Refusal of Trademark Registration
Intellectual property rights refer to the ownership of one’s own creative works and ideas. Trademarks constitute a significant component of said rights. An organisation could adopt an approach to distinguish itself from competitors by employing trademarks. While there is more to a brand than meets the eye, its trademark consistently indicates its nature.
By functioning as a designation, expression, or emblem, it distinctively positions goods and services within the marketplace. Having a trademark significantly streamlines marketing efforts by ensuring instant product recognition. Moreover, it grants the owner the power to prohibit competitors from using the same mark or symbol. In this context, understanding the grounds for refusal of trademark registration in India becomes crucial to safeguard the intricacies of IP protection.
Trademark law in India
India enacted its inaugural trademark legislation during the 1940s in response to the pervasive abuse of registered trademarks. The subsequent expansion of commerce and trade was a direct cause of the heightened demand for trademark protection.
After its predecessor, the Trademark and Merchandise Act of 1958 sought to enhance trademark safeguards while imposing restrictions on the unauthorized use or misuse of such marks in connection with merchandise. The Indian government subsequently amended this Act with the Trademark Act of 1999 to comply with the TRIPS requirements of the World Trade Organization. This Act protects trademark users by setting property conditions and offering legal remedies for enforcing trademark rights.
A trademark serves as the identification of a product’s owner. The illicit trademark use is considered trademark piracy to gain financial gain. In instances of trademark infringement, the owner of an unregistered brand generally has no other recourse but to pass through use. Conversely, the owner of a registered trademark has the ability to initiate legal proceedings in the courts. Application submission to the Registrar is required to assert proprietorship or use a trademark. The application should encompass the subsequent details: the name of the products or services in question, the specifications of the mark, the pertinent category of goods or services, the applicant’s contact information, and the anticipated tenure of use for the mark. Groups, corporations, and partnerships are all eligible to submit applications.
Reasons for denying registration (Section 9) from an absolute standpoint
Section 9 of the Trademark Act, 1999 sets forth certain conditions that act as barriers to obtaining a Trademark grant if the proposed mark aligns with those conditions. These criteria include:
- Marks lacking distinctive character,
- Indications or marks used in commerce to describe characteristics like quantity, quality, type, values, intended purpose, or geographical origin of goods or services,
- Marks or indications that have become customary in trade practices or the prevailing language,
- Marks likely to deceive the public or cause confusion,
- Marks offending religious sentiments or being scandalous or obscene,
- Prohibited trademarks as defined in Section 12 of the Emblems and Names (Prevention of Improper Use) Act, 1950,
- Marks resulting from the inherent nature of the goods,
- Marks significantly add value to the goods,
- Marks with a shape that significantly adds value to the goods.
These absolute grounds for refusal serve public policy by aiming to safeguard the legitimate interests of traders and the public, especially genuine users of various marks concerning their goods or services.
However, suppose a trademark has gained a “distinctive character” through its prior use or holds the status of a “well-known trademark” before the application for registration. In that case, it cannot be denied registration. The distinctiveness, essential for distinguishing one entity’s goods/services from others, may either be inherent or acquired. Thus, understanding the intrinsic characteristics of the trademark that enable this differentiation is crucial.
In the Hindustan Development Corp. v Deputy Registrar of Trade Marks case, it was established that the term “Rasoi” couldn’t be registered as a trademark for hydrogenated groundnut oil. This decision was based on the fact that the term “rasoi” is associated with cooking, an inherent characteristic of the hydrogenated groundnut oil. Moreover, to be eligible for registration, a mark must possess distinctiveness, which “rasoi” lacked. Being a common word, it couldn’t be exclusively claimed by the applicant, as common words are considered public property. Hence, the term “rasoi” couldn’t be registered as a trademark.
Relative Grounds for refusal of trademark registration (Section 11)
The specific reasons for rejecting a mark’s registration are detailed in Section 11 of the Trademark Act, 1999. Any mark that is confusingly close to, or even identical to, an existing trademark is not eligible for registration under this provision.
Other grounds for refusal listed under relative grounds include:
Section 11(1):
Marks that confuse the public as they are identical with an earlier similar trademark for goods or services.
Marks that confuse the public as they are similar to an earlier identical trademark for goods or services.
