REASONS WHY TRADEMARK CAN BE REJECTED

Trademark registration is a vital step for businesses and individuals seeking to protect their brand identity. A trademark not only offers legal protection but also helps establish trust and brand recognition in the marketplace. However, not every trademark application is successful. The Trademarks Act, 1999, outlines various grounds under which a trademark application can be refused. Understanding these reasons can help applicants avoid common pitfalls and ensure a smoother registration process. This article explores ten key reasons why a trademark might be refused registration in India.

TMWala can be your personal guild throughout your trademark journey and help you avoid every problem that can affect your trademark registration.  

REASONS WHY TRADEMARKS CAN BE REJECTED

1. LACK OF DISTINCTIVENESS

One of the most common grounds for refusal is the lack of distinctiveness in the mark. As per Section 9(1)(a) of the Trademarks Act,1999, a trademark must be capable of distinguishing the goods or services of one person from those of others. If a mark is generic, overly descriptive, or comprises common trade phrases, it may not be considered distinctive enough for registration. 

For example, using the term “Fresh Milk” for a dairy product may be rejected because it merely describes the product and does not distinguish the applicant’s goods from others.

The law seeks to prevent applicants from monopolizing commonly used terms or phrases that are essential for others in the industry to describe their own goods and services. Therefore, creating a unique, inventive, or arbitrary mark significantly improves the chances of successful registration.

2. SIMILARITY TO EXISTING MARKS

Section 11(1) of the Act deals with refusal based on similarity to earlier trademarks. If the proposed mark is identical or deceptively similar to an already registered mark or a well-known trademark, the application can be rejected. The rationale is to prevent confusion among the public and protect the interests of trademark owners who have already established rights in a particular mark.

Similarity is judged not only based on visual appearance but also on phonetic, conceptual, and overall commercial impression. The registrar examines whether the public is likely to confuse one mark with another. This makes conducting a thorough trademark search before applying essential to avoid potential conflicts.

TMWala helps conduct comprehensive searches and risk assessments, ensuring your brand doesn’t unknowingly overlap with existing marks and protecting you from potential disputes.

3. USE OF PROHIBITED OR SCANDALOUS MATTER

Under Section 9(2)(a), trademarks that contain or consist of scandalous or obscene matter, or anything likely to hurt religious sentiments, are not eligible for registration. This provision ensures that trademarks do not offend the moral or cultural sentiments of the public. Trademarks that include vulgar words, sexually explicit language, or derogatory references to any religion or community will be outrightly refused.

Applicants should therefore carefully evaluate the cultural and moral impact of their proposed trademarks, especially in a diverse and sensitive society like India.

4. NON-COMPLIANCE 

The procedural framework for filing a trademark application is governed by Section 18 of the Act. If an application fails to comply with the prescribed formalities such as incorrect classification of goods/services, inadequate representation of the mark, or missing essential information it can be rejected.

Applicants must ensure that they adhere to all the procedural mandates, including the correct use of forms, payment of fees, proper power of attorney (if applicable), and the accurate classification of goods and services according to the Nice Classification system. Even minor oversights in procedure can lead to significant delays or rejection.

TMWala ensures timely compliance so that your mark stays protected. 

5. USE OF GOVERNMENT SYMBOLS OR EMBLEMS

Section 9(2)(b) of the Trademarks Act,1999, along with the Emblems and Names (Prevention of Improper Use) Act, 1950, prohibits the use of marks that include names, symbols, or emblems associated with the government or any national institution. Trademarks containing representations of the national flag, Ashoka Chakra, or official government insignia cannot be registered.

This provision is intended to prevent the misuse of symbols that are of national importance or public trust. Such symbols are protected to maintain their dignity and prevent any commercial exploitation or misleading implications of governmental endorsement.

6. BAD FAITH 

Section 11(3)(a) addresses the issue of trademarks filed in bad faith. If it is found that the application was filed with a malicious intent, such as copying a competitor’s mark, misleading the public, or attempting to gain an unfair advantage, the registrar can refuse the application.

Trademark law places a premium on honest business practices. Applications that appear to be opportunistic or deceptive, such as registering a mark similar to a foreign brand already known in India, are often challenged and rejected. Courts and tribunals are especially harsh on applicants who act in bad faith, and such behaviour can lead to penalties or cancellation of the mark.

7. GENERIC WORD

Section 9(1)(b) denies registration to marks that have become generic. Over time, some trademarks lose their distinctiveness due to widespread and indiscriminate use. When a mark becomes a common term used to describe a general category of goods or services, it is said to have become genericized and loses its protection under trademark law.

For instance, if the public starts using a trademarked term to refer to all similar products regardless of origin, the mark may be deemed generic. Applicants must ensure that their mark retains its association with a particular source and is not used as a general descriptor in the market.

8. NON-USE OF TRADEMARK

Under Section 47, a registered trademark can be removed from the registry if it has not been used for a continuous period of five years from the date of registration. Additionally, if it can be shown that the applicant had no bona fide intention to use the mark at the time of registration, it may also be subject to cancellation.

Non-use weakens the mark’s relevance in the marketplace and may deprive others of the opportunity to use it. Regular and documented use of the trademark in commerce is necessary to retain registration and enforce trademark rights.

9. FAILURE TO RESPOND TO EXAMINATION REPORT

As per Section 18(5), once a trademark application is examined by the registry, an examination report is issued detailing any objections. If the applicant fails to respond to these objections within the prescribed time frame, usually 30 days, extendable by request the application may be deemed abandoned.

Timely and comprehensive responses are crucial to address any issues raised in the report. Applicants should provide legal justifications, documentary evidence, and persuasive arguments to overcome objections. Silence or incomplete responses can lead to outright rejection.

10. OPPOSITION FROM THIRD PARTIES

After a trademark is accepted by the registry, it is published in the Trademarks Journal for public scrutiny. As per Section 21, any third party can file a notice of opposition within four months from the date of publication. If an opposition is filed, the application enters the opposition proceedings, where both parties can present their arguments and evidence.

Oppositions are often filed by companies that believe that the new trademark may infringe on their existing rights or damage their brand. If the opposition is upheld, the application can be refused. Therefore, it’s essential to prepare for potential opposition and have a legal strategy in place to defend the application.

TMWala supports clients in drafting replies to oppositions, preparing evidence, and representing them in hearings ensuring your trademark has the best possible defence.

CONCLUSION

Trademark registration in India is governed by a well-defined legal framework designed to promote fair competition and protect the rights of both businesses and consumers. Understanding the grounds on which trademark applications can be refused helps applicants make informed decisions and avoid unnecessary legal hurdles.

From ensuring distinctiveness and procedural compliance to defending against oppositions and maintaining actual use of the mark, every step in the trademark process requires diligence. Consulting a trademark attorney or IP expert can further improve the chances of securing a successful registration. Ultimately, a well-chosen and legally sound trademark is not just a legal asset, it’s a cornerstone of brand identity and business success.

TMWala simplifies this journey, offering expert filing services, proactive compliance checks, and strategic legal support so that your brand gets the protection it deserves. In an increasingly competitive marketplace, a strong, registered trademark is not just a legal asset it is the foundation of brand credibility and long-term success.