“GROUNDS FOR PROHIBITION OF REGISTRATION OF TRADE MARKS”

FINAL DRAFT SUBMITTED IN FULFILMENT OF THE COURSE

TITLED INTELLECTUAL PROPERTY RIGHTS FOR OBTAINING THE DEGREE
BA.LLB(HONS.) DURING THE ACADEMIC YEAR 2019-20.

SUBMITTED TO: - SUBMITTED BY: -

DR. S.C. ROY AKASH ANAND
FACULTY IPR Roll: 1808
7TH Semester

OCTOBER 2020

CHANAKYA NATIONAL LAW UNIVERSITY

NYAYA NAGAR, MITHAPUR, PATNA – 800001

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 DECLARATION

I, Akash Anand, student of Chanakya National Law University, hereby declare that the
project work entitled “Grounds for prohibition of registration of Trade Marks”
submitted to the Chanakya National Law University, Patna is a record of an original work
done by me under the guidance of Dr. S.C. Roy, teacher in subject, Chanakya National Law
University, Patna.

THANK YOU,

NAME: Akash Anand

COURSE: B.B.A., LL.B. (Hons.)

ROLL NO: 1808

SEMESTER – 7th

SESSION- 2017-2022

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 ACKNOWLEDGEMENTS

I would specially like to thank my guide, mentor, Dr. S.C. Roy without whose constant support
and guidance this project would have been a distant reality.

This work is an outcome of an unparalleled infrastructural support that I have received from
Chanakya National Law University, Patna.
I owe my deepest gratitude to the library staff of the college.

It would never have been possible to complete this study without an untiring support from my
family, specially my parents.

This study bears testimony to the active encouragement and guidance of a host of friends and
well-wishers.

THANK YOU,

NAME: Akash Anand

COURSE: B.B.A., LL.B. (Hons.)

ROLL NO: 1808

SEMESTER – 7th

SESSION- 2017-2022

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 CONTENTS

DECLARATION BY CANDIDATE.................................................................................... 2

ACKNOWLEDGEMENT .................................................................................................... 3

CONTENTS ........................................................................................................................... 4

CHAPTER 1: MEANING AND SCOPE OF TRADEMARKS….................................6-7

CHAPTER 2: CONDITIONS FOR REGISTRATION OF TRADE MARKS............8-10

CHAPTER 3: ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION.....11-13

CHAPTER 4: REALATIVE GROUNDS FOR REFUSAL OF REGISTRATION.. 14-17

CHAPTER 5: CONCLUSION AND SUGGESTION…………………………………..18

CHAPTER 6: BIBLIOGRAPHY………………………..………………………………19

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METHOD OF RESEARCH
This study is oriented to study and analyse the governments dealing with traditional
knowledge. Secondary data involves the collection of data through past research studies,
journals, magazines, books, leading databases, articles and internet.

METHOD OF WRITING
The method of writing followed in the course of this research paper is primarily analytical.

AIMS AND OBJECTIVES

1. The researcher’s prime aim is to present a detailed study on “Grounds for
prohibition of registration of trade marks.”
2. The researcher aims to descriptively provide a critical overview of the topics arising.
.
3. And also, to know the conditions of registration.

HYPOTHESIS
The researcher presumes that the registration of a trademark under the Trade Marks Act,
1999 is primarily concerned with the ‘distinctiveness’ of a mark and it is used for the
goods/services that are sought to be protected.

LIMITATION OF THE STUDY

The researcher intends to cover only few aspects of Traditional Knowledge which are relevant
to the proposed study.

As study was done within a limited time, the researcher could not select sufficiently large
sample for the study.

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 1. MEANING AND SCOPE OF TRADE MARKS
Intellectual Property Rights (IPRs) are those bodies of rights which can be claimed over a work
that has been conceptualised and created by an accord of one’s own intellect and acumen. The
work involves human prowess, perception, knowledge, skills and above all inventiveness. The
most widely accepted Intellectual Property Rights are copyright, trademarks, geographical
indications, industrial designs, patents and layout designs of integrated circuits. This article
will specifically deal with trademarks and discuss the various grounds for refusal of registration
of trademarks.

The earliest legislation in India dealing with trademarks was the Trade and Merchandise Marks
Act, 1958 which underwent considerable amendments over a period of four decades. However,
with significant developments and rapid changes in the global landscape of trade, industry and
commercial practices coupled with the need to boost investment flows, transfer of technology
and to develop simpler and harmonious management of trademark systems more
comprehensive legislation was the need of the hour.1 It was in the wake of these transnational
developments that the Trade Marks Act, 1999 was enacted by the Parliament which aimed to
consolidate the law relating to trademarks in the Indian context.

