 By: Dr.

Kanan Divetia
 Symbiosis Law School, NOIDA
 What are the conditions for registration of a trade mark? (Definition
of Trade Mark sec 2(zb))
 It must be a ‘mark’ as defined u/s 2(m) of the Trade Marks Act.
 The mark must be represented graphically.
 And the mark must be capable of being distinguishing the goods
and services of one person from those of others.

 Marks are divided into 2 parts:

 Conventional Marks
 Non-Conventional Marks
 What are the grounds on which the trade marks are refused
registration?
 They are given under section 9 and 11 of the Trade Marks Act.

 Absolute Grounds for Refusal of Registration (Section 9)

 Relative Grounds for Refusal of Registration (Section 11)

 The Trade Marks Act, 1999 lays down absolute grounds and
relative grounds for refusal of registration of trade marks under the
Act. Baring few exceptions, the absolute grounds for refusal of
registration refuse the registration absolutely whereas the relative
grounds for refusal are applicable only when there already exists a
trade mark, in comparison to which the new trade mark is not
registrable.
 9. 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, shall not be registered:

 PROVIDED that a trade mark shall not be refused registration if before the date
of application for registration it has acquired a distinctive character as a result
of the use made of it or is a well-known trade mark.
 (2) A mark shall not be registered as a trade mark if -
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention
of Improper Use) Act, 1950.
 (3) A mark shall not be registered as a trade mark if it consists
exclusively of -
(a) the shape of goods which results from the nature of the goods
themselves; or
(b) the shape of goods which is necessary to obtain a technical
result; or
(c) the shape which gives substantial value to the goods.
 Explanation : For the purposes of this section, the nature of goods or
services in relation to which the trade mark is used or proposed to be
used shall not be a ground for refusal of registration.
 Components of Section 9(1):
 Section 9(1) contains three sub-clauses involving the consideration
of the main question of distinctiveness of the trade mark applied
for, broadly classified as follows:
1) Marks which are devoid of distinctive character - Clause (a) of
sub-section (1) enacts that trade marks ‘which are devoid of any
distinctive character’ provides the broadest ground of refusal of
registration.
2) Marks consisting of designation which are descriptive - Clause
(b) makes provision to refuse registration of marks consisting
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.” This provision is obviously intended to prohibit
registration of marks, which are purely descriptive.
3) Marks in common language or in established practices of trade -
Clause (c) deals with those cases consisting of marks ‘ which have
become customary in the current language or in the bona fide and
established practices of the trade’ from being monopolised by
anyone trader as a trade mark.
Marks may be registrable if shown to be distinctive
Sub-section (1) including the above 3 clauses has a proviso attached
to it, to say that a trade mark “shall not be refused registration if
before the date of application for registration it has acquired a
distinctive character as a result of the use made of it or is a well
known trade mark.” In short, sub-section (1) is designed to prohibit
registration of trade marks which are devoid of distinctive, or which
are purely descriptive or which are common to trade, unless the
mark is shown to be covered by the proviso.
Also to be read along with section 32
 Section 9(1)(a) : Distinctiveness is the fundamental principle for
registration of a mark. Distinctiveness of a mark is the hallmark of
Trade Marks Laws.
 Marks can be inherently distinctive (Kodak, Xerox, Google, Dettol,
Vicks, Escalator) and
 Marks which have acquired distinctiveness (Apple, Camel,
Booking.Com)
 Doctrine of Secondary Meaning. Acquired distinctiveness is
commonly referred to as “secondary meaning.”
 Glaxo Group Ltd. v. Indkus Drugs and Pharma (P) Ltd. (2015) 61
PTC 358
 BETNOVATE AND BETO-VATE were held to be deceptively similar
as the mark Betnovate has acquired distinctiveness over a period of
time.
 Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F.2d 4 (2nd Cir. 1976)
 Justice Learned Hand had laid down a spectrum which measures
distinctiveness on the following categories:
 Generic—does not qualify for protection
 Descriptive—sometimes qualifies for protection
 Suggestive—qualifies for protection
 Arbitrary or fanciful—qualifies for protection
 Invented – affords strongest protection
 Generic <<<< Descriptive <<<< Suggestive
<<<<Arbitrary/Fanciful <<<<
Invented
 (Weakest protection)----------------------------------------(Strongest
Protection)
 9(1)(b) Marks consisting of designation which are descriptive - Clause
(b) makes provision to refuse registration of marks consisting
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.” This provision is obviously intended to prohibit registration of
marks, which are purely descriptive

