Absolute and Relative Grounds for Refusal of Trademarks

INTRODUCTION

A trademark is a sign that modifies the goods of a given company, organisation or business and distinguishes them from the goods of its intrants. Trademark may include letters, words, slogans, symbols, numerals, pictures, name, logo, even sounds and smell. Trade mark is proficient enough of being exemplified graphically and which is capable of differentiating the goods or services of one person from those of others.

These trade marks can only be established by registration. Owner of the registered trademark has the right to prohibit others from using a similar mark to recognise their goods or service on market. Owner of the trademark should first apply for registration by filling an application in national level, in their national office for protecting trademark rights which trademark will be protected only in that current country and in international level by filling one application where his trademark will be protected in many countries reliant in which country, he has marked the protection. A registered trade mark or a mark used in relation to goods or services for the intention of indicating a link in the course of trade amid the goods or services. Few people have the right either as proprietor or by way of permitted users to use the trade mark.

During the procedure of registry, officers in charged of the registry scrutinize application of the trademark. If any trademark found to be infringing any kind of law or other registered marks, they may reject the registration application of the mark.

Not every possible mark or symbol cannot be recognized as a valid trademark. there are some criteria that one sign or mark have to satisfy to gain the trademark protection.

There are many signs which are not ready to distinguish the products and services can’t be registered.  Sign or mark must be a “trademark” must fulfil all the grounds. They should not fall under absolutely the and relative grounds for refusal. Unprotected mark is going to be considered also mark in conflicts with a previous right in another trademark or other distinctive sign also will be refusal, during the case for relative ground. Accordantly to the present, the owner, during creating his mark should be original, natural, creative etc.[1]

GROUNDS FOR REFUSAL OF THE TRADEMARKS

Trade Marks Act, 1999 includes the grounds for the refusal of the trademarks. Section 9 and 11 of the Act provide for the absolute and relative grounds for the refusal of the trademark registration.

ABSOLUTE GROUND FOR REFUSAL OF THE TRADEMARKS

Section 9 of the Trade Marks Act, 1999 include the Absolute ground.

Section 9(1) of the Trade Marks Act, 1999

Under following grounds, the trade mark cannot be registered: –

Trademarks which are not capable of distinguishing the goods or services of one person from that of another person.

This section proscribes registration of marks, which lack of any distinct character. Words that can create confusion between trademarks and could deceive people are prohibited.[2] The distinction of the trademarks could of two types:

• Inherent
• Acquired.

There might be some inherent qualities or unique characteristics in the mark itself, to be distinctive or capable of distinguishing the goods.[3]

In Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks[4] case, the Imperial Tobacco Company manufactured and distributed cigarettes with a label “SIMLA” all over the country.  ITC ltd. made an application to the Registrar for the registration in the year 1960 and 1966. But both the times the registration application was refused by the registrar. The Calcutta High Court rejected the appeal on the ground that the term “SIMLA” is a famous geographical place. This term cannot be registered as a trademark.

In the case Aggarwal Sweet Palace v Asst. Registrar, an application for registration of the trade mark “Aggarwal Sweet Corner” was permitted on the basis of the user and in respect of sweets and namkeen. Opposite party appeal was dismissed.[5]

In the application of American Online Inc., the applicant wanted to register the word “YOU’VE GOT MAIL” as a trade mark in different classes. The application was refused by the Board of Directors. According to them the trade mark was not distinctive. It was held that trade mark comprised of common words to notify email users of the normal fact they have received a new mail. It is necessary that phrase must remain free from the individual monopoly rights.

Trademark which consists only of such marks or of such indications which may function in trade to specify the kind, quality, quality, geographical origin, or time of production of goods or services or other characteristics of goods or services.

This clause proscribes registration of trademarks, which consist entirely of marks or indications, which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or representing the service or other characteristics of the goods or service.

This obligation can be applied to marks which are descriptive along with non-distinctive in relation to the goods or services for which the protection is pursued. Main focus while analysing a mark should be word. Strict Grammatical significance can be put aside. (Keystone Knitting Mills Ltd.’s TM [6].

Marks with the word like “RASOI” for edible oils cannot be registered as a trademark. Reason for that is such mark indicates the nature of the product. (M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks case). [7]

Similarly, the word “SOLAR” unquestionably indicates the sun. Buyer can misunderstand the product to be produced or comes from the sun as solar energy.[8]

Trademark which comprises only of such marks or indication which have become customary in the current language or in bona fide and established practice of trade.

