Comprehensive Study on Section 9 for Absolute grounds for refusal of registration and Section 11 for Relative grounds for refusal of registration of Trademark Act, 1999.

By Rekha Anand

The comparative nature of Sections 9 and 11 are primarily based on the Grounds of Refusal. 

Section 9	Section 11
Marks that are devoid of distinctive character	Marks which create confusion in public
Marks that serve to designate the kind, quality, intended purpose, values, geographical origin or the time of production of goods	Marks that are identical to other marks
Marks which are customary in the current language or established practices of the trade.	Marks that are liable to be presented by passing off or the copyright law.

A detailed analysis of both sections would be presented below with the help of case laws. 

• Section 9 of the act lays down absolute grounds for refusal of registration of Trademark under the Trademark Act, 1999. Section 9 (1) states the following marks as known registrable, 

1. The trademarks 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. Here the expression “distinctive” also extends to “capable of distinguishing”. A better understanding of the expression would be presented with help of a few case laws.

In the case, the Imperial Tabaco Co. of India Ltd v. The Registrar of Trade Marks, the Tabaco company with the label “Simla” refused the registration was refused as the word entailed a famous geographical place which cannot be registered as a trademark. An application for registration of the trademark “Aggarwal Sweet Corner” was provided registered as it was on the corresponding basis of sweets and namkeen of the user. Furthermore, in the case of American Online Inc. Application, the application ventured to register the word “You’ve got mail” in several classes but was naturally denied as the phrase contained common words which have been frequently used by email users and the phrase from being free from individual monopoly rights 

2. The trademarks consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, geographical origin or the time of production of the goods or rendering of service or other characteristics of goods or services. 

This clause restraints registration of marks that pertain to be descriptive (rendering information of the product directly), and identifies characteristics of the product or service.  In the case of M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of TradeMarks held that the mark “RASOI” associated with edible oil cannot be categorized as registered mark as this is indicative of the nature of the product. The word “solar” evidently refers to the sun and photographic words are relevant to artificial light which states the character or quality of the goods in Central Camera Company Private Ltd. v. Registrar of Trade Mark.

3. The trademarks consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practices of the trade. 

The case SBL Ltd v. Himalayan Drug Company states that nobody can claim exclusive right over the use of any word, acronym or abbreviation which is merely a public Juris. In the present case, the registration of the word “Liv” was refused as the word was generic in nature in addition to accounting public Juris. This clause is not just confined to words but also colour combinations and cannot be monopolised. 

Nonetheless, a trademark is not to 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 a well-known trademark.  Thereby, if a mark through use becomes clearly associated in the public mind with the goods of a particular person then it could not be legitimate used as a trademark by others.  The owners in such a case, is on the applicant to show by cogent evidence that the trademark, by reason of the use in has acquired distinctiveness in relation to his goods or services. 

Grounds for refusal of registration and laid down in each of the section 9(1) are independent. It is possible that a mark which is hit by section 9 (1)(b) or (c) may also hit by Section (9)(a) for being a devoid of any distinctive character.  Section (9) (1) prohibits registration of certain marks for the reason that a person should not unnecessary obtain a statutory monopoly through registration of such a mark which another mail is entitled to used.  However, a person is entitled to make a bonafide use of the mark, to describe his goods or place of manufacture.

According to Section 9(2) the following trademark shall not be registered, 

1. If the trademark tends to deceive the public or cause any confusion 

The plaintiff in the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd, misrepresented the nature of the good by labelling goods as “tanned leather cloth” where the one-third of the produce was tanned cloth

2. In any instance if the trademark hurts any religious sentiment of any demographic section of Indian citizens. For example, the usage of names or devices of deities would be disrespectful, hurting religious sentiments. The registration word “Ramayan” was denied on the basis of non-distinguishable aspect along with hurting religious sentiments. 
3. If the trademark displays any form of obscenity or contrary to morality. 
4. The trademark is prohibitory under the Emblem and Names (Prevention of Improper Use) Act, 1950. Section 4 of the Act prohibits any improper or inappropriate use of certain names and emblems for commercial and professional purpose. The act in accordance to Section 4 prohibits registration of any trademark or design in contravention of Section 3 of the Act. For example, the National Flag, Mahatma Gandhi, Pandit Nehru cannot be used as trademark. 

According to Section 9(3) a mark shall not be registered if it consists exclusively of, 

1. The shape of goods which result from the nature of the goods themselves, for instance an egg tray, substantially manufactured for the purpose of holding egg would fail to possess distinguishable character. 
2. The shape of goods must be necessary to obtain technical result. The squared shape of a pinned plug holds true in this scenario which obtaining technical result from standard shape, hence cannot be registered under Section 9 (3) (b). 
3. The shape of goods which adds substantial value to the goods, shapes are deemed to more effective than other alternatives for carrying out certain tasks. 

• Section 11 lays Relative Grounds for Refusal of Registration of Trademark. 

Expect in case of “honest concurrent use”, a trademark is not registrable, if there exists a possibility of misunderstanding on behalf of public due to its identical nature of the earlier trademark, and the goods/service are comparable. 

1. Section 11(2) and (3) – a trademark similar or identical to earlier mark 

In the case of Dilip Chand Agarwal v. Excorts Ltd, the respondent registration of “escort” for electric iron, etc. was denied as the word has been put into use by variety of products in the Indian Market. Section 11(3) states that registration of mark is refused if the law of copyright prohibits its use. 

2. Factors determining a trademark as Well-Known 

• The knowledge or recognition of trademark in various section of public, also including knowledge among the Indian public as a consequence of the promotion of the trademark 
• The geographical area, extent, or duration of any use of that trademark or extent, duration, geographical area as a result of promotion. Here promotion is inclusive of publicity, advertising, or presentation, in an exhibit of the goods or services;
• The geographical extent and duration of any registration or any publication for trademark registration under this Act to the extent they reflect the use or recognition of the trademark;
• The records of successful enforcement of the rights in that trademark.

 In particular, the extent to which the mark was recognized as a well-known trademark by any court on Registrar under that record. The Registrar is to take into account the following factors while determining as to whether a trademark is known or recognized in a relevant section of the public: 

1. the number of potential or actual consumers of the products or services.
2. the number of individuals who are a part of the distribution channel of the products or services.
3. the business circles involved in the products or services.

In the case of ICICI Bank Ltd. v. Chuandong the court held that the trademark ICICI was used extensively and widely distinctive. Henceforth, due to this phenomena the trademark acquires the significance of a well-known mark.

Factors not required to determine a mark as well-known

• the mark is in use in India,
• the mark was registered already,
• that a trademark registration application was filed in India.
• that the trademark is well known in; or was registered in; or in respect of which the registration application was filed in, any jurisdiction other than India; or that the trademark is well known to the Indian public.

3. Trademarks registered in Good faith

If a trademark was registered in good faith disclosing the material information to the Registrar on where the right to a trademark has been acquired through use in good faith before the commencement of this Act, nothing in this Act shall prejudice the validity of the registration of the trademark. Besides, it cannot hinder the right to use that trademark as it is similar to or identical with a well-known trademark.

We have gained a deep insight into the grounds of refusal of a trademark application. This piece of information will be of great use to businesses that are designing or looking to register their mark. Besides, it is always better to know the grounds of refusal before applying to make the trademark registration process smooth.