 Imperial Tobacco Co. of India Ltd. v. The Registrar of Trademarks [AIR

1977 Cal. 413] (Mark- ‘Shimla’)
 ‘Anglo-French was refused registration on the ground that it had
geographical name.
 M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar
of Trademarks [AIR 1955 Cal. 519] (Mark – Rasoi)
 Laxmikant V. Patel v. Chetanbhai Shah AIR 2002 SC 275 (Mukta Jeevan
Colour Lab – Use of Mark)
 9(1)(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, shall not be registered:
 PROVIDED that a trade mark shall not be refused registration if
before the date of application for registration it has acquired a
distinctive character as a result of the use made of it or is a well-
known trade mark.
 Clause (c) to Section 9(1) has been inserted in the Act primarily to
protect the free use of indications or marks which are already in
use in the trade, from being monopolized as a trademark. The
trademarks 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 shall not be registered. For
example, Red cross sign,

 WHAT IS TRADEMARK GENERICIDE?

 Section 9(2): Absolute Grounds of refusal on public policy
 Sub-section (2) contains provisions touching on matters of public
policy. It therefore mandates that a mark shall not be registered-
 (a) if it is of such nature as to deceive the public or cause confusion.
 (b) if it contains matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India.
 (c) if the mark contains scandalous and obscene matter
 (d) the use of the mark is prohibited by the Emblems and Names
(Prevention of Improper Use) Act, 1950.
 Deceptively Similar - 2(h) as:"A mark shall be deemed to be
deceptively similar to another mark if it so nearly resembles that
other mark as to be likely to deceive or cause confusion.“
 Likely to deceive or cause confusion
 Lord Denning in Parker Knoll Ltd. vs. Knoll International Ltd. had
explained the difference between the phrase ‘likely to deceive’ and
cause confusion’
 Amritdhara Pharmacy v. Satya Dev Gupta
 M/S Lakme Ltd. v. M/S Subhash Trading
 SM Dyechem Ltd. v. Cadbury (India) Ltd
 Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd
 9(2)(b) if it contains matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India:
 The application for registration of the mark ‘Jesus’ was rejected (Basic
Trademark SA’s TM Application, 2005 RPC 611, 621, 622
 The use of names or device of deities on foot wear will be considered
disrespectful. Likewise, the use of Hindu gods in respect of beef or
meat products or use of Muslim saints for pork products would be
offending the religious sentiments of respective sections of public.
 In Amritpal Singh v. Lal Babu Priyadarshi , 2005 (30) PTC 94 (IPAB) 23
(2002) RPC 628, p.635 the word RAMAYAN was refused registration on
the grounds that:
 Firstly, it was not capable of distinguishing the goods of the applicant
and
 Secondly, that it was likely to hurt religious sentiments of a class of
society.
 9(2)(c) if the mark contains scandalous and obscene matter
 A mark which is contrary to the morality or is considered obscene
are not registered and the onus will fall on the applicant to prove it
so by the evidence to overcome the objection.
 9(2)(d)
If the use of such trademark is prohibited under the
Emblem & Names (Prevention of Improper use) Act, 1950
 Emblem and Names (Prevention of Improper) Act, 1950, prohibits
the improper use of certain emblems and names for professional
and commercial purpose. 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 contravention of section 3
of the Act.
 Example: Mahatma Gandhi, Pandit Nehru, National Flag etc.
cannot be used as Trademarks.
 Section 9(3) provides that a mark shall not be registered if it consists
exclusively of –
 (a) the shape of goods which results from the nature of the goods themselves,
 Example - the shape of an egg tray, whose purpose is to hold eggs, would fall
within the context of section 9(3) (a) and would not be considered as capable to
distinguish from others.