The crux of the correspondence in Toshiba Appliances Co. v. Kabushiki Kaisha Toshiba revolved around the registration application for the trademark “TOSIBA,” which bore an uncanny resemblance to the rival company’s “TOSHIBA” utilized on electronic goods. As a result of the remarkable phonetic similarity between the two marks, the court determined that the applicant’s mark was confusingly similar to that of the opponent. Establishing guidelines for comparing trademarks likely to confuse or deceive consumers, the court highlighted specific principles. These included assessing the likelihood of confusion or deception for buyers, considering the viewpoint of someone with an imperfect memory, and emphasizing comparing the entire words rather than just their individual parts.
Section 11(2):
In cases where a trademark is identical or bears resemblance to an earlier trademark or when the goods or services of the intended trademark registration are dissimilar to those under an earlier trademark owned by a different entity, certain conditions apply:
- The earlier trademark should be recognized as a “well-known trademark” in India.
- Usage of the subsequent trademark would unfairly benefit from or undermine the unique character or reputation of the earlier trademark.
A “well-known trademark”, as defined in Section 2(1)(zg) of the Trade Mark Act, 1999, refers to a mark recognized by a substantial segment of the public using those goods or receiving those services. Such recognition implies that using that mark in connection with other goods or services might suggest a business association between those goods or services and the entity using the well-known mark.
Even while the applicants in Carrefour vs. V. Subburaman hadn’t explicitly acquired the trademark ‘CARREFOUR’ in India for furniture, they had used it widely in their retail business worldwide since 1960. Despite the trademark’s lack of registration in India for furnishings, the court found that it was registered for other items in India and in other countries. Many people began to think of the applicant’s products when they saw the ‘CARREFOUR’ trademark because of its widespread use and registration. Hence, the court concluded that “CARREFOUR” qualified as a well-known trademark.
Section 11(3):
The use of the trademark is likely to be prohibited under the law of passing off, which protects trademarks that are not registered and used in commerce.
The use of the trademark may be prohibited under copyright laws.
Section 12 of the Trademark Act states that registration cannot be denied if the applicant can demonstrate “honest concurrent use” of the proposed mark in conjunction with an existing registered mark.
Trademark owners who have their marks registered are just as protected as those whose trademarks are unregistered under the law of passing-off. Owners can contest the use of similar marks, whether employed on identical, similar, or dissimilar goods, invoking passing-off claims. Moreover, suppose a later trademark resembles an earlier one protected under copyright law and intended for use on any goods or services. In that case, registration of such a subsequent trademark is prohibited under Section 11(3).
Names that cannot Be Registered
Sections 13 and 14 of the Act stipulate restrictions on registering trademarks containing specific names. The Act prohibits trademarks containing words commonly used for single chemical elements or compounds related to chemical substances or preparations.
Furthermore, trademarks falsely implying a connection with a living person may be denied registration by the Registrar unless consent is obtained from the individual. Similarly, trademarks falsely suggesting an association with a deceased person within twenty years of the registration application may be declined by the Registrar unless the legal representatives of the deceased person provide consent.
Illustrations Of Refusal Of Trademark Registration
Here are a few examples illustrating the rejection of words for trademark registration based on the mentioned grounds:
- Words such as ‘Himalayan’ or ‘Shimla’ were refused registration due to their indication of geographic origin.
- Terms like ‘Janta’ or ‘Rasoi’ were denied registration as they were considered common expressions.
- The word ‘Saffo’ was rejected for products related to cleaning power and liquid due to its similarity to ‘Saff,’ which means clean, reflecting the nature of the goods.
- ‘Ombrella’ intended for shower bath curtains was not registered as it described umbrella-like shower bath curtains.
- The term ‘Heavenly’ for cosmetics was declined registration as it is a commonly used word.
- ‘Electrix’ for electric vacuum cleaners faced refusal due to its similarity to the widely used term ‘Electric.’
- A mark depicting parts of a chain wheel and chain, along with a blank space, was not registered because chains and chain wheels were deemed not distinctive in this representation.
Intellectual property rights have emerged as a burgeoning legal domain in contemporary times. Among these rights, trademarks stand as a pivotal element for any business. They play a vital role in establishing brand identity, value, and market image. Understanding the reasons for potential trademark refusal is crucial. Comprehending these grounds ensures that businesses meet the requirements for acceptance, expediting their setup and enabling them to operate as an independent and recognized brand in the market.
