This Article is Written by Akshay, 1st year Student of 3-year L.L.B course from Law Centre- II, Faculty of Law, University of Delhi during an internship at LeDroit India.
Keywords:
- Trademarks
- Registration
- Refusal
- Absolute
Introduction
Businesses need trademarks in order to differentiate their products and services from those of competitors. Not all signs or marks, though, are eligible for trademark protection. Under the Trade Marks Act, 1999, legal systems around the world, including India, specify precise, unchangeable reasons why a trademark cannot be registered. These grounds are intended to prevent generic or descriptive phrases from becoming monopolized and to preserve the integrity of the trademark register. Using pertinent case law and examples, this article explores the absolute grounds for rejecting a trademark registration.
Definition of a Trademark
A trademark, according to Section 2(1)(zb) of the Trade Marks Act, 1999, is a mark that may be graphically depicted and be used to differentiate one person’s goods or services from another. Shapes, colors, names, or even sounds could be incorporated into the logo. Not all marks, though, are eligible for registration, particularly if they are included in the list of absolute grounds for rejection.
Absolute Grounds for Refusal
The framework for absolute grounds for refusal is provided under Section 9 of the Trade Marks Act of 1999. Regardless of the mark’s use or the owner’s intentions, these grounds center on the mark’s inherent qualities. The primary grounds are listed below:
1. Lack of Distinctiveness
A trademark needs to set one company’s products or services apart from another. This crucial role cannot be carried out by marks that are not distinctive.
For instance:
“Creamy” is a phrase used to describe dairy products, although it cannot be used to differentiate between different producers.
Legal Cases:
In the 2015 case of ITC Ltd. v. Nestle India Ltd., the Delhi High Court stressed that a mark must identify the goods as coming from a specific source in order to be considered distinctive.
2. Descriptive Marks
It is not possible to register marks that define the attributes, quality, quantity, intended use, or place of origin of goods or services. A monopoly over common language words would result from permitting the registration of such marks.
For instance:
For sugar products, the word “sweet” refers directly to a feature of the product.
Legal Cases:
The Bombay High Court ruled in Bajaj Electricals Ltd. v. Metals and Allied Products (1988) that a descriptive word cannot become distinctive unless it gains secondary meaning.
3. Generic Terms
It is not possible to register generic names that indicate the common name for a category of goods or services. These words cannot be monopolized because they are in the public domain.
For instance:
For portable computers, a “laptop” is: It cannot be used as a trademark because it is a generic term.
Legal Cases:
The Delhi High Court held in Tata Sons Ltd. v. Manu Kishori (2001) that generic terminology cannot be used to differentiate between products or services.
4. Deceptive Marks
A trademark cannot mislead the public about the type, caliber, or place of origin of products or services. It is forbidden to use marks that give the wrong impression or cause misunderstanding.
For instance:
For non-organic food products, the label “Organic Delight” deceives customers into thinking the goods are organic.
Legal Cases:
In the 2011 case of Godfrey Phillips India Ltd. v. PTI Pvt. Ltd., the court emphasized how misleading trademarks undermine consumer confidence and market equity.
5. Marks Contrary to Public Policy or Morality
Marks that violate morals or public order cannot be registered. This clause makes sure that trademarks reflect the ideals and conventions of society.
For instance:
Words that are offensive or obscene: A mark that contains objectionable language or images cannot be registered.
Legal Cases:
The court denied registration of a mark that violated public decency in Khoday Distilleries Ltd. v. Registrar of Trade Marks (1979).
6. Prohibition of Use by Law
It is not possible to register a mark that is illegal to use. For example, it is illegal to use marks that look like badges or insignia that are protected by the badges and Names (Prevention of Improper Use) Act, 1950.
For instance:
– National flag or emblem: It is illegal to use such symbols.
Legal Cases:
Raj Narain v. State of Uttar Pradesh (1975) The Supreme Court reaffirmed that it is against the public interest to utilize symbols or insignia that are prohibited in trademarks.
7. Marks That Are Customary in Trade
It is not possible to register marks that have become commonplace in the present language or in established trade practices. These indications are insufficient to differentiate one trader from another.
For instance:
For general consumer goods, “Best Quality” is a popular slogan that lacks the distinctiveness needed for registration.
Legal Cases:
In the 2002 case of Laxmikant V. Patel v. Chetanbhat Shah, the court noted that customary marks are generic and gradually lose their uniqueness.
8. Shapes and Functional Marks
Trademarks that only include the form of products or characteristics required to accomplish a technical outcome are not registrable. This guarantees that all rivals can still access functioning features.
For instance:
The shape of a light bulb: It is impossible to monopolize a useful design.
Legal Cases:
The European Court of Justice ruled in Philips Electronics NV v. Remington Consumer Products (2002) that forms determined by technical functioning are not eligible for trademark protection.
9. Marks Likely to Cause Confusion
It is not possible to register marks that are confusing to the public and that are identical or similar to previous marks.
For instance:
When “Dove” is used for chocolate and “Dove” is used for soaps, confusion results because the names are the same in two separate categories.
Legal Cases
In the 2001 case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., the Supreme Court underlined the importance of avoiding trademark confusion.
Exceptions to Absolute Grounds
A mark that at first qualifies as absolutely refusable may, in some circumstances, still be registered if it gradually gains uniqueness through widespread use. Secondary meaning is the term used to describe this idea.
For instance:
For skincare goods, “Fair & Lovely” is a descriptive mark that has gained distinctiveness via widespread use.
Legal Cases:
In the 1969 application of Rustom and Hornsby Ltd., the court permitted the registration of a descriptive mark that had taken on a secondary meaning.
International Perspective
There are comparable clauses in international frameworks:
European Union: Similar to those in India, Article 7 of the EU Trade Mark Regulation offers unequivocal grounds for denial.
Similar restrictions are outlined in the United States under the Lanham Act, which places a strong emphasis on descriptiveness, genericness, and deceptiveness.
For instance:
In the US, the phrase “Apple” for electronics is registrable since it does not describe the products it refers to.
Conclusion
Absolute grounds for refusal guarantee that trademarks serve their fundamental purpose of differentiating products or services while safeguarding the public interest. The legislation prevents the registration of generic, descriptive, or deceptive marks, ensuring a fair and competitive economy. Businesses must carefully consider the intrinsic qualities of their marks before pursuing registration to ensure legal compliance and consumer trust.