 (b) the shape of the goods which is necessary to obtain a technical result
 Example - the shape of a square pinned plug, if the pins are not square they
will not fit into the standard socket therefore it is mandatory to achieve that
standard shape which is a technical result. Hence shall not be registrable under
section 9(3) (b).
 (c) the shape of the goods which gives substantial value to the goods.
 Example - shapes which are more effective than other alternatives for
performing a particular task add substantial value to the goods are not
registrable.
 Koninklijke Philips Electronics Ltd. v. Remington Consumers
Products Ltd. [2006] FSR 30 p. 537
 Proviso - For the purposes of this section, the nature of goods or
services in relation to which the trade mark is used or proposed to
be used shall not be a ground for refusal of registration.
 Laxmikant V. Patel Vs. Chetanbhai Shah and Anr. 2002 (24) PTC 1
(SC)
 1) Save as provided in section 12, a trade mark shall not be registered
if, because of--
 (a) its identity with an earlier trade mark and similarity of goods or
services covered by the trade mark; or
 (b) its similarity to an earlier trade mark and the identity or similarity
of the goods or services covered by the trade mark, there exists a
likelihood of confusion on the part of the public, which includes the
likelihood of association with the earlier trade mark.
 (2) A trade mark which--
 (a) is identical with or similar to an earlier trade mark; and
 (b) is to be registered for goods or services which are not similar to
those for which the earlier trade mark is registered in the name of a
different proprietor, shall not be registered if or to the extent the
earlier trade mark is a well-known trade mark in India and the use of
the later mark without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier trade
mark.
 (3) A trade mark shall not be registered if, or to the extent that, its use
in India is liable to be prevented—
 (a) by virtue of any law in particular the law of passing off protecting an
unregistered trade mark used in the course of trade; or
 (b) by virtue of law of copyright.

