SECTION 9 OF THE TRADE MARKS ACT, 1999: ABSOLUTE GROUNDS OF REFUSAL OF REGISTRATION

Introduction 

Trademarks include any sign, symbol, slogan, mascot or phrase used in business which help to distinguish the goods and services of one person from another. Basically, the purpose of a trademark is to act as a source identifier, associating the goods & services bearing a particular mark to its originating source. Ex: The use of the trademark ‘Kit Kat’ acts as a source identifier for wafer chocolates originating from the source of Nestle. But, not all words can be considered as a trademark. Trademark act specifically lays down criteria and characteristics a mark must fulfill to be registrable as a trademark. If a mark does not fulfill the criteria so enshrined under the act, such mark is liable to be refused registration. Under the Trade Marks Act, 1999 there are 2 main grounds for refusal of a trademark, namely:

1. Absolute grounds provided under section 9 of the Act

2. Relative grounds provided under section 11 of the Act

In the Article, we shall explore the absolute grounds for refusal of trade mark, provided under the Section 9 of the Trade Marks Act, 1999. For the purpose of better comprehending the article, certain essential terms have been defined as under: 

Basic Terminology used in Section 9

1. Descriptive: It refers to the description with respect to character, quality, nature or purpose of the relevant goods or services. For example, marks like “Speedy services” for courier services describe the characteristic of the service concerned.  

2. Distinctive: It refers to the inherent capability of the marks to identify a product’s source; it makes it entitled for registration. For example, marks like “Nippon” for cameras fall under a distinctive category.

3. Customary mark: It refers to the marks that are commonly used as trade expressions in the industry. Such marks cannot be considered for registration as they are not capable enough to differentiate the product of one business from that of another. For example, “Linen Blend” for textiles. 

4. Generic words: These are referred to the words that are most commonly used with reference to the concerned goods or services. For example, Marks like ‘Notebooks’ for stationary. 

To understand the provision in depth and with clarity, we will deal with each sub-section separately as under:

Section 9(1): Lack of Distinctiveness & Descriptive Marks

9(1)(a): This sub-section provides that a trademark shall not be entitled to registration if the mark that lacks distinctive character or does not act as a unique identifier, it includes:

1. Likely to create confusion or lack distinctiveness  
2. Generic or common mark for goods or services involved.

ILLUSTRATION:

• A generic term like “MILK” for dairy products – (Rejected)
• A unique name like “AMUL” for dairy products – (Accepted)

9(1)(b): This sub-section provides that a trademark shall not be entitled to registration if it describes the quality, quantity, purpose, or origin of the goods or services.

ILLUSTRATION

• A descriptive mark like “FRESH WATER” for water – (Rejected)
• A unique mark like “BISLERI” for water – (Accepted)

9(1)(c): This sub-section provides that a trademark shall not be entitled to registration if it has become customary in businesses, meaning it is commonly used in the industry that it cannot be registered. 

ILLUSTRATION

• “AUTO” for motor cars or any of their parts or relevant service.      (Rejected)

Proviso of Section 9(1): In case a mark has acquired distinctiveness due to long and extensive use or it has become well-known, it could be granted registration. 

Section 9(2): Prohibition of Deceptive, offensive or illegal trademarks

9(2)(a): This sub-section provides that a trademark shall not be entitled to registration if the mark can mislead or deceive the public regarding the nature, quality, or origin of goods or services.   

ILLUSTRATION 

• A misleading mark like “HERBAL CURE” for synthetic medicines      (Rejected)

A genuine mark like “DABUR HERBAL” for Ayurvedic products       (Accepted)

9(2)(b): This sub-section provides that a trademark shall not be entitled to registration if the mark is of such a nature that it could hurt the religious sentiments of the public

ILLUSTRATION

• A mark like “KRISHNA WHISKEY” for alcoholic beverages could be hurtful        (Rejected)
• A distinctive mark like “ROYAL STAG” for alcoholic drinks        (Accepted)

9(2)(c): This sub-section provides that a trademark shall not be entitled to registration if the mark is such that it contains offensive, vulgar or indecent words. A mark must align with public morality and decency standards. 

ILLUSTRATION An offensive mark like “Naked & Nasty” for a clothing brand       (Rejected)

9(2)(d): This sub-section provides that a trademark shall not be entitled to registration if the a mark containing names which are prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 which are, inter alia, national emblems, government signs, and international organization names.

ILLUSTRATION 

• Use of Ashok Chakra or “WHO” as a mark      (Rejected)

Section 9(3): Prohibition of Trademarking Product Shapes

9(3)(a): This sub-section provides that a shape mark could be registered If a product depicts its natural form, it cannot be registered. 

ILLUSTRATION 

• Use of Mango shape for selling Mangoes      (Rejected) 
• “KITKAT” four-fingered shape       (Accepted)

9(3)(b): This sub-section provides that a shape mark could be registered If a mark describes the function of the product, it cannot be registered. 

ILLUSTRATION 

• Ridged shape of a plastic bottle cap, which is essential for its functioning      (Rejected) 
• Coca-Cola bottle Shape, not a essential function        (Accepted)

9(3)(c): This sub-section provides that a shape mark could be registered If a mark is of such a shape that it adds a substantial value, meaning the shape itself is the primary reason for being preferred by the public, then it cannot be registered

ILLUSTRATION

• Designer Handbag Shape which influences customer choices      (Rejected)
• A unique branding like “Toblerone” chocolate shape       (Accepted)

Explanation of Section 9(3): It provides that the type of the goods or services associated cannot be the sole reason for the rejection of an application. The refusal must be based on the trademark. 

ILLUSTRATION

• Trademark “LIFELINE” for a hospital: It may be rejected for being descriptive, but not because it is used for medical services.

CASE LAWS ON SECTION 9

1. M/S Hindustan Development Corporation Ltd. V. The Deputy Registrar of Trademarks

https://indiankanoon.org/doc/1401045

The Hon’ble Calcutta High Court observed in this case, it is true that the introduction of the word ‘direct’ shows that the mere fact that the word ‘mark’ has some reference with the goods & services does not render it outrightly incapable of registration. The Reference must be a direct one. A mere suggestive reference is not sufficient. In the present case, the mark “Rasoi”, as I have already stated, directly refers to the character of the goods which are used ordinarily for cooking purposes.

It addresses the distinction between descriptive marks and suggestive marks, emphasizing that a mark that directly describes the product or services concerned cannot be registered, whereas marks that only suggest a connection may be allowed for registration.

2. Lal Babu Priyadarshi vs Amritpal Singh

https://indiankanoon.org/doc/53428453

In this case, the Hon’ble Supreme Court held that no single person or entity can claim exclusive trademark rights overreligious books like Quran, Bible, Guru Granth Sahib, Ramayan etc. Such names are for all and not to be monopolized as a trademark by an a single entity or person.

The case emphasizes the use of religious texts, highlighting that such texts are not private intellectual property; rather, they are considered as sacred and universal, which falls under the public domain. Granting the registration over the names of religious books could lead to their misuse or might hurt the religious sentiments of certain communities. 

Conclusion: SECTION 9 OF THE TRADE MARKS ACT, 1999

Registration of a mark thus not only plays the role of a regulatory requirement but further ensures the best measure to ensure the interests of business concerns and enable fair play in the market. the Trade Marks Act 1999 maintains the integrity of trade marks by preventing common, descriptive, misleading, deceptive or functional marks.  This section safeguards both business competition and consumer interests. Understanding these absolute grounds for refusal helps businesses create strong, enforceable trademarks that stand out in the marketplace while complying with legal standards.