Grounds for refusal or objection in Trademark

Under the Trademarks Act, 1999, the grounds for refusal or objection to a trademark application are divided into two main categories: Absolute Grounds (Section 9) and Relative Grounds (Section 11), along with some specific provisions under Sections 13 and 14.

1. Absolute Grounds for Refusal (Section 9)

These apply regardless of existing trademarks and focus on the nature of the mark itself:

• Lack of Distinctiveness: Marks that cannot distinguish the goods/services of one entity from another.
  Example: “Cold and Creamy” for ice cream.
• Descriptive Marks: Marks that describe the quality, purpose, value, or geographical origin of goods/services.
  Example: “Acne Cream” for skincare.
• Generic or Customary Terms: Words commonly used in everyday language or trade.
  Example: “Aspirin” as a general term for pain relief.
• Deceptive Marks: Marks that mislead the public about the nature or quality of the product.
  Example: “Orange Juice 100%” for a drink that isn’t 100% juice.
• Offensive or Prohibited Content:
  • Marks that hurt religious sentiments
  • Marks containing obscene or scandalous matter
  • Marks prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950
• Functional Shapes: Marks consisting solely of the shape of goods resulting from the nature of the product.
  Example: A square soap shape cannot be registered if that shape is standard for soaps.

2. Relative Grounds for Refusal (Section 11)

These involve conflicts with existing trademarks:

• Similarity or Identity with Prior Marks: A mark that is identical or deceptively similar to an already registered trademark in the same or related class may be refused due to potential public confusion.
  Example: Attempting to register “PS5” while it’s already pending/registered.
• Same Mark in Different Classes: If the same or similar mark is used in a different class but could still cause confusion, it may also be objected to.
  Trademark searches help assess this risk.
• Exception – Honest Concurrent Use: If two parties have independently used the same or similar mark honestly and concurrently (e.g., one in Punjab and one in Tamil Nadu), the mark may be registered with territorial limitations.

3. Specific Provisions (Sections 13 & 14)

• Chemical Elements or Compounds: Names that are generic to a single chemical element or compound cannot be trademarked in relation to chemical products.
• Connection with Living or Deceased Persons:
  • A mark that implies a connection with a living person requires that person’s consent.
  • If the person is deceased (within 20 years of application), consent from legal heirs is necessary.

These grounds ensure that trademarks serve their primary purpose — to uniquely identify goods or services — without misleading the public or infringing on others’ rights.

Talk to Our Experts

Ready to make the shift to a streamlined compliance strategy? Talk to our experts and see how we can help your business stay ahead of the curve!

Request A Demo