 (4) Nothing in this section shall prevent the registration of a trade mark
where the proprietor of the earlier trade mark or other earlier right
consents to the registration, and in such case the Registrar may register
the mark under special circumstances under section 12.
 Explanation.For the purposes of this section, earlier trade mark means--
 [(a) a registered trade mark or an application under section 18 bearing
an earlier date of filing or an international registration referred to in
section 36E or convention application referred to in section 154 which
has a date of application earlier than that of the trade mark in question,
taking account, where appropriate, of the priorities claimed in respect
of the trade marks;]
 (b) a trade mark which, on the date of the application for
registration of the trade mark in question, or where appropriate, of
the priority claimed in respect of the application, was entitled to
protection as a well-known trade mark.
 (5) A trade mark shall not be refused registration on the grounds
specified in sub-sections (2) and (3), unless objection on any one or
more of those grounds is raised in opposition proceedings by the
proprietor of the earlier trade mark.
 (6) The Registrar shall, while determining whether a trade mark is a
well-known trade mark, take into account any fact which he
considers relevant for determining a trade mark as a well-known
trade mark including—
 (i) the knowledge or recognition of that trade mark in the relevant
section of the public including knowledge in India obtained as a
result of promotion of the trade mark;
 (ii) the duration, extent and geographical area of any use of that
trade mark;
 (iii) the duration, extent and geographical area of any
promotion of the trade mark, including advertising or
publicity and presentation, at fairs or exhibition of the
goods or services to which the trade mark applies;
 (iv) the duration and geographical area of any
registration of or any publication for registration of that
trade mark under this Act to the extent they reflect the
use or recognition of the trade mark;
 (v) the record of successful enforcement of the rights in
that trade mark, in particular, the extent to which the
trade mark has been recognised as a well-known trade
mark by any court or Registrar under that record.
 7) The Registrar shall, while determining as to whether a trade
mark is known or recognised in a relevant section of the public for
the purposes of sub-section (6), take into account -
 (i) the number of actual or potential consumers of the goods or
services;
 (ii) the number of persons involved in the channels of distribution
of the goods or services;
 (iii) the business circles dealing with the goods or services,
 to which that trade mark applies.
 (8) Where a trade mark has been determined to be well-known in
at least one relevant section of the public in India by any court or
Registrar, the Registrar shall consider that trade mark as a well-
known trade mark for registration under this Act.
 (9) "The Registrar shall not require as a condition, for determining
whether a trade mark is a well-known trade mark, any of the
following, namely: -
 (i) that the trade mark has been used in India;
 (ii) that the trade mark has been registered;
 (iii) that the application for registration of the trade mark has been
filed in India;
 (iv) that the trade mark -
 (a) is well known in; or
 (b) has been registered in; or
 (c) in respect of which an application for registration has been
filed in, any jurisdiction other than India; or
 (v) that the trade mark is well-known to the public at large in
India.
 (10) While considering an application for registration of a trade
mark and opposition filed in respect thereof, the Registrar shall -
 (i) protect a well-known trade mark against the identical or similar
trade marks;
 (ii) take into consideration the bad faith involved either of the
applicant or the opponent affecting the right relating to the trade
mark.
 (11) Where a trade mark has been registered in good faith
disclosing the material informations to the Registrar or where right
to a trade mark has been acquired through use in goods faith
before the commencement of this Act, then, nothing in this Act shall
prejudice the validity of the registration of that trade mark or right
to use that trade mark on the ground that such trade mark is
identical with or similar to a well known trade mark.
 Section 11 lays down relative grounds for refusal of registration of a
trade mark. The relative grounds for refusal are applicable only
when there already exists a trade mark., in comparison to which the
new trade mark is not registrable.
 Section 11 starts with the phrase “save a provided in section 12, a
trade mark shall not be registered…” Section 12 provides for
registration in the case of honest concurrent use or of other special
circumstances by more than one proprietor of marks, which are
identical or similar. Section11 does not override the acceptance of
application for registration notwithstanding the generality of
prohibition in section 11 of the Act, and to impose conditions and
limitations as means of accommodating conflicting rights and
interests and doing justice all round.
 Similarity of marks but the goods are different
 S. 2 (1)(h) defines the term ‘deceptively similar’ as a mark shall be
deemed to be deceptively similar to another mark if it so nearly
resembles that other mark as to be likely to deceive or cause
confusion. In considering the registrability of a mark which is
deceptively similar but being applied for a different class of
goods/services, the following factors will have to be taken into
account:
 a) the extent to which the earlier trade mark is a well-known trade
mark in India;
 b) whether the use of the applicants mark without due cause would
