Summary
This post analyses Section 9(2) of the Trade Marks Act, 1999, outlining further absolute grounds for refusal of trademark registration in India. It discusses marks that are deceptive or confusing, those that may hurt religious sentiments, marks containing scandalous or obscene matter, and marks prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. The post explains how these provisions are intended to protect public interest and maintain the integrity of the trademark register. Case law is cited to illustrate the application of these legal standards. The analysis concludes by noting that further discussion of Section 9 will follow in the next post.
Overview: Section 9(2) of the Trade Marks Act, 1999
The previous part of this series examined Section 9(1) of the Trade Marks Act, 1999, which sets out the general absolute grounds for refusal of trademark registration. Section 9 as a whole thus provides the complete set of absolute grounds; Section 9(2) prescribes four further specific grounds under which a mark shall not be registered as a trademark:
“A mark shall not be registered as a trademark if:
- It is of such nature as to deceive the public or cause confusion;
- It contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- It comprises or contains scandalous or obscene matter;
- Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.”
Section 9(2)(a): Deception or Confusion
Marks that have the potential to deceive the public or cause confusion shall not be registered as trademarks under the Trade Marks Act, 1999. Deception or confusion may arise from similarities between the proposed mark and existing marks, from something contained within the mark put forward for registration, or from the manner in which the mark is used. Section 9(2)(a) is primarily concerned with the deceptive nature of a mark arising from something inherent in the mark itself — such as the nature, quality, or geographical origin of the goods or services — and not based on similarity between marks.
The primary object of this provision is to safeguard the interests of the public. Accordingly, if a mark is misleading or false, it will be refused registration notwithstanding that the applicant acted in good faith [Boots Pure Drug Co.’s Ltd. Trademark, [1937] 54 RPC 327], that no opposition was filed [Diamond T Motor Car Co.’s Application [1921] 38 RPC 373], or that the affected party has consented [Dewhurst’s Appl. (1896) 13 RPC 288].
Section 9(2)(b): Religious Susceptibilities
Section 9(2)(b) prohibits registration of a mark that contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India. This ground is particularly relevant given the common practice in India of employing religious symbols, names, and images of deities as trademarks.
Section 9(2)(c): Scandalous or Obscene Matter
Marks comprising or containing scandalous or obscene matter are not permitted to be registered under the Trade Marks Act, 1999. Whether a mark is scandalous or obscene is determined on a case-to-case basis, and the burden of proof lies on the applicant to establish by evidence that the mark does not fall within this prohibition.
Section 9(2)(d): Prohibited Emblems and Names
Section 9(2)(d) forbids registration of a mark if its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. That legislation prohibits the improper use of certain emblems and names for professional and commercial purposes.
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.