We all know that creative and thoughtful branding is a key to many businesses. Entrepreneurs put a lot of time, efforts and money in conceptualizing a logo as well as trade name for its business. However, while attention is often given to creative side of the branding, most people underestimate the need to understand Trademark Law at the outset. It is only after a logo or trademark is fully conceptualized, people turn to trademark registration.

The knowledge of trademark law and most importantly the law regarding which marks cannot be registered, at such a belated stage, most often has the capability to put the entire branding efforts, back to square one.

Whilst which Mark or Logo will get registration cannot be guaranteed considering the complexity of trademark law, we strongly advise you to understand Absolute Grounds and Relative Grounds of Refusal of Registration of Trademark, under the Trade Marks Act, 1999.

If you are in the process of conceptualizing a new Trademark for your business, information under this page will guide you to understand what types of trademarks will definitely invite objections from the Registrar. Understanding of Absolute and Relative Grounds of refusal of trademark registration at the outset will put you a step ahead in the process of thoughtful branding, rather than only creative branding.

The information under this page is an attempt to guide you on essential elements to be considered at the time of conceptualizing a trademark and to help you understand basics of, grounds on which Trademark registration can be refused. However, do not consider this information as legal advice. We recommend you to seek a legal advice from a qualified and experienced attorney in Trademark Law, who can review your Mark and advice you based on applicable law.

• IDENTICAL TRADEMARK AND SIMILARITY OF MARKS ( Section 11) :

  According to Section 11(1) of the Trade Marks Act 1999 - a trademark shall not be registered if, because of its identity or similarity with earlier trademark(s) and because of identity or similarity of goods or services covered by such trademarks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.

  1. Identical Mark : A mark is identical with the trademark where it reproduces without any modification or additions, all elements constituting the trademark or where, viewed as a whole it contains differences so insignificant that they may go unnoticed by an average consumer.
  2. Similarity of marks : The terms similarity of trademarks is to be construed as "deceptively similar" which expression has been defined "as so nearly resembling that other mark as to be likely to deceive or cause confusion".
  3. Likelihood of confusion : For likelihood of confusion to exist it must be probable; it is not necessary that actual confusion has arisen or should arise in the mind of public i.e. the average consumer.

     The three most relevant factors in examination of trademark applications by the Examiner will usually be:

     • the similarities and differences between the respective trademarks,
     • how distinctive the mark is, and
     • the degree of similarity between the respective goods or services.

     While considering the objection under section 11(1) of the Trade Marks Act 1999, the Examiner considers overall structural, visual & phonetic similarity and similarity of the idea in the two marks and the fact as to whether, it is reasonable likelihood to cause confusion amongst general public.

• MARKS DEVOID OF ANY DISTINCTIVE CHARACTER :

  • Single colour:

    Marks consisting of a single colour will usually be liable to objection under Section 9(1)(a) of the Act because they inherently lack the capacity to distinguish. Wherever the exclusive right to color is sought, weighty evidence should be necessary to overcome objection under Section 9(1)(a) of the Act.

    If a particular combination of colours of packaging has become distinctive, in fact, as indicating the goods of a particular trader, there is no reason, why it should not be protected by registration.

• Marks having direct reference to the kind, quality, quantity, intended purpose, value, geographical origin ,or the time of production of goods or rendering of services, or other characteristics of goods or services:

  1. Kind

     The expression "kind" would include the name of the goods or services claimed and any words recognized as indicating size or type, such as "old", "new" "Extra large" or "Large" or "Small" would fall in this category and as such will be objectionable in respect of any goods or services.

  2. Quality

     Laudatory words such as "GOOD" or "BEST" are not registerable for any goods or services since all traders should be equally free to use them in the course of advertising their products.

  3. Quantity

     Numeral 12 would not, for e.g. be acceptable for wine (12 bottles = one case of wine) or 20 or numeral 200 as a pack of cigarettes. Similarly, "1000" would not be acceptable for butter (1000 gm - 1 Kg).

  4. Intended Purpose

     Words which refer directly to the use to which the goods are put or which describe the consequences of providing the services are not acceptable. Examples are: KETTLE CLEAN for preparations for cleaning kettles; TWIST AND CURL for hand implements operated by a twisting action for curling the hair; SLIM AND FIT for slimming preparations. Words which describe the effect of the goods / services would also be open to objection as a characteristic of the goods /services, for example RUSTFREE for paints and articles made of steel.