take unfair advantage of the earlier trade mark;
 c) whether the use of the applicants’ mark would be detrimental to
the distinctive character or repute of the earlier mark.
 Likelihood of Confusion:
 In the Supreme Court decisions and doctrine, the existence of two
elements is sought in order to reveal the possibility of confusion of
the trademarks. These elements are;
 Whether the trademarks are identical/similar,
 Whether the trademarks are used in the same/similar classes of
goods and services.
 The confusion should be on the part of public, from the point of
view of the average consumer of the products concerned,
comparing the marks as a whole.
 While deciding upon the question of similarity of marks and their
likelihood of confusion or deception, no conclusion must be
reached in isolation; instead the surrounding circumstantial factors
must be considered as well. For instance, the following factors must
be accounted for:
 1) the nature of the marks i.e. whether they are invented words,
words having descriptive significance, non-descriptive words,
geographical names, surnames, letters, numerals or devices,
 2) the degree of resemblance between the marks—phonetic, visual
as well as similarity in idea,
 3) the nature of the goods in respect of which they are used or
likely to be used as trademarks,
 4) the similarity in the nature, character, and purpose of the goods
of the rival traders,
 5) the class of purchasers who are likely to buy the goods bearing
the marks, their level of education and intelligence, and the degree
of care they are likely to exercise in purchasing the goods,
 6) the mode of purchase of the goods or of placing orders for the
goods,
 7) any other surrounding circumstances.
 Identical and Similar Trade Marks:
 What are Identical Trademarks?
 An identical trademark is classified as any mark that is a
reproduction of an already registered trademark. For a trademark
to be deemed as an identical trademark, it does not need to be an
exact copy of another mark. If all elements of the mark are similar
or if the mark, when viewed as a whole, contains differences that
are unnoticeable by an average person with imperfect recollection,
the mark will be deemed to be identical.
 2.What are Similar Trademarks?
 Similar trademarks are those marks that are easily mistaken with
another already existing mark. The word similar here is to be
understood as deceptively identical. This means the mark that is so
resembling of another that it is likely to confuse or deceive the
average consumer. Here, the examiner for the application will only
consider the ‘probability’, and the question of whether it amounts to
a reasonable confusion may arise.
 Comparing Trademarks for Similarity: –
 Below are some of the main points which shall be taken into
consideration while comparing two trademarks: –
 Average intelligence and of imperfect recollection should be made
a point of view of comparison,
 The structural, visual & phonetic similarity, the similarity of the idea
in the two marks, and the fact as to whether it is reasonable
likelihood to cause confusion should be taken into consideration.
 A trademark should not be dissected and then compared. It should
be taken as a whole and then compared with the other mark.
 (1) Identity with earlier trade mark and similarity of goods and vice
versa
 In Pianotist Co. Ltd.’s application (23 RPC 774 at p 777) Lord Parker
held:
 ‘You must take the two words, you must judge of 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 a normal way as a trade mark for the goods of the
prospective owners of the marks. If, considering all these 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 that case.’
 It is well known that the question whether the two marks are likely
to give rise to confusion or not is a question of first impression.
 Amritdhara Pharmacy vs Satya Dev Gupta AIR 1963 SC 449 (A three judge bench
judgment of the Supreme Court- Justice S.K. Das, Justice Hidayatullah and Justice J.C.
Shah)
 ‘Amritdhara’ and ‘Lakshmandhara’
 KavirajPanditDurgaDutt v. Navratna Pharmaceuticals (AIR 1965 SC 980 )
 ‘NavratnaKalp’ and ‘Navratna’
 Hoffman –LA vs. Geoffrey Manners and Co AIR 1970 SC 2062( two judge bench
judgment-coram- J.C.Shah and Ramawami,JJ).
 ‘Dropovit’ and ‘Protovit’
 Aristoc Ltd v. Rysta Ltd 1945 RPC 65 at p 72
 ‘Aristoc’ and ‘Rysta’
 Corn Products Refining Co.v. Shangrila Food Products Ltd AIR 1960 SC 142
 Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd, AIR 2001 SC 1952. (A three
judge bench judgment).
 ‘Falcigo’ and ‘Falcitab’
 Larsen & Tourbo Ltd. v. Lachmi Narain Trades & Ors. 2008 (36) PTC 223 (Del.) (DB
 ‘LNT’ and ‘ELENTE’
 National Sewing Thread Co. Ltd. James Chadwick and Bros. Ltd. AIR
1951 Bom. 147
 In Fox’s Application (1920) 37 RPC 37 trade marks ‘Motrate’ and
‘Filtrate’ were held not to be similar
 In BDH Industries Ltd. v. Croydon Chemical Works Pvt. Ltd. AIR 2002
Bom. 361 the Bombay High Court held that apart from the
structural, visual and phonetic similarity or dissimilarity, the
question has to be considered from the point of view of man of
average intelligence and imperfect collection. Secondly, it is to be
considered as a whole and thirdly it is the question of his
impression. The trade marks ‘PV-DINE’ and ‘PIODINE’ were held to
be deceptively similar in respect of similar medicines.
 Section 12- In the case of honest concurrent use or of other
special circumstances which in the opinion of the Registrar,
make it proper so to do, he may permit the registration by more
than one proprietor of the trade marks which are identical or
similar (whether any such trade mark is already registered or
not) in respect of the same or similar goods or services, subject
to such conditions and limitations, if any, as the Registrar may
think fit to impose.