Trademarks are an important tool for businesses. It is a unique name, logo or design which helps in the identification of products and services and allows consumers to distinguish between different products and services. Trademarks create an image and a brand name for the business. Thus, it is crucial for your business to obtain a registered trademark. The first step for registration of a trademark is to choose a logo or a name that is appropriate for your business. There are certain names and logos that are prohibited by law from being used as trademarks. The prohibition of such trademarks is governed under the Trade Marks Act 1999 and the Trade Marks Rules 2022. The prohibitions have been listed below:
Relative grounds for refusal of registration trademark:
Section 11 of the Trade Marks Act 1999, prohibits registration of trademarks which are identical or similar to other registered trademarks because it creates the possibility of confusion.
Absolute grounds for prohibition of registration of trademark:
Section 9 of the Trade Marks Act, 1999 lays down the following absolute grounds on which registration of a trademark is prohibited.
a) Devoid of distinctive character- Distinctiveness is the ability to be distinguished from other goods or services. A trademark that is devoid of such character cannot be registered. Direct reference to the character or quality of goods and services is not termed as distinct or distinguishable.
b) Kind, quality, quantity, etc.- trademarks which exclusively consist of names or logos that designate the quality, kind, quantity, value, time of production of goods or other characteristics of goods and services are prohibited.
c) Customary in current language- Section 9(1)(c) of the Trade Marks Act,1999 prohibits the use of symbols or words which have become customary in the current language or in the bonafide and established practices of the trade. For example, using grapes as a trademark of wine or the use of certain flowers as a trademark for ‘agarbathis’ is prohibited.
Prohibition of registration of Geographical Indication as a trademark:
Registration of geographical indication as a trademark is strictly prohibited according to Section 25 of the Geographical Indication Act. The prohibition is intended to prevent misappropriation of public property which may lead to confusion in the market. Names of places with less than 5000 population can be used as trademarks, however, names of location with larger areas can not be used as trademarks
Prohibition of Olympic Symbol or Word:
An Olympic Symbol or Word, The Olympic Motto and the words Olympic, Olympiad or Olympians are prohibited from being registered as trademarks except under the authority of the Olympic Committee. Hence, such symbols or names are strictly prohibited.
Prohibition of marks likely to hurt religious susceptibilities:
A business name or logo that is likely to hurt the religious sentiments of any class or sections of citizens of India is prohibited from being used as a trademark. For example, certain footwear companies using the picture of God as a trademark will hurt religious susceptibilities and are therefore prohibited.
Prohibition of name or logo containing scandalous or obscene matter:
A business name or logo that is to be used as a trademark shall not comprise scandalous or obscene matter. Logos or names that may offend the accepted principles of morality are termed as scandalous and are prohibited from being registered as a trademark. Marks that may induce public disorder or provoke criminal and offensive behavior are not allowed to be registered. A vulgar mark on any goods is not acceptable as a trademark.
Emblems and Names (Prevention of Improper Use) Act, 1950:
The Emblems and Names (Prevention of Improper Use) Act 1950, prohibits certain names or logos or marks to be registered as trademarks without the prior permission of the Central or the State Government. Section 9 (2)(d) of the Trade Marks Act, 1999 does not allow the registration of a name or symbol which is prohibited under The Emblems and Names Act 1950. Registration of a name or logo that bears any emblem or is in contravention of Section 3 of the Emblems Act is strictly prohibited. The schedules of the Emblem Act specify the prohibited name or emblem. Item 7 of the Schedule contains certain guidelines which express that the following names will not be registered as trademarks-
a) Any name identical with the name of any society or corporation or a local body that has been set up by the Government of India is prohibited
b) Any name that gives the impression of the patronage of Central or State governments such as the Indian Council of Agricultural Research is prohibited.
c) Any name that nearly resembles the name of a body corporation or local authority set up by the Government.
Following words and symbols have been refused to be registered as trademarks by the Central Government under the Emblems Act:
a) Government symbols and names- name, emblem or official seal of both Central and State Government is prohibited from being used as a trademark. Any name or symbol used by a government department is also prohibited.
The National Flag of India or any name that suggests the patronage of the Central or State Government of India or any local body or corporation under the control of the Government of India are prohibited from being used as business names or logos.
Name, emblem or official seal of the President, Governor or Republic of the Union of India and the name or pictorial representation of Rashtrapati Bhavan or Rashtrapati cannot be used as a trademark.
Also, the words “Ashok Chakra” or “Dharma Chakra” or pictorial representation of Ashok Chakra or any other colorable imitation are prohibited trademarks. Words ‘National’ and ‘Panchsheel’ are also prohibited.
b) Symbol of political party- Representation of symbol or logo any political party is prohibited from being used as a trademark.
c) Organization- Name or symbol of the below-listed organizations can not be registered as the name or logo of a business.
● Name or emblem of the ‘United Nations Organization’
● Name and emblem of the ‘World Health Organization’.
● Name or emblem of the ‘United Nations Educational, Scientific and Cultural Organization’.
● Name or emblem of the ‘International Civil Aviation Organization’.
● International Criminal Police Organization or Interpol.
● World Meteorological Organization.
● Tuberculosis Association of India.
d) Important leaders, personalities and religious deities
Usage of names and pictures of religious deities such as Sikh Gurus, viz. Guru Nanak, Guru Angad, Guru Amar das, Guru Ram Das, Guru Arjun dev, Guru Hargobind, Guru Har Rai, Guru Har Krishnan, Guru Teg Bahadur and Guru Gobind Singh, name or picture of the deity of Lord Venkateswara and Balaji, name or picture of Shree Sai Baba or words ‘Sri Ramakrishna, Swami Vivekananda’ as trademarks are prohibitory in nature.
e) Chemical Compounds
Law prohibits registration of any word as a trademark which is a commonly used name of a chemical element or compound and is declared so by the World Health Organization.
Trademarks help the traders to create a brand name for their product. However, restrictions on the use of particular words or logos as trademarks are placed by law to prevent the Monopoly of goods and services and protect the customers from being deceived.
Author Details: Satya Singh and Sneha Chugh (New Law College, Bharati Vidyapeeth University, Pune).
The views of the author are personal only. (if any)