  5. Value

     Words or symbols which merely serve to indicate the worth merit or importance of the goods or services are not acceptable. Examples are "TWO FOR ONE"; "WORTH THEIR WEIGHT IN GOLD".

  6. Geographical Origin

     Name of places with populations of less than 5000 in India will prima facie be acceptable. However if the location covers a large area having a reputation in respect of the goods or service, the application may attract objections.

     • Name of rivers, mountains, seas, lakes, etc. will be considered prima facie acceptable in respect of goods, not associated with the geographical feature. For example, in respect of "fish" in class 29 the names of rivers or seas will not be acceptable.
     • Names of mountains in respect of agricultural produce will be considered as non-distinctive and will not be acceptable.
     • Names of streets such as Wall street, Dalal street which have strong links with financial services such as stocks and investments will entail objections in respect of such services or related goods.
     • Geographical names used fancifully

       Geographical names, used in a fanciful manner, such as NORTH POLE or MOUNT EVEREST for bananas, which are not likely to be taken as indicating the origin of the goods, can be accepted.

     • Names of rivers, seas & deserts etc.

       The names of rivers, seas, lakes and mountains etc. are usually accepted prima-facie for goods which are not associated with these geographical features. However, "Ganga" or "Kaveri", the name of rivers, which are also better known personal names, can be registered only on the basis of acquired distinctiveness.

       Names of rivers, seas and lakes would not normally be acceptable as marks for fish or fish products. The names of mountains would not be acceptable as marks for agricultural produce. Some rivers flow through heavily industrialized areas and they would not be acceptable, for example, "TREATED WITH GANGA'S WATER" is a Common expression.

       As regards oceans, the practice is to accept "ATLANTIC" and "PACIFIC", for goods / services which are not directly relevant, and used in a fanciful manner. In the case of deserts, reputation is a factor to be taken into account. "SAHARA" would not be accepted for dates nor "SURAT" and "KALAHARI" for diamonds.

• Prohibition of registration of geographical indication as trademark :

  Section 25 of the GI Act prohibits registration of "geographical indication" as trademark or invalidate the registration of a trademark either suo moto or at the request of an interested party.

• Trademark exclusively consisting which have become customary in trade (Absolute Ground) :

  Section 9(1) (c) of the Act applies, where the mark consists of a word which has become customary in the current language or in the bona fide and established practices of the trade. The expression "trade" means the "trade" which is concerned with the goods or services covered by the application.

  When a mark is in common use in the trade or when it is open to the trade to use the mark is said to be ‘common to trade’ and it ceases to be a trademark of a single source.

  For example: simple devices of flowers or their names for ‘agarbatti’; devices of grapes for wines, etc.

• Mis-spelling of descriptive words :

  1. Mis-spellings of descriptive words are also excluded from, Registration and Objections will be raised as and if correct word was objectionable, such as "XTRA" instead of EXTRA; "KOMMUNIKATION" instead of COMMUNICATION.

  2. Where mis-spellings or abbreviations are commonly used in the trade, the marks would still be open to objection.

     For example:

     • CUT ‘N BLOW DRY, for hairdressing.
     • DRIVE THRU /DRIVE IN, for restaurant services.
     • STARTER PAK, for beginner packages.
     • FRESHLY PREPARED 2 GO for takeaway pizzas.

• Domain names :

  It is common practice amongst traders to have their website address and use the same in respect of their goods/services as trade name. Registrar will apply usual criteria of the Act to permit or refuse the domain names to be registered as trademarks.

  Elements of the domain name such as ".com" or "co.in" are considered to be totally non-distinctive, much in the same way as "Ltd" and "Plc".

• SECTION 9 (2) :

  Section 9(2) prohibits registration of a trademark-

  1. if the mark is of such nature as to deceive the public or cause confusion;
  2. if it contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
  3. if it comprises or contains scandalous or obscene matters;
  4. if its use is prohibited under the Emblems and Names (Prevention of Improper use) Act, 1950.

• Deceptive marks (Absolute Ground - Section 9 (2) ) :

  Section 9(2)(a) is primarily concerned with the deceptive nature of the mark; by reason of something inherent in the mark itself or in its use, such as to nature, quality or geographical origin of the goods or services. The mark may be in the nature of misrepresentation as to the characteristics of the goods or services or to the effect that they were made in a specified geographical region or place when in fact not so made.

