Refusal Of Registration of Trademark in 2022
The term “trademark” refers to a symbol that alters the merchandise of a particular business, company or organization and differentiates them from the products of its competitors.
There are many possible marks or symbols that can be considered legitimate trademarks. There are certain criteria any sign or mark has to meet to be eligible for trademark protection. It is capable of being visually defined & able of differentiating the products or services of a specific person in comparison to those of others.
According to current law trademark law, the proprietor, when the process of creating his trademark, should be natural, original, and creative, etc.
This article will focus on the issue of trademarks and will discuss different reasons for the refusal of registration of trademark.
Requirements for Registration of Trademarks
The trademark owner is not only allowed to use but can register his trademark if it is not registered, a lawsuit for infringement is not possible. To secure legitimate trademark rights registration, along with the use of the trademark concerning specific products or services is crucial.
It is important to note that the Trade Marks Act, 1999 does not specify the conditions or grounds upon the basis for which trademarks may be allowed to register. It does, specify the grounds for refusal of registration of a trademark.
The grounds that prevent the registration process of trademarks could be handled under two categories of the Act that are,
- Absolute grounds for refusal of registration of a trademark (Section 9)
- Relative grounds for refusal of registration of a (Section 11)
Thus it is clear that this legislation Trademarks Act, 1999 gives a wide range of registration of trademarks, as that is not restricted from registration based on specific or relative reasons that would cause refusal of registration as long as it is a “trademark”.
Absolute Grounds For Refusal of Registration of Trademark
Section 9 in the Act sets out the sole grounds for denial of registration. If a trademark falls under the conditions mentioned in this section it will not be registered. The sole grounds for refusal of registration of trademarks:
- Trademarks that do not have any distinct character. The term “distinctive character” refers to trademarks that do not distinguish the products or services offered by one individual from those of other people.
- Trademarks that exclusively include markings or indications that serve in the trade to indicate the type, quality quantity, purpose value or geographic source of the goods or services provided.
- Trademarks that only contain trademarks or indications that are now commonplace in the present language or accepted practices of the trade.
- Trademarks can be of that they deceive or create confusion for the general public.
- Trademarks that contain or include matters that could harm the religious sensibilities of any group or section of the population of India.
- Trademarks that include or contain the most scandalous or sexually explicit material.
- If the use or use of the name is not permitted by the Emblems and Names (Prevention of Improper Use) Act, 1950.
- Trademarks comprise marks that reflect the form of goods that originate from the nature of the goods themselves.
- Trademarks are those that consist that are shaped like goods that are required to achieve the desired technical outcome.
- Trademarks consist of shapes that provide significant worth to the products.
The Act allows for an exemption in the three first points, i.e. when the trademarks are not distinctive or contain exclusive marks that separate the business in India to define the kind of quality, etc., or have marks that are common in commercial usage.
However, the exception is that trademarks falling within the first three points cannot be denied registration in the event that the trademark is gaining a distinctive appearance because of its use of the trademark or is well-known before making an application for registration.
Relative Grounds For Refusal Of Registration of Trademark
The grounds for refusal registration of trademark are covered under section 11 in the Act 1999. The fundamental reasons for refusing registration are explicit. The grounds for refusal of registration of trademark are treated differently. The mark is dealt with in relation to earlier marks.
The Section states that trademarks are frequently rejected due to their identity and connection to previous trademarks and the similarity of the goods or services that are covered by the trademark.
However, the similarity of an earlier trademark, in turn, affects the similarity or identity of the goods or services that are covered in the trademark. This reduces the chance of confusion among the general public, who might assume that the new trademark has some connection to it.
In Section 11, the Act defines the grounds to deny the registration. The section allows exceptions to the grounds for refusal. In the event that the conditions are met trademarks registered under section 11 may be registered.
11(1) provides the following grounds for refusal:
- Trademarks can confuse consumers because they are identical to the trademark that was previously similar to products or services.
- Trademarks confuse the public because they are similar to an earlier similar trademark of products or services.
A possible exception to this clause is when there is an honest and legitimate concurrent usage of the trademark the Registrar of Trademarks may allow the trademark to be registered.
Section 11(2) outlines the following grounds for refusal:
- Trademarks that take unfair advantage of an identical prior well-known trademark in India.
- Trademarks that could be harmful to the distinctiveness or reputation of a comparable or similar trademark that was previously well-known in India.
11(3) provides the following grounds for refusal:
- The use of the trademark has to be stopped through the law passed on the protection of trademarks that are not registered and employed in the business.
- The use of the trademark is required to be regulated by the law on copyright.
The trademarks listed in sections 11(2), as well as 11(3), are not registered unless an objection is made in opposition proceedings brought by the owner of the trademark previously registered.
Section 11(4) gives an exemption to all of the reasons mentioned earlier. It provides that trademarks falling under Section 11 can be registered if the owner of the trademark before registration consents to registration.
