An ideal Trademark should be easy to speak, remember and spell. It should be small, simple and attractive and suggest the desirable qualities of the goods or services to which the mark pertains. It should be different from other registered trademarks of the same class and should be registrable.
The Trade Marks Act, 1999 defines what marks are not register-able under Sections 9(Absolute grounds for refusal) and 11(Relative grounds for refusal).
Absolute grounds for refusal:
As per Section 9(1) of the new Act, a Trade Mark shall not be registered:
- which is devoid of any distinctive character, i.e. not capable of distinguishing goods/services of one person from those of the others. A trade mark is not registrable unless it is distinctive.
- This indicates quality or other descripttive character. For example, quantity, kind, intended purpose, values, geographical origin etc. Words which are descripttive of goods are not considered prima facie distinctive. A common word having reference to the character or quality of goods and having no reference to anything else cannot be registered as a trade mark.
- Which have become customary in the current language or in the bona fide or established practice of the trade i.e. words in the public domain are prohibited from being registered as trademarks, unless they acquire distinctive character.
However, the Proviso to Section 9 provides that the above categories of marks are registrable if they have acquired a distinctive character as a result of use or is a well-known trade mark.
The Explanation to Section 9 lays down that the nature of goods/services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration. Thus, Section 9 contains enabling provisions as well, which facilitate registration.
Section 9(2) lays down that a mark shall not be registered if:
- It is of such nature as to deceive the public or cause confusion.
- It contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the Indian citizens.
- It contains scandalous or obscene matter.
- Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Section 9(3) provides refusal of registration in relation to shapes. A mark shall not be registered if it consists exclusively of:
- The shape of goods which results from the nature of goods themselves; or
- The shape of goods which is necessary to obtain a technical result; or
- The shape which gives substantial value of the goods.
For example, an apple cannot be registered either for apples or for packaging in the shape of an apple. However, the prohibition would not be operative if the shape of goods is associated with other features in the trademark. The mark as a whole, containing the above-mentioned shapes along with additional matter, may be registered if possesses inherent or acquired distinctive character.
Section 10 provides that the colour elements in the visual presentation of the trade mark may also be registered. If the registration does not mention the colours, the trademark is deemed to be registered for all colours.
Relative grounds for refusal:
Section 11(1) provides that a subsequent mark would be refused registration if:
- It is identical or similar to an earlier trademark,
- The goods/services covered by the subsequent mark are identical or similar to the goods/services covered by the earlier mark, and
- There is likelihood of confusion or association with the earlier mark on the part of the public if the subsequent mark is allowed.
However, Section 12 provides an exception by laying down that in the case of honest concurrent use or other special circumstances, registration may be permitted.
The nature of deception or confusion may arise in the following ways:
- Deception or confusion as to Goods: A person may buy the goods seeing one mark thinking that it is the brand which is in his mind, which in fact, is not the case.
- Deception or confusion as to Trade Origin: A person may buy the goods thinking that they are coming from the same source as some other goods bearing a similar mark which he is familiar with.
- Deception or confusion as to Trade Connection: The similarity in a mark may lead the consumer to believe that there is a connection between the goods and the owner of the registered (prior) trademark.
It is not necessary that there should be an intention to deceive or cause confusion. It is the probable effect on the customer that has to be considered.
For more read here: What Can and Cannot be Registered as a Trademark