  1. Deception as to Quality :

     For example application for registration of "ORLWOOLA" for "suits", is objectionable, under this Section if it is used in respect of non-woolen suits, because the public would expect the goods to be made of all wools and to pay more for suits containing wool.

  2. Deception as to Geographical origin :

     Objections under this Section shall be taken at the Examination stage, to names of places or figurative marks indicating geographical origin, where the goods in fact do not originate from that geographical area. For example "PIAZZA D' ITALIA" for "clothing", is indicative of the goods being from Italy. The public would be deceived if the goods were not manufactured in Italy. In such cases, objections would be raised.

     So also "SWISSTEX" for "watches", because Switzerland is famous for high quality watches.

     Geographical names appearing in trademarks for wines and spirits, not originating from such place would amount to deceptive use.

     The general rule is that mis-statement of any material fact calculated, to deceive the public will be sufficient to constitute an objection under section 9(2)(a) of the Act and unless the objection is remedied, the application will be refused.

  3. Practice regarding Olympic Symbol or Word :

     The Olympic Symbol, the Olympic Motto and the words Olympic(s), Olympian(s) and Olympiad(s) are not to be registered as trademarks except under the authority of the Olympic Committee.

  4. Marks likely to hurt religious susceptibilities :

     Under this Section a mark is prohibited for registration as a trademark if it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.

     Use of religious symbols (like OM) or names (e.g. Jesus) as trademarks is likely to undermine/offend religious value and sentiments.

     Names of Gods/Goddesses which are also used as personal names may be considered as personal names for registration purpose, unless accompanied by the device of such God/Goddess.

  5. Mark containing scandalous or obscene matter :

     Scandalous marks are those likely to offend accepted principles of morality. A mark which on its face appears to be offensive shall be refused. In this category, marks which could induce public disorder or incite the criminal or other offensive behavior will fall.

     A vulgar mark may not be acceptable on any goods or services and similarly racially offensive mark will face a blanket objection, regardless of the goods and services.

     Objections will be raised against explicit full-frontal nudes and offensive (scandalous) back views.

     For example, any mark or slogan promoting use of Drugs or any mark if it obscene or promoting pornography or murder, will be objected.

  6. Prohibition under Emblems and Names (Prevention of Improper Use) Act, 1950-

     • Section 9(2) (d) bars registration as a trademark if "its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).
     • The name or emblems or official seal of the UNO, WHO, Government of India or any State Government or of a department of any Government or the President, or Union of India are prohibited.

     • Further, name which may suggest or may calculate to suggest -

       1. Patronage of the Government of India or Government of a State;
       2. Connection with any local authorities or any corporation or body constituted by the Government under any law for the time being in force;

       Cannot be registered as Trademarks.

     • Mark cannot be registered under Trademarks Act, if:

       1. it is identical with the name of any society/corporation or local body which has been set up by the Government. of India or State Government under any law for the time being in force;
       2. it gives the impression of the patronage of Central Government or State Government. For example, Indian Council of Agricultural Research (ICAR) is a registered body under the Ministry of Agriculture and Co-operation. Any name beginning with the words "Indian Council of" may mislead the public that it is patronized by the Government;
       3. it too nearly resembles a name of Body Corporation or local authority set up by Government under any law for the time being in force. For example, 'Indian Institute of Mass Communication' is an autonomous body under Ministry of Communication. Names like Institute of Mass Communication may give the impression and the said society is also patronized by the Central Government.

• The Central Government has issued directions not to register following trademarks :

  These trademarks are, therefore, not registrable in view of Section 23 (1) of the Trademarks Act, 1999

  1. Words "UNITED NATIONS", letters "UNO" and the "Official Seal and Emblem of UNO".
  2. The device of an arrow on the ground that is the property of the Government of India.
  3. Letters "N.C.L.".
  4. Letters "I.S.I." if applied by any person or body other than the Indian Standards Institution.
  5. Letters "I.C.S.",
  6. Letters "N.P.L."
  7. Words "ASHOK CHAKRA" or "DHARMA CHAKRA" or the device of Ashoka Chakra or any other colourable limitation thereof.
  8. The British Royal Arms, The British Crown or the Union jack or any colourable limitation thereof.
  9. Letters "I.S.O." if applied by any person or body other than the Indian Standards Institution.
  10. Words "Lord Buddha" or the device of Lord Buddha or any colourable limitation thereof.
  11. Words "Shree Sai Baba" or the device of Shree Sai Baba or any colourable limitation thereof.
  12. Words "Sri Ramkrishna, Swami Vivekananda, the Holy Mother alias Sri Sarada Devi" or the devices of Sri Ramkrishna, Swami Vivekananda, the Holy Mother alias Sri Sarada Devi and the Emblems of the Ramkrishna Math and Mission or colourable limitation thereof.
  13. Words "National", and "Panchsheel",

