What is Section 9 (1) (B) of Trademark? And How to overcome a refusal for a Trademark Application under Section 9(1) (b)?

Introduction

If the registrar refuses a trademark under this rule, it means the trademark is too common or generic to be registered. However, you can still secure approval by proving that people recognize it as unique or that it has gained distinctiveness over time. This article will cover the best strategies to overcome a Section 9(1)(b) refusal and successfully register your trademark.

What is a Section 9(1) (b)?

Section 9(1) (b) restricts the registration of trademarks that directly describe a product or service and are not unique. However, exceptions are made if the mark has gained distinctiveness over time through use or is already well recognized in the market.

Terms mentioned under section 9 (1) (b) of the Trademarks Act

Under Section 9(1)(b) of the Trade Marks Act, 1999, the registrar cannot register trademarks that directly describe certain attributes of goods or services unless they have acquired distinctiveness.

• Kind: Describes the type or category of a product (e.g., “Organic” for food).
• Quality: Indicates a feature or standard (e.g., “Pure” for water).
• Quantity: Refers to the amount or size (e.g., “100% Natural”).
• Value: Represents price or worth (e.g., “Premium”).
• Intended Purpose: Explains what the product is used for (e.g., “Pain Relief” for medicine).
• Geographical Origin: Indicates the place it comes from (e.g., “Darjeeling” for tea).

Reasons for Refusal of Trademark Application under Section 9(1) (b)

1. Descriptive Trademark: The trademark directly describes the product or service (e.g., “Fresh Milk” for dairy products).
2. Lack of Distinctiveness: The mark is too common and does not stand out as a unique brand.
3. Generic Terms: You cannot register words commonly used in the industry (e.g., “Best Quality” for clothing).
4. Indicates Quality or Quantity: Marks that mention features like “Pure,” “Premium,” and “100% Natural” are prohibited.
5. Shows Intended Purpose: Authorities can reject trademarks that explain the use of a product (e.g., “Pain Relief” for medicines).
6. Geographical Name: If a trademark includes a location name (e.g., “Darjeeling” for tea), the authorities may refuse it.
7. No Acquired Distinctiveness: If the mark has not gained public recognition through long term use, the authorities won’t approve it.”