Refusal for a Trademark Application under Section 9(1) (b)

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)

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

We provide online brand registration services to help businesses secure their identity quickly and legally, from trademark filing to domain registration.

Strategies to Overcome Trademark Refusal Under Section 9(1)(b)

These are a few effective ways how you can master the Trademark Refusal under section 9 (1) (b):

Prove Brand Recognition: Show that people associate the trademark with your business through sales, ads, and customer feedback.
Provide Evidence of Long Term Use: If your brand has been used for many years, submit documents proving its market presence.
Modify the Trademark: Add unique words, symbols, or designs to make it more distinctive.
Claim Secondary Meaning: Show that even if the mark was common initially, it now represents your brand due to public recognition.
Use a Disclaimer: Agree not to claim exclusive rights over the descriptive part of the trademark.
Submit a Consumer Survey: Conduct a survey proving that customers link the trademark to your brand.
File an Appeal: If rejected, you can challenge the decision with strong supporting documents.

Conclusion

Indian Trademark law strictly prohibits the use of descriptive words in trademarks, similar to laws worldwide. Using common words as trademarks can be risky, as it may lead to confusion among the public and reduce brand distinctiveness.

FAQ

1. What to do if a trademark is refused?

You can appeal the decision, provide proof of brand recognition, or modify the trademark to make it unique.

2. What if I missed a Document submission?

If you missed a document submission, you can submit it later if the trademark office allows it. Delays may lead to rejection, so act quickly.

3. How long does it take for a Trademark Application to be approved?

Trademark approval takes 12-24 months, but if there are no objections, it may be registered within 6-12 months. Delays occur if issues arise.

4. How to apply for Trademark Application online?

Visit the IP India website, fill out the form, upload documents, and pay the fees.

5. What is Section 9 of the trademark Act?

It prevents the registration of trademarks that are descriptive, common, or lack uniqueness unless they gain distinctiveness.

Tags: refusal for a trademark application

7 years ago

Ishita Ramani

Ishita Ramani is a young woman entrepreneur and currently the Operations Director at Ebizfiling India Private Limited. In her entire career so far, she has led a team of 50+ professionals like CA, CS, MBAs and retired bankers. Apart from her individual experience on almost every facet of Indian Statutory Compliances, she has been instrumental in setting up operations at Ebizfiling.com! Read about her journey at- https://www.greatcompanies.in/post/ishita-ramani-operation-director-at-ebizfiling-india-pvt-ltd