  14. Following common names for pesticides:-

      • ALDRIN DINEX
      • ALLETHRIN DINOSAM BHC NEOD
      • GAMMA-BHC MAZIDOX CHLORDANE MIPAFOX CHLOROBENZILATE
      • CHLORFENSON PP-DDT CHLORPROPHAM
      • DDT DINOPROP DIAZINON DNOC DIELDRIN ENDRIN DNC
      • FENSON HEPTACHLOR HHND
      • HETHOXYCHLOR LINDANE PARATHION WARFARIN SCHRADAN
      • ATRATON TOXAPHENE AZINPHOS-ETHYL FERBAM AZINPHOS-
      • METHYL THIRAM DAZOMET
      • ZINEB DIMETHOATE 2,4,D FENOPROP
      • 2,4,5- T FENTHION MCPA MECARBAM PROPHAM
      • MEVINPHOS ANTU MORPHOTHION
      • MALATHION PARAQUAT CHLORBENSIDE
      • Coumachlor
      • Dichlone
      • Dimefox
      • Dinoseb
      • Maneb
      • Nabam
      • Parathion-Methyl
      • Proxan-Na Or Proxan-Sodium
      • Tecnazene
      • TEPP
      • Ziram
      • Captan
      • Sulfotep
  15. Letters "IR"
  16. Names and pictures of "SIKH GURUS", viz. Guru Nanak, Guru Angad, Guru Amar Das, Guru Ram Das, Guru Arjun Dev, Guru Hargobind, Guru Har Raj, Guru Har Krishnan, Guru Teg Bahadur and Guru Govind Singh".
  17. Name and Picture of Chhatrapati Shivaji Maharaj.
  18. Letters "STC".
  19. Name and/or picture of the deity of "Lord Venkateswara and/or Balaji".
  20. Representation of the Election Symbol of any political party in India.

• Practice regarding Red Cross :

  1. Marks consisting of words "Red Cross" or "Geneva Cross" or any cross device in red or in any closely resembling colour are not accepted for registration.
  2. However, applications made in black and white, which contain the device of a cross, or a crescent moon or a lion and sun, will not attract objection.
  3. Green crosses on a white background are generic, for pharmacy and medical goods and services. Use of such emblems as trademark is not to be permitted.
  4. White crosses on green backgrounds are generic, for first aid goods and services, and are based on European Union Legislation establishing a white cross on a green background as the First Aid sign. Objection will be raised for registration of such devices as trademarks.
  5. In respect of mark generally consisting of cross device, applicant is required to comply with the condition, not to use the cross device in red or in any similar colour, or in the manner prohibited under the Geneva Convention Act, 1960.

• CERTAIN SHAPES CANNOT BE REGISTERED :

  Under Section 9 (3) a mark is not registrable as a trademark if it consists exclusively of -

  1. the shape of goods which results from the nature of the goods themselves; or
  2. the shape of goods which is necessary to obtain a technical result; or
  3. the shape which gives substantial value to the goods.

  The purpose of this restriction is to keep free, basic shapes of goods that should be available for use by the public.

• Prohibition of registration of names of chemical elements or international Non-Proprietary Names :

  1. The registration of a word as a trademark, which is commonly used and accepted name of any single chemical element or compound in respect of chemical substances or preparation is prohibited.
  2. Also the law prohibits registration of a word which is declared by the World Health Organization (WHO) and notified by the Registrar as international non-proprietary name, or which is deceptively similar to such name.
  3. This will mean that, not only a word which is declared to be non-proprietary by WHO but also any word which is deceptively similar to such word is prohibited from registration.
  4. For example, word "CYLOVIR" was refused, as being confusingly similar to the non-proprietary name "ACYCLOVIR".
  5. It may be noted that such prohibition is only in respect of chemical element or compound and does not extend to other goods. For example, the word "Radium" may be registered in respect of readymade garments or any services.