The Trade Marks Act, 1999 defines a “trademark” under Section 2(1)(zb). A trademark means
“a mark capable of being represented graphically and which is capable of distinguishing the
goods and services of one person from those of others and may include the shape of goods,
their packaging and combination of colours.” Therefore, in common parlance, a trademark is a
type of intellectual property which comprises of a visual or printed representation of signs,
symbols, words, mark or a logo that can be employed to identify and distinguish a particular
product/services from the other. The main purpose of trademark law is to protect these signs,
symbols, words, logo, marks etc. from unfair use and abuse by those other than the genuine
registered proprietors of such trademarks.

SIGNIFICANCE OF TRADE MARKS

1. A trademark enables to identify the origin of a particular mark and helps to distinguish
between the products/services of one trader from others. Therefore, a trademark must
have a distinctive character.

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 2. A trademark reflects upon the consistent nature, quality and characteristics or essential
attributes of the goods/services rendered.
3. A trademark can provide crucial information about the products to the customers and
thus avoid confusion based solely on deceptively similar marks.
4. It can enable the owners of goods/services to advertise their products/services using
such trademark. Therefore, a trademark serves as a powerful advertising tool, which
accredits a trademark to a particular product/service.
5. Furthermore, a trademark enables the growth and development of an enterprise.

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 2. CONDITIONS FOR REGISTRATION OF TRADE MARKS

The conditions for registration for trade marks provided under Trade and Merchandise Marks
Act, 1958 has been significantly changed by Trade Marks Act, 1999. Therefore, the conditions
of registration of trademarks as provided under Trade and Merchandise Marks Act, 1958 and
the conditions for registration for trade marks under Trade Marks Act, 1999 are also given.

The proprietor of a trademark must not only use but also register the trademark, failing which
a suit for infringement cannot be filed. Therefore, in order to acquire effective trademark rights,
registration, as well as the use of the said trademark in relation to the particular goods/services,
is essential. The Trade Marks Act, 1999 does not specifically prescribe the grounds or
conditions on the satisfaction of which a trademark will be granted registration. However, it
prescribes the grounds for refusal of registration of trademarks. The grounds for refusal of
registration of a trademark can be dealt under two categories under the Act, viz.,

• Absolute grounds for refusal of registration (Section 9)

• Relative Grounds for refusal of registration (Section 11).

Conditions for registration under the Trade and Merchandise Marks Act, 1958.

With the coming into force of Trade Marks Act, 1999, the Trade and Merchandise Marks
Act, 1958 stands repealed. The TMM Act, 1958 remained in force till the Trade Marks Act,
1999, and many important cases were decided on the basis of TMM Act, 1958. Therefore,
prohibition of registration of certain Trade marks under TMM Act, 1958 is also explained
here.
Earlier sections 111 and 12 of TMM Act, 1958 provided for prohibition of registration of
certain Trade Marks. Under section 11 of TMM Act, 1958 the registration of a Trade mark
is prohibited on certain groups. One of the grounds for prohibition of registration under
section 11 (a) is that if the trade mark is registered then it is likely to deceive or cause
confusion.
Whereas to prohibit the registration under section 12 of TMM Act, 1958 one has to prove
that it is deceptively similar to a Trade mark which is already registered under the Trade

1
Section 11 of the TMM Act, 1958- Prohibition of registration of certain marks.

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 mark Law. Provisions for the prohibition of registration of trade marks under section 11 and
section 12 of the said statute is as under-

1. Prohibition of Registration of Marks on certain Grounds (Section 11)

Section 11 of the TMM Act, 1958 provided for prohibition of registration of certain trade
marks on certain grounds. According to section 11, a mark is not registered if:
o The use of the mark would be likely to deceive or cause confusion; or
o The use of the mark would be contrary to any law for the time being in the
force,
o The mark comprises or contains scandalous or obscene matter, or
o The mark comprises or contains any matter likely to hurt the religious
susceptibilities of any class or section of citizens of India
o The mark would otherwise be disentitled to protection in a court.

In the landmark case of Amritdhara Pharmacy Vs Satya Deo Gupta2 ,In the said case the
test for determining the similarity in two words relevant to an infringement action was stated
by Supreme Court that: You must take the two words. You must judge them, both by their
look and by their sound. You must consider the goods to which they are to be applied. You
must consider the nature and kind of customer who would be likely to buy those goods. In fact
you must consider all the surrounding circumstances and you must further consider what is
likely to happen if each of those trademarks is used in normal ways as a trade mark for the
goods of the respective owners of the marks. If considering all those circumstances, you come
to the conclusion that there will be a confusion- that is to say, not necessarily that one man will
be injured and the other will gain illicit benefit, but that there will be a confusion in the mind
of the public which will lead to confusion in the goods-then you may refuse the registration,
or rather you must refuse the registration.

