Absolute and Relative Grounds for Refusal of Trademarks

A trademark is one of the most valuable intellectual property assets of a business. It identifies the source of goods or services and distinguishes one enterprise from another. However, not every mark applied for registration under the Trade Marks Act, 1999 is accepted. The law lays down specific grounds on which a trademark application may be refused.

These grounds are broadly divided into absolute grounds and relative grounds for refusal. Understanding these provisions is essential for law students, practitioners, entrepreneurs, and businesses, as objections under these sections are among the most common reasons for rejection by the Trademark Registry.

This article explains the concept, statutory framework, practical illustrations, and key distinctions between absolute and relative grounds for refusal in a clear and structured manner.

Meaning of Refusal of Trademark Registration

When an application for trademark registration is filed, it undergoes examination by the Registrar of Trademarks. During this examination stage, the Registrar may raise objections if the proposed mark does not comply with statutory requirements.

Refusal may arise because:

• The mark itself is defective or unsuitable for registration; or
• The mark conflicts with an earlier existing trademark or legal right.

The first category falls under absolute grounds, and the second category falls under relative grounds.

Absolute Grounds for Refusal of Trademarks (Section 9)

Absolute grounds are contained in Section 9 of the Trade Marks Act, 1999. These grounds relate to the intrinsic nature of the trademark itself. The Registrar examines whether the mark is inherently capable of functioning as a trademark.

These grounds apply irrespective of whether any similar mark already exists. Even if no conflicting trademark is on record, a mark may still be refused if it violates Section 9.

The purpose of Section 9 is to protect public interest and ensure that only distinctive and non-misleading marks are registered.

Lack of Distinctiveness – Section 9(1)(a)

A fundamental requirement of a trademark is that it must be capable of distinguishing the goods or services of one person from those of others.

If a mark is too common, generic, or ordinary, it cannot serve as a badge of origin.

Example:

• The word “Sugar” for sugar products.
• The word “Laptop” for computers.

Such words merely describe the product and do not indicate its commercial source.

Distinctiveness may be:

• Inherent – naturally distinctive (e.g., invented words).
• Acquired – distinctive due to long and extensive use.

Proviso: Acquired Distinctiveness

Section 9 allows registration if the mark has acquired distinctiveness before the date of application. If the applicant proves long use, extensive advertisement, and public recognition, the objection may be overcome.

Descriptive Marks – Section 9(1)(b)

Marks that directly describe the characteristics of goods or services are not registrable.

This includes words describing:

• Kind
• Quality
• Quantity
• Intended purpose
• Value
• Geographical origin
• Other characteristics

Example:

• “Pure Cotton” for garments.
• “Fast Delivery” for courier services.
• “Best Quality” for consumer goods.

These expressions are necessary for competitors to use in trade. Granting monopoly over such terms would unfairly restrict market competition.

However, if such marks acquire distinctiveness through extensive use, registration may be permitted.

Customary Marks – Section 9(1)(c)

A mark that has become customary in current language or established trade practices cannot be registered.

Sometimes, a word that was once distinctive becomes generic due to widespread use. This phenomenon is called genericide.

Example:

• “Escalator”
• “Aspirin” (in certain jurisdictions)
• “Xerox” when used as a synonym for photocopy

If a term becomes the common name of the product itself, it loses its distinctiveness and cannot function as a trademark.

Deceptive or Confusing Marks – Section 9(2)(a)

A mark is refused if it is likely to deceive or cause confusion among the public.

Deception may arise regarding:

• Nature of goods
• Quality
• Geographical origin
• Composition

Example:

• “Organic Farm” for chemically treated products.
• “Silk Touch” for synthetic fabric.

Such marks mislead consumers and are therefore barred in public interest.

Marks Hurtful to Religious Sentiments – Section 9(2)(b)

Marks that hurt religious susceptibilities of any class or section of citizens are refused.

India is culturally diverse, and religious sentiments are taken seriously by courts and the Registry.

In Amritpal Singh v. Lal Babu Priyadarshi, the mark “RAMAYAN” for incense sticks was refused as it was considered inappropriate and capable of hurting religious sentiments.