Trademarks which consist of marks or signs which have become customary in the existing language or in the bona fide and established practices of trade from being registered under the Act are excepted. Under this section colour combination is also considered.

Example: Colour red is considered as a basic colour. Combination of the colour red and white was held to be common to the toothpaste trade in the domestic and as well as international market. Such combination cannot monopolise by any party.

The Supreme Court in the case of Whirlpool Corporation v. Registrar of Trade Marks[9], observed that trade mark is registered without limitation of colour. A trademark can be deemed to have been registered for all colours.

A German word ‘AUTO’ cannot be registered for motor cars or their parts and fittings or anything with relation to such kind of services. Such words are publici juris or general. These words cannot be registered as they belong to the public at large.

Division Bench of Delhi High Court held that exclusive right over such word, abbreviation or acronym which has become publici juris cannot be claimed. (SBL Ltd v. Himalayan Drug Company case) [10].

Section 9(2) of the Trade Marks Act, 1999

Under following grounds, the trade mark cannot be registered: –

If such trademark is likely to deceive the public or can even cause confusion.

In the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd. case[11], the House of Lords held the plaintiff through words ‘tanned leather cloth’ intended to deceive the public. Only one-third tanned leather cloth was produced.

If such trademark is hurting the religious sentiment of any class or section of Indian citizens. It is not difficult to find the name of any god or goddess or any religious head as a trademark in India.

The Act refuses the use of names or device of deities on foot wear will be considered disrespectful.

The word RAMAYAN was refused for registration as trademark in the case of Amritpal Singh v Lal Babu Priyadarshi[12]. Intention of the applicant was to sought to be registered as trade mark for incensed sticks and other fragrance spreading products. Registration opposed inter alia on the ground that mark was a religious word and lacked distinctiveness. It was also held that it would have been a case if “Ramayan” had been prefixed or suffixed with some other word or words so that “Ramayan” was not the prominent feature of the mark.[13]

If such trademark contains any kind of scandalous or obscene matters.

Trademark which is considered to obscene cannot be excepted. The Registrar can refuse the registration on the ground that the mark was conflicting to the acknowledged principles of morality.

If the use of such trademark is prohibited under the Emblem & Names (Prevention of Improper use) Act, 1950

Section 4(b) of the act prohibits the registrar from registering a trademark or a design which holds any emblem or name and use of it shall be in infringement of section 3 of the Act.

Example: Subhash Chandra Bose, Indira Gandhi, National Flag etc. cannot be used as Trademark.

Section 9(3) of the Trade Marks Act, 1999

A mark shall not be registered if it consists exclusively of:

1. The shape of goods which result from the nature of the goods themselves.
2. The shape of goods which is necessary to obtain a technical result.
3. The shape of goods which adds substantial value to the goods.[14]

Relative grounds for refusal of Trademark

Relative grounds for refusal of registration are dealt under article 11 of the Act, 1999. Basically, absolute grounds for refusal of registration are clear. Relative grounds for refusal are dealt differently.  It deals with the mark in connection to other earlier marks.

This Section provides that a mark is often refused due to its identity and association with an earlier trademark and similarity of products or services covered by the trademark or, its similarity to an earlier trademark and therefore the identity or similarity of the products or services covered by the trademark. This helps in reducing the likelihood of confusion within the public who would assume the newly registered mark is somehow connected or associated to the previous trademark.[15]

It also provides that objections are often raised just in case of any similarity between the sooner marks. However, an applicant can register such trademark if the proprietor of the sooner mark has given his/her approval or the mark is registrable under Section 12 by virtue of honest concurrent use. it’s the duty of the Registrar to guard a well-known trademark against the identical or similar trademarks. Primarily, protection of public interest and therefore the interest of other bonafide traders who are entitled to object if the utilization of the trade mark proposed for registration will enable the applicant’s goods/services to be happened intrinsically other traders’ goods. Given the above, Section 11 prescribes that any mark which is analogous to a mark which is already registered (earlier trademark) or is employed for similar goods won’t be allowed registration. there’s a likelihood of confusion for the general public because the trademark being applied for is identical with an earlier trademark and therefore the goods/ services of the 2 marks are similar. A trademark shall not be registered if its use is susceptible to be prevented by virtue of law of Passing off or Law of Copyright.