In the case of Tosiba Appliances v. Kabushiki Toshiba3 , the tosiba Appliances Company of
Delhi applied for registration of Trade Mark “TOSIBA” for its electrical goods. This
application of the applicant for registration was opposed by Kabushiki Toshiba under section
11(a) of TMM Act, 1958. The opponent contended that opponent’s trade-mark TOSHIBA in

2
AIR 1963 SC 449
3
2002 (24) PTC 654 (Reg.)

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respect of electrical goods is a well- known trade mark in India and abroad. Therefore,
registration should not be granted. Accepting the contention raised by the opponent the
registrar of trade marks refused registration of the applicant’s trade- mark ‘TOSIBA’.

Therefore, the Trade Marks Act, 1999 embodies a wide scope for registration of marks by
registering those marks which are not prohibited from registration under the absolute or
relative grounds for refusal of registration, provided it is a “trademark” within the meaning of
Section 2(1)(zb) of the Act and is capable of distinguishing the goods of one person from those
of others

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 3. ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION

Section 9 of the Trade Marks Act, 1999 lays down the absolute grounds for refusal of
registration. The absolute grounds for refusal of registration of a trademark is related to public
policy. The legislative intent behind this provision is to protect the legitimate interest of the
traders as well as the public who are genuine and bona fide users of various marks in the form
of signs, symbols, logos, words, etc. which have been acquired by them in relation to their
goods/services.

Section 9 states that:

“Absolute grounds for refusal of registration: (1) The Trade marks –

(a) Which are devoid of any distinctive character, that is to say, not capable of distinguishing
the goods or services of one person from those of another person;

(b) Which consist exclusively of marks or indications which may serve in trade to designate
the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods or
service;

(c) Which consist exclusively of marks or indications which have become customary in the
current language or in the bona fide and established practices of the trade,

A trademark shall not be registered on the following grounds4:

• the mark lacks any distinctive character;

• the mark designates the kind, quality, intended purpose, values, geographical origin or
the time of production of the goods or services rendered;
• the mark has become customary in the current language or in the bonafide and
established practices of the trade;
• the mark deceives the public or causes confusion;
• the mark is likely to hurt the religious sensitivities of any class or section;
• it comprises scandalous or obscene matter;
• The Emblems and Names (Prevention of Improper Use) Act, 1950 prohibits its use;

4
The Trade Marks Act, 1999 (Act 47 of 1999), s. 9.

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 • if the mark exclusively consists of the shape of goods which results from the nature of
the goods themselves;
• it exclusively consists of the shape of goods which is necessary to obtain a technical
result;
• the shape gives substantial value to the goods.

However, a trademark has acquired a “distinctive character” as a consequence of its use or is a

“well-known trademark”, prior to the date of application for registration, the trademark shall
not be refused for registration. The distinctive character which allows one to distinguish the
goods/services of one person from others may be inherent or acquired. Therefore, it is crucial
to have regard to the inherent features of the trademark which makes it possible to distinguish
the goods/services of one from another.

In Corp. v Deputy Hindustan Development Registrar of Trade Marks5, the issue involved
was centred around the word “Rasoi” and whether it could be registered as a trademark for
hydrogenated groundnut oil or not. It was held that the grammatical significance of a mark does
not refer to the quality of goods, instead, it must be construed from the point of view of the
public at large. Thus, to the general public, the word “rasoi” means cooking. The use of
groundnut oil that is hydrogenated is for the purpose of cooking, which in turn forms a part of
its character. Therefore, the word “rasoi” has a direct reference to the “character” of goods.

Furthermore, even if the word “rasoi” did not directly impute the good’s character or quality,
the word must be “distinctive” for it to be registrable. This distinctiveness must indicate that
the goods for which the mark is used are the goods of the proprietor and is capable of
distinguishing the goods of the proprietor from those of others. Moreover, even if the word
“rasoi” is distinctive it cannot be registered because it is a common word and no one can
exclusively use such words and deprive others of using the common words of a language which
are public property. Therefore, in the instant case, the word “rasoi” could not be registered as
it lacked distinctiveness associated with the applicant’s goods.

