Grounds for Refusal of Trademark Registration – Part 1

This post was first published on 2nd July, 2014.
 

A trademark means a mark capable of being represented graphically, capable of distinguishing goods or services of one person from those of others. Hence for a mark to be registered as a trademark under the Trade Marks Act, 1999, it has to satisfy three requirements which include:

1. It should be a mark
2. It should be capable of being represented graphically
3. It should be capable of distinguishing the goods or services of one person from those of others

Apart from these requirements, a mark should not fall under any grounds for refusal of registration of trademarks. A trademark application can be refused registration on either absolute or relative grounds as provided under Section 9 and 11 respectively. These grounds for refusal of registration shall be discussed in detail as part of a series on the grounds of refusal of registration of trademarks.

To begin, one must understand that Section 9 has been inserted in the Trade Marks Act with the object of ensuring that a trader should not obtain a statutory monopoly in a word, which another trader might legitimately wish to use.

Section 9 states that:

“Absolute grounds for refusal of registration: (1) The Trade marks –

(a) Which 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;

(b) Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade,

Shall not be registered:

Provided that a trade mark shall not 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 is a well-known trademark.”

As can be seen, Section 9(1)(a) prohibits registration of marks, which are devoid of any distinctive character. A word or words to be really distinctive of a person’s goods must be generally incapable of application to the goods of anyone else. Distinctiveness can be of two types: Inherent and Acquired. To be distinctive or capable of distinguishing the goods, there may be some inherent qualities or distinguishing characteristics in the mark itself, which make it distinctive or capable of distinguishing the goods of one person from those of others.

In considering whether a trademark is inherently distinctive, one must look at the mark in isolation from any special surrounding circumstances and without regard to any extrinsic evidence of any such circumstances and to consider whether looking at the mark by itself in that way, it could be said to be capable of distinguishing the goods of the applicants from similar goods of other traders. The Act also recognizes that a mark can acquire distinctive character by its use, which will be discussed while explaining the proviso to Section 9(1).

Section 9(1)(b) prohibits registration of trademarks, which consist exclusively of marks or indications, which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or rendering the service or other characteristics of the goods or service. This provision applies to marks that are both descriptive and non-distinctive in relation to the goods or services for which the protection is sought. While analyzing a mark, one has to look at the word, not in its strict grammatical significance, but as it would represent itself to the public at large who are to look at it and form an opinion of what it connotes, as observed in Keystone Knitting Mills Ltd.’s TM [(1928) 45 RPC 193]

Finally, Section 9(1)(c) excludes marks which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of trade from being registered under the Act. Clause (c) to Section 9(1) has been inserted in the Act primarily to protect the free use of indications or marks which are already in use in the trade, from being monopolized as a trademark.

That being said, marks that are devoid of distinctive character and those of descriptive nature may be registered if they have acquired a distinctive character as a result of its use or if it is a well-known trademark. A descriptive mark may be granted registration if it has acquired a secondary meaning which identifies it with a particular product or as being from a particular source. In this regard, the various factors that are taken into consideration to determine if a particular mark has acquired distinctiveness include, the length of use, volume of goods marketed, extent of service provided, use of an advertising slogan, use in combination of other marks, advertising expenditure, evidence of trade and consumer surveys.

We will be bringing to our Readers, the remaining grounds for refusal of registration of trademarks in the days to come.