If the owner of the trademark previously popular gives his consent to the registration of the trademark of the other the Registrar can sign it.
Names Which Cannot Be Registered
Sections 13 and 14 in the Act stipulate that trademarks with specific names are not able to be registered. Trademarks that contain a term that is used frequently for any one chemical substance or chemical compound concerning any product or chemical ingredient can’t be registered.
Trademarks that suggest falsely an affiliation with any living person could be denied approval by the Registry unless the approval of the live person has been obtained.
Equally, trademarks that falsely imply a connection to any deceased person within 20 years of the date they apply for registration could be denied registration by the Registrar, unless the consent of the legal representatives of the deceased is obtained.
Illustrations Of Refusal Of Registration of Trademark
A few examples of words that were refused registration due to the above reasons are provided below.
- Terms like ‘Himalayan’ or “Shimla” were deemed invalid because they signify the geographic location of the
- The words ‘Janta’ or “Rasoi” weren’t registered since they were everyday expressions.
- The term ‘Saffo’ was not recognized as a cleaning power and liquid since it was too close to the word “Saff” meaning clean. The word ‘Saffo’ indicated the nature of the product.
- The term “Ombrella” for curtains for shower baths was not recorded as it was a reference to shower curtains that resembled umbrellas.
- The term “Heavenly” for cosmetics was not registered because it’s a term that is used in everyday usage.
- The word ‘Electrix’, which is used to describe electric vacuum cleaners was ruled out for registration on the basis that it was like the popular term “Electric”.
- A mark that consists of representations of elements of chain wheels and chains, as well as space was denied registration on account of chain wheels and chains because they were not distinctive.
How do you avoid rejections of trademark registration?
- Perform a proper mark search: An applicant applying for mark registration should conduct a thorough study before applying. The applicant must look at a distinct and unique mark that is different from the existing mark.
Before applying the mark, the applicant needs to submit it or modify the application and then verify the application carefully to prevent future rejection of trademark registration.
- Beware of misleading phrases: The mark applied by the applicant has to be distinct. The applicant should be extremely cautious when selecting the brand he or she wants to use because it shouldn’t be identical to the one already recognized.
A mark that has a distinct name must be picked by the person applying for registration of the mark.
- Do not use offensive words: The applicant must choose an image that isn’t injurious to others or does not violate the ethics and law that the people live. Thus, the offensive mark in the application will be rejected by the registrar, so applicants should not choose the mark.
- Beware of descriptive markings: Common marks cannot be used as an identification. If the label is containing any descriptive words that are often used, for example, a sweet in selling goods like sweets or chocolates, the label is rejected by the registry. Thus, the seller must not make use of the descriptive name of the product.
- Avoid using vulgar markings: The applicant must avoid making use of offensive, harsh, infuriating words or slang since they could get rejected by the registry.
- The trademark is not used for Patriotic Mark: If the trademark is associated with the official title, flag national emblem, animal image, geographical regions and international organizations.
The trademark is then rejected by the registry. Therefore, there is no mark that is patriotic and can be employed by the applicant for the product.
- Avoid using terms that are generic: Those trademarks that represent the specific activity of a product or business concept could be denied by the registrar due to the use of a popular name. Thus, applicants should be careful not to use generic trademarks.
What happens If it is rejected?
If the application of the applicant is denied mark the trademark on the grounds outlined in Sections 9 and 11 of the Trademarks Act of India, 1999 The applicant is entitled to the option of appealing at the Appellate Board against the registrar of trademarks.
The appeal can be filed within three months of the date of the rejection of the trademark. However, the deadline may be extended by submitting the reasons why you did not file an appeal within the stipulated time to the authority in question.
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Trademarks are vital tools for intellectual property and provide consumers with confidence. With the rapid growth of trademarks across the globe, India must do all the necessary steps to ensure the protection of businesses as individuals and prevent fraudulent transactions as well as the fraud of clients and consumers.
The registration of a trademark is not just a regulatory necessity for business but also recognized as the most powerful evocative method that can be taken to protect the businesses’ interests.
If you’re still having questions regarding the refusal of registration of a trademark, or any other question, we are ODINT Consultancy. We’re we are here to assist you at each step of your way.
Causes religious sensitivity in individuals from different classes of India. Containing scandalous or offensive material that is incompatible with the morality of people in general; or Is not permitted under the Emblems and Names Act, 1950.
Relative grounds for refusal occur where the marking the applicant applies for is used or is similar to a mark already used.
Absolute grounds are the inability of marks to be distinct or graphically displayed. In addition, deceptive marks and marks that violate public order can also be immediately rejected.
The status of the trademark on India’s Trademark Registry website reads “Refused” when the Examiner/Registrar has denied an application for a trademark after hearing or considering the applicant’s responses to an exam report.