Relative Grounds for Refusal of Registration’ by the Indian Trade Mark Office means a Registered mark or a convention application (from a citizen of a country/group of nations with which India features a treaty/ agreement) that the date of application was before the trademark sought to be registered. If an application for registration is in respect of a trademark which falsely suggests a reference to a living person or an individual who died within 20 years before the date of application, then the Trade Mark Registrar may, before proceeding with the appliance, require the applicant to furnish consent in writing of such living person; or personal representative of the dead person. The Registrar may refuse to proceed with the appliance if such consent isn’t furnished.

In very famous case of Amritdhara Pharmacy v Satyadeo[16]court established degrees of comparison between sets of similar word marks. ‘Amritdhara’ and ‘Lakshmandhara’ were held similar words. Wherein instead of the words being subjected to a side-by-side comparison or to a punctilious individual analysis, some structural examination of the words is permitted, particularly with the object of establishing if either possesses any outstanding characteristic that will unavoidably cause a more or less lasting imprint on the hearers’ mind.

CONCLUSION

Trademarks are essential intellectual property tools and consumer certainty. There are however many instances where practices by groups can lead to the refusal of registration of trademarks. Recently the discrimination was in the news with reference to Section 9(2) of the Trade Marks Act, 1999.

The beauty product ‘fair & lovely’ can be considered as the discriminatory in nature. This mark cannot be registered as it is violative of fundamental rights enshrined under Article 15 of the Indian Constitution. Skin tone or colour preference can result in discrimination in India. In many foreign countries similar issue were raised. Courts of the foreign country held that such words cannot registered as trademarks for the products.  Product name ‘Fair & lovely’ was changed to ‘Glow & Lovely’ due to raised issues.

With the growing evolution of the trade marks all over the world, India must do all the necessary to ensure the protection of individual businesses and avoid deceitful transactions and the fraud of consumers and clients. Registration of the trademark is not only a regulatory requirement of business but it is also known as the best evocative measure to adopt to safeguard business interest.

[1] Verkey E, Intellectual Property : Law and Practice (Eastern Book Company 2015).

[2] Amritdhara Pharmacy v Satya Deo Gupta (1963) 2 SCR 484.

[3] “Grounds for Refusal of Trademark Registration – Part 1” (BananaIP Counsels, July 22, 2019) <https://www.bananaip.com/ip-news-center/grounds-refusal-registration-trademarks-explained/> accessed December 28, 2020

[4] Imperial Tobacco Co. of India Ltd. v The Registrar of Trade Marks AIR 1977 Cal 413.

[5] Aggarwal Sweet Palace v Asst. Registrar 2005(30) PTC 336 (IPAB).

[6] Keystone Knitting Mills Ltd.’s TM (1928) 45 RPC 193.

[7] Hindustan Development Corporation Ltd. v The Deputy Registrar of Trade Marks AIR 1955 Cal 519.

[8] Central Camera Company Private Ltd v Registrar of Trade Mark IPLR (1980) Vol 5 pg 1.

[9] Whirlpool Corporation v Registrar of Trade Marks (1998) 8 SCC 1.

[10] SBL Ltd v Himalayan Drug Company AIR 1998 Delhi 126.

[11] Shalimar Chemical Works v Deputy Registrar MANU/IC/0047/2009.

[12] Lal Babu Priyadarshi v Amritpal Singh (2015) 16 SCC 795.

[13] Trade Marks Act 1999.

[14] Venkatesh U, “Grounds for Refusal to Register a Trademark | Explained” (Legal Bites – Law And Beyond, June 17, 2020) <https://www.legalbites.in/grounds-for-refusal-register-a-trademark/#_ftn7> accessed December 28, 2020

[15] “FAQ | Renewal and EP Validation Service Provider in Turkey | Turkrenewals” (www.turkrenewals.com) <http://www.turkrenewals.com/FAQ-patents-trademarks-designs-turkey.html> accessed December 28, 2020

[16] Amritdhara Pharmacy v Satyadeo (1906) 23 RPC 774.

Author Details: Apeksha Rawat [Student, Dr. Ram Manohar Lohiya National Law University, Lucknow]