The Trade Marks Act, 1999 defines a “trademark” under Section 2(1)(zb). A trademark means “a mark capable of being represented graphically and which is capable of distinguishing the goods and services of one person from those of others and may include the shape of goods, their packaging, and combination of colors.” In simpler words, a trademark is a sort of intellectual property that consists of a visual or written representation of signs, symbols, words, a mark, or a logo that can be used to identify and differentiate one product from another. The primary goal of trademark law is to protect these indications, symbols, slogans, logos, and marks against unauthorized use and abuse by individuals who are not legitimately registered trademark owners.
Grounds for Trademark Refusal
When a trademark application enters the examination period, the examiner looks at the application. During this time, the examiner looks for additional trademarks that have been registered or are in the process of being registered. If the registrar is satisfied with the application, it is sent to the trademark journal for publication. If the examiner has a problem with the trademark application, he or she may object.
Under Trade Mark Act 1999, the ground for refusal for registration of trademark fall under two categories:
- Section 9: Absolute ground for refusal
- Section 11: Relative ground for refusal
The status of the application is changed to "Objected" if the examiner expresses objections. After that, the applicant must respond to the objection by filing a reply to the objection. If the examiner is pleased with the response, the application will proceed to the next level. The trademark journal is where trademark applications are published.
Absolute ground for Trademark refusal
Section 9: Under section 9 of the Trade Mark Act 1999, the absolute ground for Trademark refusal is defined.
The trademark cannot be registered, if the marks:
- lacks any distinctive character.
- consists of elements that indicate the product's kind, quality, quantity, values, geographical origins.
- become common in daily language use. As the mark which became common falls in the public domain.
- is deceiving in nature, which may create confusion for the public.
- is protected under the Emblems and Names Act.
- contains elements that may hurt the religious sentiments of the public.
- contain scandalous or obscene matter.
Case-study
In Hindustan Development Corp. v. Deputy Registrar of Trade Marks, the issue was whether the word "Rasoi" may be registered as a trademark for hydrogenated groundnut oil or not. The word must be "distinctive" to be registered for trademark. This uniqueness must demonstrate that the items for which the mark is used are the proprietor's goods and that the proprietor's goods can be distinguished from those of others.
Furthermore, even if the word "rasoi" is distinctive, it cannot be registered because it is a common word, and no one can use such words exclusively while denying others access to the language's common words, which are public property. As a result, the word "rasoi" could not be registered in this case since it lacked distinctiveness in relation to the applicant's goods.
The Exception to Absolute Ground
The absolute grounds have a few exceptions. For instance, if a mark develops distinct qualities over time as a result of repeated use. For example, 'Metro' is a public transportation system that is also a trademark for footwear.
Assume that before filing for registration, the mark has developed a distinctive character in the marketplace. In that instance, even if the registrar may decline it on absolute grounds, it could be awarded a trademark. However, it must be proven that it has developed the distinguishing feature as a result of repeated use.
Relative Ground for Trademark Refusal
Section 11: Under section 11 of the Trade Mark Act 1999, the relative ground for Trademark refusal is defined.
Here are some grounds on which trademark applications are refusable under relative ground:
- If the mark is similar to the mark, which is already registered earlier or is in the registration process.
- If the earlier mark is well known, using a similar mark for registration may provide an unfair advantage to the owner or if the mark may be detrimental to the original mark.
- If the mark may confuse consumers because of the similarity with the earlier trademark.
- If the mark is prevented by the law of passing off, protecting an unregistered trademark.
- Mark is infringing copyright content under copyright law.
Case-study
In the case of Carrefour v V Subburaman, the petitioners have been using the phrase CARREFOUR for their retail business around the world since 1960. From July 2000, the proprietor filed a passing-off lawsuit against the respondents for utilizing the trademark 'Carrefour' for furniture. In this case, the trademark was not registered in India in the applicant's favor about furniture. In the case of furniture, it was registered in other nations, and in the case of other products, it was registered in India. As a result, a considerable portion of the public recognized and linked the applicants' goods with the trade name "CARREFOUR," and was inclined to make a trade connection between the respondents' and the applicant's products. As a result, the court determined that the trademark "CARREFOUR" is well-known.
Exception in Relative ground
There are some exceptions to the relative grounds. For example, if the owner of the earlier trademark gives his consent to the applicant of the newer trademark. Consent should be in the form of an affidavit. Also, if the owner of the earlier mark does not object, then the application for the newer mark should not be refused.
Additional Section for Trademark Refusal
Section 13: Registration will be denied if any chemical element or compound, as well as international non-proprietary names, are included in the trademark.
In conclusion, before filing a trademark application for registration, it is important to verify the marks. Whether the mark will be refused under the grounds of section 9 or 11 of the trademark act, 1999, these sections are also known as an absolute or relative ground, respectively. It can help save the applicant's time and money and the burden of contesting in the proceedings.