality, origin, or characteristics of the goods or services would fall under this category.

For instance, using the mark “Swiss” for watches not manufactured in Switzerland might deceive consumers into believing that the product is of Swiss origin. Similarly, a mark that closely resembles an already existing trademark might cause confusion among consumers, leading them to believe that the two products are from the same source.

5. Marks that Hurt Religious Sensibilities (Section 9(2)(b))

A trademark shall not be registered if it contains or comprises any matter that is likely to hurt the religious susceptibilities of any class or section of citizens of India. This provision is aimed at preventing the registration of marks that might offend religious beliefs or sentiments.

For example, a mark that uses religious symbols or words in a disrespectful manner might fall under this ground for refusal.

6. Scandalous or Obscene Marks (Section 9(2)(c))

A trademark cannot be registered if it contains or comprises scandalous or obscene matter. This provision ensures that offensive or vulgar trademarks are not granted protection under the law.

For instance, a mark that uses offensive language or imagery would be considered scandalous or obscene and therefore not registrable.

7. Prohibited Use of Emblems or Official Symbols (Section 9(2)(d))

A trademark cannot be registered if its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. This Act prohibits the use of certain emblems, names, and symbols that are associated with government bodies, international organizations, or national symbols.

For example, the use of the national flag or emblem of India as part of a trademark would be prohibited under this provision.

 8. Marks that are Identical or Similar to Prior Marks

While not explicitly covered under Section 9, the Trademarks Act also prevents the registration of marks that are identical or confusingly similar to existing registered trademarks under Section 11. This provision is aimed at preventing consumer confusion and protecting the rights of prior trademark holders.

Analysis of Section 9 with Case Laws

Over the years, several judicial pronouncements have helped shape the interpretation of Section 9 and its application. Some notable cases include:

 1. Godfrey Phillips India Ltd. v. Girnar Food and Beverages (2004)

In this case, the Supreme Court of India held that a descriptive mark can be registered if it has acquired secondary meaning. The court emphasized that even if a mark is initially descriptive, it can be registered if it has come to be associated with a specific brand due to extensive use.

The case revolved around the trademark “Super Cup,” which was initially refused registration on the grounds of being descriptive. However, the court held that the mark had acquired distinctiveness through use and was therefore eligible for registration.

2. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001)

This case dealt with the issue of deceptive similarity and the likelihood of confusion. The Supreme Court laid down the test for determining whether two marks are deceptively similar. The court held that the overall impression of the marks, as well as the nature of the goods or services, should be considered when assessing the likelihood of confusion.

The case highlighted the importance of preventing consumer confusion and ensuring that trademarks serve their purpose of distinguishing goods or services.

3. Tata Sons Ltd. v. Manoj Dodia (2011)

In this case, the Delhi High Court refused the registration of the mark “TATA” by the defendant, who was attempting to use it for non-related services. The court held that “TATA” had acquired a strong secondary meaning and was associated exclusively with the Tata Group. Any use of the mark by another party would be likely to cause confusion and deception among consumers.

This case underscores the significance of protecting well-known trademarks from dilution and misuse.

 4. Mahindra & Mahindra Ltd. v. Tata Engineering and Locomotive Co. Ltd. (2002)

This case dealt with the issue of a mark that was likely to cause confusion due to its similarity to an already existing well-known mark. The Bombay High Court held that even though the goods and services offered by the two parties were different, the similarity of the marks could lead to consumer confusion, particularly given the reputation of the prior mark.

The court emphasized the importance of protecting the goodwill associated with well-known trademarks.

International Perspective

The Indian trademark regime, including Section 9, is aligned with international principles governing the registration of trademarks. India is a signatory to several international treaties, including the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights).

 Under the Paris Convention, member countries are required to provide a minimum level of protection for trademarks, including the refusal of registration for marks that are deceptive, scandalous, or lacking distinctiveness. The TRIPS Agreement further strengthens these protections by requiring member countries to provide a framework for the protection of trademarks and other intellectual property rights.

 The absolute grounds for refusal of trademark registration under Indian law are consistent with those found in other jurisdictions, including the European Union and the United States. In the European Union, the European Union Trademark (EUTM) regulations provide similar grounds for refusal, including lack of distinctiveness, descriptiveness, and deceptive marks. In the United States, the Lanham Act provides grounds for refusal based on lack of distinctiveness, descriptiveness, and marks that are likely to cause confusion or deception.

Conclusion

 Section 9 of the Trademarks Act, 1999 serves as a critical filter in determining the registrability of trademarks in India. By setting out the absolute grounds for refusal, the section ensures that only distinctive, non-deceptive, and non-offensive marks are granted protection under the law. This helps maintain the integrity of the trademark system and prevents the monopolization of common or descriptive terms.

 While the provisions of Section 9 are designed to protect consumers and businesses, they also provide a degree of flexibility by allowing the registration of marks that have acquired distinctiveness through use. Judicial pronouncements have further clarified the application of Section 9, ensuring that it is applied in a manner that balances the interests of trademark holders, competitors, and consumers.

 In conclusion, Section 9 of the Trademarks Act plays a pivotal role in shaping the trademark landscape in India, ensuring that only marks that fulfill the essential functions of a trademark—namely, distinguishing goods or services—are granted legal protection.

Contributed By: Hetu (Intern)