Trademark Objection Under Section 9

Trademark Objection Under Section 9

Trademark registration involves a series of steps which are duly followed by the applicant so that the owner of the mark can avail the benefits of registration after the grant of it. Trademark registration online provides a unique identity to the owner of the mark and helps prevent others from infringing the rights. However, this monopoly is granted only after careful examination of several aspects in respect of the mark sought for registration. Thus, Trademark objection is one of the primary steps in the registration process in which the Registrar objects to the registration on certain grounds. It gives an opportunity to the applicant to show how his mark is distinct and eligible for registration. Then the reply given by the applicant is known as “Trademark Objection Reply” it can be fall on both the sections Like Trademark Objection in section 9 or Trademark Objection in Section 11.

Now there are 2 grounds for receiving Trademark objection in section 9. One is when the application contains false or incomplete information, and the other is when a similar and common trademark is already present in the market. Generally, the grounds on which the examiner can continue to object can be separated into two distinct parts as per the Trademarks Act, 1999:

  • Section 9 (Absolute Grounds of Refusal)
  • Section 11 (Relative grounds of refusal)

Reason of Getting an Trademark Objections Section 9

Below are the major points for marking the application and areas which gets objected by the Registrar of Trademark:

  • If a Trademark does not contain any distinctive character or is not able to define the goods or services.
  • If the Trademark which is applied for registration is very common to the marks that have been already applied or registered for.

This article mainly describes the grounds of refusal mentioned under Trademark Objection in Section 9.

Absolute Grounds – These mentioned grounds are the grounds due to which the application may be rejected outright. Trademark Act, 1999 and if the mark in the application falls under any of the following categories, it cannot be registered.

  1. Undistinguishable – If the mark in the application is incapable of being distinguished from any other mark, the registration of the said mark shall be refused. However, in this situation applicants may use some abstract or unconventional name or design. The applicant can read various trademark journals to study how the marks differ from others. For example, a mark showing a chain wheel and a representation of parts of a chain and a blank space was refused registration on the grounds that the words “chain” and “chain wheels” are not distinctive. Another example of being devoid of distinctive character is the use of the words “You have received mail”, which is a general fact to inform people that they have received mail, and thus it is not possible to claim a monopoly. Is. (Application of America Online Inc. (2002) E.T.R. 6, 59)
  2. Indication of any trade, kind, quality, quantity, value, geographical origin of goods or services – any word which indicates the characteristics or characteristics relating to goods or services or anything similar to their geographical origin, shall apply Will make it under Trademark objection in Section 9. , like, in the case of Imperial Tobacco Co. of India Ltd. v. The Registrar of TradeMarks (AIR 1955 Cal. 519), The appeal was removed by the court on the grounds that the word “Shimla ” is a well-known geographical place and hence, the word cannot be certified.
  3. Customary signs: Any word that is commonly used in daily communication or that is considered customary should be avoided. like, in the case of SBL Ltd. v. Himalayan Drug Co., 1997 (17) PCT 540, a Division Bench of the Delhi High Court held that no one can use words, abbreviations or acronyms which constitute ‘publici juris’. ‘ has been made. And, Registration of the word liv. 52, which was used to treat liver disease, was considered normal.

Section 9(2) lays down the following grounds for refusal to register a trademark:-

  1. Causing confusion: Another ground on which Trademark objection in section 9 can be raised is when the mark in application is likely to deceive or mislead the public which is already being offered in the market. Here, confusion may arise either because of the similarities existing between the proposed mark and the existing mark or as a result of the nature of the use of the mark. The confusing nature of a mark is primarily due to the inherent nature, quality or geographical indication of the mark. So, If a mark is misleading or false, it is liable to be rejected under section 9(2)(a). For example, the use of the mark “pure ghee” on edible oil is misleading and likely to cause confusion among the public, hence it is not registrable. Some other examples include Puma-Coma, Nike-Nuke, Starbucks-Sardarbaksh, etc., which creates confusion in the minds of the average public for the existing ones.
  2. Matter that hurts religious sensitivities – Avoid any words that are likely to hurt or hurt the religious sentiments of any class of people. For example, the need for names related to Hindu deities on footwear or meat products cannot be certified as it annoys a class of people.
  3. Slanderous or obscene matter – Any mark which contains any slanderous or obscene matter will certainly attract Trademark objection in section 9. Whether a particular mark is reprehensible or not will depend on a case-by-case basis. For example, In what is known as Gazillion’s trademark application, registration of the term “small penis” was sought. However, the registrar refused to grant the trademark as it was contrary to accepted principles of ethics.
  4. Words prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950: Any word that contravenes the provisions under the Emblems and Names Act should be avoided. The Act prohibits any misuse or improper use of symbols or flags in the professional or commercial sphere.

Also, Read

Advantages and Disadvantages of Trademark

Essential elements of section 9(2)-

In order to prove a deceptive similarity, the following pre-requisites must be found:-

  • First, to identify to whom the similarity is likely to deceive or cause confusion.
  • Second, to identify the rules of comparison in judging similarity.

With the view to causing distraction, the Bombay High Court in the case of BDH Industries Ltd. v. Croydon Chemical Works Pvt. Ltd., 2002 (4) Baum CR 5, observed that in addition to testing for visual, phonetic, or structural similarity or dissimilarity, it is necessary to look from the perspective of a person of average intelligence and imperfect memory. It is also necessary to consider the marks holistically and the evaluation should be done from the point of view of an average person’s perception. These may be considered essential elements to prove deception or confusion in relation to a trademark.

In the case of Lal Babu Priyadarshi v. Amritpal Singh, the court held in respect of an application for registration of the mark “Ramayana” that no one can use the name of religious books as a trademark for his goods or services.

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