5
AIR 1955 CAL 519 available at https://indiankanoon.org/doc/1401045/ (last visited Oct 16, 2020).

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Similarly in Geep Flashlight Industries v Registrar of Trade Marks6, the word “Janta” used
for electric torches was sought for registration. The Registrar refused registration on the ground
that it was neither distinctive nor had the capability to distinguish the product of the applicant
from those of others. The word “Janta” is a common word and indicative of the fact that the
goods are not expensive and meant for the common man thereby referring to the quality or
character of the goods. In J R Kapoor v Micronix India7 the Supreme Court held that the
word “micro” used for the production of electronic goods was descriptive of microtechnology
and thus no one could claim exclusive use of it.

6
AIR 1972 DEL 179 available at https://indiankanoon.org/doc/1689664/ (last visited Oct 16, 2020).
7
1994 supp (3) SCC 215 available at https://indiankanoon.org/doc/2044127/ (last visited Oct 16,
2020)

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 4. RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION

Section 11 of the Trade Marks Act, 1999 lays down the relative grounds for refusal of
registration. The legislative intent of this provision is to protect the interest of the owners of
registered trademarks.

• Section 11(1) provides that where the public is likely to get confused on account of a
mark being identical or similar to an earlier trademark and a subsequent mark for certain
goods/services is identical or similar to the goods/services represented by an earlier
mark, such a mark shall not be registered. Therefore, if the subsequent mark is
associated with the public to an earlier mark it is likely that such similarity between the
marks is sufficient to cause confusion and thus bring it within the scope of Section
11(1). However, where the goods/services are identical there is no need to prove
confusion. But the similarity between an earlier and a subsequent trademark and where
the goods/services are similar or identical the likelihood of confusion must be proved.

In Toshiba Appliances Co. v Kabushiki Kaisha Toshiba8 the applicant’s mark ‘TOSIBA’
which was applied for registration had a close resemblance to the opponent’s trademark
‘TOSHIBA’ which was used in respect of electronic goods. This resemblance in the two marks
was likely to confuse or deceive the users. The court in the instant case held that the applicant’s
mark ‘TOSHIBA’ was deceptively similar to the opponent’s mark ‘TOSHIBA’. There was a
phonetic similarity between the two marks.

There are certain essential principles which must be kept in mind while comparing trademarks
that are likely to confuse or deceive the users viz.:

• The actual probability of deception which can lead to passing off need not be proved.
The likelihood of the mark to confuse or deceive the purchaser is sufficient to bring the
mark within the scope of Section 11(1).
• The confusion or deception caused by two marks has to be judged from the vantage
point of a person with an imperfect recollection, who only knows one word and is not
familiar with both the words. Therefore, a meticulous comparison of two similar words
will be of little help.

8
2002 (24) PTC 654 available at https://indiankanoon.org/doc/82395463/ (last visited Oct 17, 2020).

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When two words are being compared, they must be compared as a whole. It would be
inappropriate to compare two different parts of two words which are being compared.

In Amritdhara Pharmacy v Satya Deo9 the similarity of the words ‘Amritdhara’ and
‘Lakshmandhara’ was under consideration used in relation to medicinal preparations. Both
these words when read or spoken together had a similarity which could lead to confusion. The
Supreme Court held that an ordinary purchaser who is of “average intelligence” and “imperfect
recollection” cannot be expected to bifurcate the words into its component parts and compare
the etymological meaning or consider the meaning of the component words as ‘current of
nectar’ (Amritdhara) or ‘current of Lakshman’ (Lakshmandhata).

An ordinary person is more likely to consider the overall structure and phonetic similarity of
the words as a whole and associate it with the nature of medicine previously purchased by him.
Therefore, the “true test” is whether the proposed trademark, in this case, the words, when
considered in totality is likely to cause confusion in the minds of those who are already familiar
with a prevailing trademark or not.

• The structural i.e., the appearance as well as the phonetic similarity must be taken into
consideration.
• The meaning and ideas conveyed by the words should also be taken into account. The
words which convey the same meaning or ideas are likely to cause confusion.
• Under Section 11(2) a trademark shall not be registered under two circumstances:
• Where the trademark is identical or similar to an earlier trademark;
• Where the goods/services for which a trademark is to be registered is not similar to the
goods/services for which an earlier trademark is registered in the name of a different
proprietor.

9
The Trade Marks Act, 1999 (Act 47 of 1999).

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The above two conditions are applicable when:

• the earlier trademark is a “well-known trademark” in India; and

• the use of the later or subsequent trademark will amount to taking an unfair advantage
or harmful to the “distinctive character” or prejudicial to the reputation of the earlier
trademark.

