The Trademarks Act of 1999 (“Act”) governs the registration of trademarks in India. The Registrar of Trademarks receives an application for registration. The Registrar may approve the application and begin the trademark registration process. If he sees some flaws in the submission, he has the choice to refuse it. A list of trademarks that cannot be registered is also included in the Act.
GROUNDS FOR THE REFUSAL OF TRADEMARK REGISTRATION
The grounds for registration rejection are mentioned in Section 9 of the Act. Any trademark that falls under one of the grounds mentioned in this section is ineligible for registration. The below are the absolute reasons for denying registration:
- Trademarks that don’t have any distinguishing characteristics or distinctive character. The term “distinctive character” refers to logos that are incapable of separating one person’s products or services from those of another.
- Trademarks that only contain markings or signs that are used in retail to define the type, quality, quantity, expected use, values, or geographical origin of products or services provided.
- Trademarks that only contain markings or symbols that have become customary in the current language or in the industry’s existing activities
- Trademarks are of a kind that deceives or confuses the general public.
- Trademarks that are likely to offend the religious sensibilities of any community or section of Indian citizens.
- If the Emblems and Names (Prevention of Improper Use) Act of 1950 prohibits the use of the trademark.
- Trademarks consisting of markings on the shape of items which are results of products’ nature.
- Trademarks consisting of markings on the shape of items that are used to achieve a technological outcome.
- Trademarks consisting of symbols of the form that have a significant meaning.
The exception is that if the trademark has gained a distinguishing character as a result of the use or is a well-known trademark before filing for approval, it will not be refused for registration.
Relative Grounds For Refusal Of Registration
Relative reasons for registration refusal are set out in Section 11 of the Act. Exceptions to the grounds of refusal are mentioned in this section. The trademarks under section 11 can be registered if the exceptions are followed.
The following reasons for rejection are mentioned in Section 11(1):
- Trademarks that cause consumer confusion because they are similar to the previous trademarks on products or services.
- Trademarks that cause consumer confusion because they are identical to an older equivalent trademark on products or services.
The Registrar of Trademarks can approve registration if there is a practical and positive use of the trademark. The following reasons for rejection are mentioned in Section 11(2):
- Trademarks that will take undue advantage of an earlier well-known trademark in India that is equivalent or identical.
- Trademarks that may be harmful to the distinctive character or repute of an earlier well-known trademark in India.
The following reasons for rejection are mentioned in Section 11(3):
- The law of passing off, which protects an unregistered trademark used in the conduct of business, is expected to prohibit the use of the trademark.
- The law of copyright would definitely prohibit the use of the trademark.
Names that are not available for registration
Trademarks containing specific names are not allowed to be registered under Sections 13 and 14 of the Act. Trademarks containing any particular chemical element or chemical compound in reference to a chemical substance or preparation are ineligible for registration.
The Registrar may refuse to register trademarks that falsely indicate a correlation with a living person unless the permission of that living person is obtained. Similarly, trademarks that wrongly claim a correlation with any deceased person within twenty years of filing an application for registration will be rejected by the Registrar unless authorized representatives of the deceased person agree.
To simplify, it is important to evaluate trademarks for the existence of any prohibitions listed under Sections 9 and 11, 13 and 14 of the Trademarks Act, 1999, in order to prevent problems during the registration process.