Grounds for refusal of a Trademark Registration in India under Section 9 and 11

Introduction

Trademarks are protected by the Trademarks Act of 1999. To obtain a trademark for intangible assets, a company or individual must apply to the Registrar of Trademarks. The registrar reviewed the submitted application for any loopholes on the predetermined grounds. After meeting the basic requirements, the registrar approves the application and issues the certificate to the applicant. The Trademark Act of 1999 also specifies which trademarks are ineligible for registration. So let’s have a closure look at the grounds for refusal of a Trademark Registration in India under Section 9 and 11, along with that this article will include Meaning of Trademark Registration.

Trademark Registration in India

Trademarks are marks used to identify goods or services produced by a specific company or individual. The marks make it easier for the consumer to associate a product with the manufacturer.

The marks are legally protected to ensure that they are not used to misrepresent products or confuse consumers. A trademark must be registered in order to be legally protected. The registration of the trademark protects the mark from being used illegally and grants the owner of the mark a complete ownership.

Absolute Grounds for refusal of a Trademark Registration

Section 9 of the Trademark Act of 1999 discusses the absolute grounds for refusing to register a trademark. Any trademark that falls within the scope of this act is ineligible for registration. The following is a list of trademarks that fall under this category.

1. A trademark that lacks distinctive character cannot be registered.
2. Trademarks are indications or marks that are used in commerce to define the quantity, quality, type, values, intended purpose, or geographical origin of goods or services rendered.
3. Trademarks that exclusively enclose indications or marks that have become common in established trade practices.
4. Trademarks that cause confusion in the public domain.
5. Trademarks that are sensitive and have the potential to interfere with the religious sensibilities of any class of Indian citizens.
6. Trademarks containing obscene or scandalous content.
7. If the use of a trademark is prohibited by the Emblems and Names (Prevention of Improper Use) Act of 1950.
8. Trademarks consisting of marks resulting from the nature of the goods themselves.
9. Trademarks enclose marks that add significant value to the goods.
10. Trademarks are marks of the shape that adds significant value to the goods.

Important Note: The Act includes an exception for the first three points. According to the act, a trademark that falls under the regime of the first three points will be denied registration unless the trademark possesses certain characteristics such as novelty and distinctiveness.

Relative Grounds for Trademark Registration Refusal in India

Section 11 of the Trademark Act clarified the reasons for refusal of trademark registration. The section contains an exception regarding the grounds for refusal. If the exceptions are met, the trademark can be registered under this section.

Section 11(1) of the Trademark Act

According to Section 11(1) of the Trade Marks Act of 1999, a trademark is ineligible for registration if,

1. It resembles the earlier trademark in some ways.
2. It has the same visual appeal as the previous trademark, which covers a specific category of products and services. This may cause widespread consternation.

Section 11(2) of the Trademark Act

Section 11(2) specifies the following reasons for refusal:

1. Trademarks that are likely to stymie the previously well-known trademark in India
2. A trademark that contains harmful characteristics that may impair the distinctive character of a similar well-known trademark in India.

Section 11(3) of the Trademark Act

Section 11(3) specifies the following reasons for refusal:

1. The use of the trademark is restricted by the prohibited passing-off law, which protects the unregistered trademark in the trade.
2. The use of a trademark is prohibited by the Copyright Law.
3. The refusal of registration is not possible for trademarks cited in Sections 11(2) and 11(3) if an objection is raised by the previous trademark owner during the opposition proceedings.

If Trademark is applied for more than one class

If the appellant used Form TM-A to apply for a trademark in more than one class, he must file an appeal using Form-3. The filing fee for this appeal is Rs. 10,000. Every appeal must be verified by the appellant. Once filed, the appeal will be reviewed by the Deputy Registrar.

If he finds any flaws, he will give the appellant time to correct the flaws and refile the appeal. If the appellant fails to do so, the case will be considered abandoned. If the Deputy Registrar finds no flaws, he will assign it a serial number. The case will be heard in the court with the appropriate jurisdiction.

If one of the parties fails to appear for the hearing on the scheduled date, the case may be heard on the merits, decided ex party, or dismissed at the court’s discretion. If the case is decided ex party or dismissed, the IPAB may set aside the decision if a petition is filed within 30 days of the order’s date.

Conclusion

The Trademark Act protects the interests of companies and individuals who own registered trademarks, ensuring that their intangible assets are not misappropriated. Individuals have the right under the Trademark Act to sue the defaulter for counterfeiting the registered brand or logo.