The law ensures that sacred names, scriptures, and symbols are not commercially misused.

Scandalous or Obscene Marks – Section 9(2)(c)

Marks containing obscene, vulgar, or scandalous matter are barred.

The standard applied is that of public morality and decency.

A mark that shocks societal norms or promotes indecency will not be registered.

Marks Prohibited Under Other Laws – Section 9(2)(d)

A mark cannot be registered if its use is prohibited under any other law in force.

The Emblems and Names (Prevention of Improper Use) Act, 1950 prohibits use of:

• National flag
• Ashoka Chakra
• Mahatma Gandhi’s name
• Government insignia
• United Nations symbols

Such elements cannot form part of a registered trademark.

Shape Marks – Section 9(3)

Section 9(3) specifically deals with three-dimensional shape marks.

Registration is refused if the shape:

1. Results from the nature of the goods themselves.
2. Is necessary to obtain a technical result.
3. Gives substantial value to the goods.

Example:

• Shape of a football (naturally spherical).
• LEGO brick design (functional interlocking system).

The rationale is to prevent trademark law from granting monopoly over functional features, which should remain in the public domain.

Relative Grounds for Refusal of Trademarks (Section 11)

Relative grounds are contained in Section 11 of the Trade Marks Act, 1999.

Unlike Section 9, these grounds are not concerned with the inherent nature of the mark. Instead, they focus on conflicts with earlier trademarks or existing rights.

The objective is to protect private rights and prevent consumer confusion.

Likelihood of Confusion – Section 11(1)

Registration is refused if:

• The mark is identical or similar to an earlier trademark; and
• The goods or services are identical or similar; and
• There is a likelihood of confusion among the public.

Confusion includes the likelihood of association with the earlier mark.

Example:

• “Peppsi” for beverages would conflict with “Pepsi”.
• “Puma Shoes” identical to an existing “Puma” mark.

The test applied is from the perspective of an average consumer with imperfect recollection.

Well-Known Trademarks – Section 11(2)

Well-known trademarks receive broader protection, even across unrelated goods or services.

A mark may be refused if:

• It is identical or similar to a well-known mark; and
• Its use would take unfair advantage of or harm the reputation of the earlier mark.

In Honda Motors Co. Ltd v. Charanjit Singh, the use of “HONDA” for pressure cookers was refused because HONDA was already a well-known trademark in the automobile sector.

This doctrine protects famous marks from dilution and unfair exploitation.

Passing Off and Copyright – Section 11(3)

Registration is refused if use of the mark can be prevented by:

• Law of passing off; or
• Law of copyright.

Even unregistered marks are protected under passing off if goodwill is established.

Similarly, use of copyrighted artistic works without permission may attract refusal.

Consent and Honest Concurrent Use – Section 11(4)

In certain cases, registration may be allowed if the earlier proprietor gives consent.

Honest concurrent use may also be considered, depending on circumstances.

Determination of Well-Known Marks – Sections 11(6)–11(10)

The Registrar considers factors such as:

• Degree of public recognition
• Duration and extent of use
• Promotion and advertisement
• Enforcement history

Interestingly, registration in India is not mandatory for recognition as a well-known mark.

Protection of Good Faith Registrations – Section 11(11)

Marks registered or used in good faith before commencement of the Act are protected.

This ensures fairness and protects long-standing businesses.

Key Differences Between Absolute and Relative Grounds

Conclusion

Absolute and relative grounds for refusal form the foundation of trademark examination under Indian law. Section 9 ensures that only distinctive, non-deceptive, and lawful marks enter the Register. Section 11 protects existing trademark proprietors from confusion, dilution, and unfair competition.

Both provisions operate together to maintain balance between public interest and private rights. A sound understanding of these grounds enables better trademark strategy, reduces litigation risk, and strengthens brand protection.

In the evolving commercial environment, knowledge of these principles is not merely academic but practically essential for effective intellectual property management in India.

Note: This article was originally written by  Apeksha Rawat [Student, Dr. Ram Manohar Lohiya National Law University, Lucknow] on 14 January 2021. It was subsequently updated by the LawBhoomi team on 17 February 2026.