Trademarks in India are registered under the Trademarks Act, 1999 (“Act”). An application is filed to the Registrar of Trademarks (“Registrar”) for registration. The Registrar may accept the application and proceed to register the trademark. He can also reject the application if he finds any fault in it. The Act also provides a list of trademarks which cannot be registered.
Section 9 of the Act lists down the absolute grounds for refusal of registration. If any trademark comes under the grounds listed in this section, it cannot be registered. The absolute grounds for refusing registration are –
- Trademarks which do not possess any distinctive character. Distinctive character means trademarks which are not capable of distinguishing the goods or services of one person from those of another.
The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks1977 – The Imperial Tobacco Company is a famous company which manufactures and distributes cigarettes with a label “SIMLA” throughout the country. In the year 1960 and in 1966, ITC ltd. made an application to the Registrar for the registration of the above mentioned trademark in his register in respect of Part A and Part B in the respective years. However, the Registrar refused the application for the registration both times against which an appeal was preferred to the Calcutta High Court. The Calcutta High Court dismissed the appeal on the ground that the word “SIMLA” is a famous geographical place which cannot be registered as a trademark.
An application for registration of the trade mark “Aggarwal Sweet Corner” was allowed registration in respect of sweets and namkeen, on the basis of the user, and therefore, opposition appeal was dismissed by the Intellectual Property Appellate Board in Aggarwal Sweet Palace vs. Asst. Registrar 2005.
In American Online Inc.’s Application 2002 the applicant sought to register the word “YOU’VE GOT MAIL” as a trade mark in various classes. The examiner refused the application finding the trade mark was not distinctive. In appeal, the Board of Appeal held that the trade mark composed of common words to inform email users of the ordinary fact they have received a new mail and that the phrase must remain free from the individual monopoly rights.
- Trademarks which exclusively contain marks or indications which serve in trade to define the kind, quality, quantity, intended purpose, values or geographical origin of goods or services rendered.
This clause prohibits the registration of marks which are descriptive that identify the characteristics of the product or service to which the mark pertains. A mark is descriptive if it provides or gives the information directly.
In M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks 1955, it has been held by the court that the mark “RASOI” for edible oils cannot be registered as a trademark because such mark indicates the nature of the product.
In Central Camera Company Private Ltd v. Registrar of Trade Mark 1980, the court held that the word “solar” undoubtedly refers to the sun and understood to be produced by or coming from the sun as solar energy.
- Trademarks which exclusively contain marks or indications which have become customary in the current language or the established practices of the trade.
This section is not only applied to words but also to the colour combinations. Delhi High Court held that colour red being a basic colour, red and white combination was held to be common to the toothpaste trade in the domestic and as well as international market and could not be monopolised by any party.
In Shalimar Chemical Works v. Deputy Registrar,the trademark “CHEF” of the appellant which has been used in respect of various goods particularly species, edible oil, edible products had acquired special distinctiveness merely by the way of widespread sale and promotional activity.
- Trademarks are of such a nature which deceives or cause confusion to the public.
In the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd 1863 the plaintiff had stamped upon their goods the words ‘tanned leather cloth’ whereas only about one-third of their whole produce was in tanned cloth. It was held by the House of Lords that the plaintiffs were disentitled for relief as they were misrepresenting about the nature of the goods
- Trademarks which contain or comprise matter likely to hurt the religious susceptibilities of any class or sections of citizens of India.
- Examples: The use of names or device of deities on foot wear will be considered disrespectful. Likewise, the use of Hindu gods in respect of beef or meat products or use of Muslim saints for pork products would be offending the religious sentiments of respective sections of public.
In Amritpal Singh v. Lal Babu Priyadarshi 2005, the word RAMAYAN was refused registration on the grounds that:
- Firstly, it was not capable of distinguishing the goods of the applicant and
- Secondly, that it was likely to hurt religious sentiments of a class of society.
- Trademarks which contain or comprise scandalous or obscene matter.
- If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Emblem and Names (Prevention of Improper) Act, 1950, prohibits the improper use of certain emblems and names for professional and commercial purpose. Section 4(b) of the act prohibits the registrar from registering a trademark or a design which holds any emblem or name and use of it shall be in contravention of section 3 of the Act.
Example: Mahatma Gandhi, Pandit Nehru, National Flag etc. cannot be used as Trademark
According to section 9(3) a mark shall not be registered if it consists exclusively of :
- Trademarks which consist of marks of the shape of goods which result from the nature of goods themselves.
Example – The shape of an egg tray, whose purpose is to hold eggs, would fall within the context of section 9(3) (a) and would not be considered as capable to distinguish from others.
- Trademarks which consist of marks of the shape of goods which is necessary to obtain a technical result.
- Trademarks which consist of marks of the shape which gives substantial value to the goods.
The Act provides for an exception with regard to the first three points, i.e. where the trademarks lack distinctiveness or which contain exclusive marks which sever in the trade to define kind, quality etc. or contains marks which have become customary in the trade practices. The exception is that the trademarks that come under the first three points shall not be refused registration if the trademark has acquired a distinctive character as a result of the use or is a well-known trademark before applying for registration.