A well-known trademark is defined under Section 2(1)(zg) of the Trade Mark Act, 1999 and it
means “a mark which has become so to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation to other goods or services
would be likely to be taken as indicating a connection in the course of trade or rendering of
services between those goods or services and a person using the mark in relation to the first-
mentioned goods or services.”

Therefore, special rights have been given to well-known trademarks under the Act. Thus, the
qualities or attributes of a well-known trademark may be acquired by an ordinary trademark.
This means that when a person sees a trademark on some goods/services and is able to relate it
to a trademark present on some other goods/services, such a trademark can be said to be a
“well-known trademark”. Section 11(6) lays down the relevant facts that must be considered
by a Registrar while determining whether a trademark is a well-known trademark or not.

In Carrefour v V Subburaman10 the applicants were using the word CARREFOUR since
1960 for their retail business throughout the world. The proprietor brought a suit of passing-
off against the respondents for using the trademark ‘Carrefour’ from July 2000 for furniture.
In the instant case, the trademark was not registered in India in favour of the applicant with
respect to furniture. However, it was registered in other countries in relation to furniture and
registered in India in relation to other goods. Therefore, a large section of the public identified
and associated the goods of the applicants with the trade name “CARREFOUR” and was likely
to draw a connection between the products of the respondents with that of the applicant, in the
course of trade. Thus, the court held that “CARREFOUR” is a well-known trademark.

10
2007 (35) PTC 225 available at https://www.casemine.com/judgement/in/56ea7a36607dba36fd0b5fea (last
visited Oct 19, 2020).

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 • Section 11(3) prescribes that a trademark shall not be registered if its use in India is
prevented owing to the following reasons:
• where an unregistered trademark used in the course of trade is protected by the law of
passing-off or by virtue of any other law;
• by the law of copyright.

Therefore, the proprietor of an earlier trademark can oppose a later trademark by virtue of
Section 11(3).

The law of passing-off protecting unregistered trademarks is also available to proprietors of

registered trademarks. The similar marks used on the same, similar or dissimilar goods can be
opposed by the proprietor as passing off can be claimed by registered as well as unregistered
users. Furthermore, when a later trademark is similar to an earlier trademark which is protected
by copyright law and is sought to be used on any goods or services then such a later trademark
shall not be registered by virtue of Section 11(3).

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 5. CONCLUSION AND SUGGESTION

From the above discussion, it can be concluded that the registration of a trademark under the
Trade Marks Act, 1999 is primarily concerned with the ‘distinctiveness’ of a mark and it is this
‘distinctive character’ of a mark used for the goods/services that are sought to be protected. It
is through this distinctiveness of a trademark that the goods/services of a person can be
identified and distinguished from those of others. Moreover, the standard required for
trademark registration is not very strict.

The Trade Marks Act, 1999 prescribes various grounds, both absolute and relative which must
be borne in mind before a trademark is approved for registration. Where a trademark is likely
to cause confusion or deception the prohibition to register the said mark is absolute and this is
to protect the interest of the buyer.

Similarly, a subsequent mark which is similar or identical to an earlier trademark cannot be

granted registration. This holds true even in cases where the goods/services represented by a
subsequent and an earlier mark are identical or similar or where confusion or deception can be
caused in the minds of the public. In both these circumstances, the mark will be refused
registration.

Therefore, a trademark is of immense importance and significance as the reputation, identity

and goodwill associated with the goods/services become coextensive with the trademark itself.
The mark representing the goods/services are not mutually exclusive, instead, it substantiates
the authenticity and distinctiveness attributed to such goods/services by the mark and vice-
versa.

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 6. BIBLIOGRAPHY

BOOKS:

1. Author: V.K. Ahuja, Laws Relating to Intellectual Property rights, Published by

LexisNexis, Edition – 3rd , (2020).
2. Author: P Narayan, Intellectual Property Laws, Published by Eastern Law House,
Edition – 5th, (2018).
3. Author: Neeraj Pandey & Kushdeep Dharni, Intellectual Property rights, Published
by PHI, Edition – 6th, (2014).

WEBSITES

• https://lawcirca.com/what-are-the-grounds-for-refusal-of-registration-of-a-trademark/

• https://www.mondaq.com/india/trademark/900690/refusal-of-trademark-registration-

absolute-grounds

• http://ipindia.nic.in/writereaddata/Portal/ev/TM-ACT-1999.html

• https://www.lexology.com/library/detail.aspx?g=26e3d590-7347-4e7b-8d5d-

d03f3228d4da.

• https://www.bananaip.com/ip-news-center/grounds-refusal-registration-trademarks

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