Understanding Trademark Objections In India

Trademark Objection

A trade mark can be any word, phrase, symbol, design, or combination of these things used to identify the source of the goods/services. Before filing a Trademark Application, one has to be aware about the nice classification, so as to file the application seeking protection of the mark in the correct class. The International (Nice) Classification of Goods and Services is a system for the purposes of the registration of marks. Nice classification has 45 classes in total, where class 1-34 specifies goods and Class 35-45 categories services. The most important attribute of a trademark is that it should be distinctive in nature and deceptive in nature. The process of registering a trademark is not a simple task. The application for the trademark can be objected by the registry citing various grounds. The present article brings light to some of the most common grounds for trademark objection.

Trademark Objection Grounds

Once a Trademark Application is filed and if other procedural requirements are in order, the registry will examine the Application and will either issue an Examination Report citing certain objection. The objection cited can be either under section 9 (Absolute ground) or under section 11 (Relative grounds) of the Trademarks Act, 1999.

Absolute Grounds of Refusal (Section 9)

According to Section 9(1), a trademark cannot be registered if:

• The trademarks are incapable to differentiate the applicant's products/services from those of others.
• A trademark identifies the kind, quality, place of origin, time of production, or qualities of goods or services, 
• or which consist exclusively of marks or indications which has become customary in the current language or the bonafide and established practices of the trade.

According to Section 9(2) a mark is non-registrable if:

•  A mark misleads consumers or creates confusion. Section 9(2) (a) primarily concerns the deceptive nature of the mark. A mark may be deceptive if something about it or how it is used, such as the quality, character, or place of origin of the goods or services, is inherent in the mark itself.
• A mark must contain marks that are likely to offend the religious sensitivities of any part or class of Indian nationals[1]. For example, a mark cannot be allowed in the name of religious heads or deities on meat products, footwear, etc.
•  A trademark that comprises or contains scandalous or obscene matter[2].
•  Their use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. For example, names such as Mahatma Gandhi, Pandit Nehru, or a logo which is similar to Indian Flag etc., are unregistrable.[3]

According to Section 9 (3), a mark is not registerable if:

• The nature of the commodities determines their shape[4]. For instance, round or lever-style door knobs would be exempt from registration under section 9(3)(a).
•  The shape of goods that are essential to obtain a technical result.
• The shape that significantly increases the worth of the products—The shape should be appealing to the sight to add value.

Relative grounds for Refusal (Section 11)

Section 11 of the Trademark Act lays down relative grounds for refusal of a trademark registration.  

A trademark may be objected under section 11 due to its identity and/or similarity with an earlier trade mark and identity and/or similarity of goods and services covered under the trademark. This provision is mainly to protect the prior existing similar/identical trademarks. So, where the mark is similar/identical to a prior existing mark in relation to similar/identical goods/services and due to which there is a likelihood of confusion as to origin of the goods/services, the said mark shall be refused registration.

Section 11(2) states the following grounds for refusal –

1.  If the proposed mark is identical with or similar to an earlier trade mark
2.  Or if the proposed mark 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.”

According to Section 11(3), a mark cannot be used if it is forbidden by passing-off or copyright laws.

One exception for this is Section 12 which deals with “honest, concurrent usage,” i.e where both the marks have been honestly and concurrently being used by the respective trademark holders, then registration may not be refused.

Where there are objections, an appropriate response has to be submitted within one month of receipt of the examination report.

If there are no objections, then the mark shall be ordered to be advertised before acceptance (ABA) or accepted and advertised (AAA).

Chemical Element or International Non-Proprietary Name

In respect to a chemical product or preparation, section 13 of the Trade Marks Act, 1999 forbids the registration of trade marks that contain a commonly used and accepted name of any single chemical element or chemical compound. It is forbidden to register a word that has been designated by the World Health Organization (WHO) as an International Non-Proprietary Name (INN) or that the Registrar has determined is confusingly close to one. All applications submitted under Class 5 are subject to the provisions of this clause.

Suggesting a false connection

Unless the approval of the relevant living person is acquired, the Registrar may refuse registration of trade marks that fraudulently suggest a link with any live person under Section 14 of the Trade Marks Act, 1999. Similarly, the Registrar may reject trademarks that fraudulently imply a relationship with any person who has passed away within twenty years of submitting the application for registration, provided the agreement of that person's legal representatives is obtained.

Conclusion

Objections are raised by the registry to increase the efficiency of Trademark system. Objections are raised so as to reduce consumer confusion, defending the rights of existing trademark owners, and maintaining the distinctiveness and exclusivity of businesses. Applications are thoroughly examined by trademark offices to make sure they adhere to legal specifications and to maintain the overall efficacy of trademark protection. As a result, objection should be viewed as a necessary precaution that contributes to the long-term fairness and health of the trademark ecosystem, benefiting both companies and customers. To protect their intellectual property rights, trademark applicants must fully comprehend and negotiate the objections procedure.

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