Trademark Objection in India: Section 9 and Section 11
When a person or business files an application to register a brand name, logo, word mark, or any other trademark, the Trade Marks Registry examines the application to determine whether the mark is eligible for registration under the law.
If the Examiner finds that the proposed trademark does not satisfy the requirements of the Trade Marks Act, 1999, an objection may be raised through the Examination Report.
A trademark objection does not necessarily mean that the application has been finally rejected. The applicant is generally given an opportunity to respond to the objections raised in the Examination Report.
What is a Trademark Objection?
A Trademark Objection is an objection raised by the Trade Marks Registry during the examination of a trademark application when the proposed mark appears to face a statutory or legal impediment to registration.
During examination, the Examiner may consider various aspects of the proposed trademark, including:
- Whether the trademark is distinctive;
- Whether the trademark is descriptive of the goods or services;
- Whether the trademark is identical or similar to an earlier trademark;
- Whether the trademark is likely to confuse or deceive the public;
- Whether the mark contains matter prohibited under applicable law; and
- Whether there are any relevant issues with the particulars or documentation of the application.
Grounds on Which a Trademark Objection May Be Raised
Trademark objections may arise under different provisions of the Trade Marks Act, 1999. Two of the most important provisions are:
1. Section 9 – Absolute Grounds for Refusal
Section 9 primarily concerns the inherent nature and characteristics of the trademark itself.
2. Section 11 – Relative Grounds for Refusal
Section 11 primarily concerns conflicts between the proposed trademark and earlier trademarks or rights.
Section 9 Objection – Absolute Grounds for Refusal
Section 9 of the Trade Marks Act, 1999 deals with the Absolute Grounds for Refusal.
In simple terms, an objection under Section 9 is based primarily on the characteristics of the trademark itself, rather than merely on the existence of an earlier trademark.
Section 9(1)
Section 9(1) primarily deals with trademarks that lack sufficient distinctive character or are descriptive or customary in nature.
Section 9(1)(a) – Non-Distinctive Marks
A trademark may face an objection under Section 9(1)(a) if it is not capable of distinguishing the goods or services of one person from those of another.
A fundamental function of a trademark is to distinguish the commercial source of goods or services.
Section 9(1)(b) – Descriptive Marks
An objection may be raised under Section 9(1)(b) where the trademark consists exclusively of indications which may serve, in trade, to designate characteristics of the goods or services.
Such characteristics may include:
- Kind;
- Quality;
- Quantity;
- Intended purpose;
- Values;
- Geographical origin;
- Time of production or rendering of services; or
- Other characteristics of the goods or services.
Section 9(1)(c) – Common or Customary Terms
An objection may also arise under Section 9(1)(c) where the trademark consists exclusively of words or indications which have become customary in the current language or in the bona fide and established practices of the trade.
Proviso to Section 9(1) – Acquired Distinctiveness
Acquired distinctiveness may be relevant in certain cases involving objections under Section 9(1).
Where a mark has acquired a distinctive character as a result of use before the date of application, the applicant may rely upon relevant evidence to support the claim.
Depending on the facts of the case, supporting evidence may include:
- Invoices;
- Sales records;
- Advertisements;
- Promotional material;
- Packaging;
- Website records;
- Social media presence; and
- Turnover and other supporting documents.
Section 9(2)
Section 9(2) deals with certain trademarks whose registration may be refused because of statutory or public-interest considerations.
Section 9(2)(a)
An objection may arise where the use of the trademark is of such a nature as to confuse or deceive the public.
Section 9(2)(b)
Registration may be refused where the trademark contains or comprises matter which is likely to hurt the religious susceptibilities of any class or section of the citizens of India.
Section 9(2)(c)
An objection may arise where the trademark comprises or contains scandalous or obscene matter.
Section 9(3) – Shape of Goods
Section 9(3) deals with certain shapes of goods.
Registration may be refused where the mark consists exclusively of a shape which:
- Section 9(3)(a): results from the nature of the goods themselves;
- Section 9(3)(b): is necessary to obtain a technical result; or
- Section 9(3)(c): gives substantial value to the goods.
Section 11 Objection – Relative Grounds for Refusal
Section 11 deals with the Relative Grounds for Refusal.
It primarily concerns situations where the proposed trademark conflicts with an earlier trademark or other relevant rights.
Section 11(1)
Section 11(1) is relevant where the proposed trademark is identical with or similar to an earlier trademark and the goods or services are identical or similar, resulting in a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark.
Relevant considerations may include:
- The proposed trademark;
- The earlier trademark;
- Visual similarity;
- Phonetic similarity;
- Conceptual similarity;
- Similarity or identity of goods/services; and
- Likelihood of confusion or association.
Section 11(2) – Well-Known Trademarks
Section 11(2) deals with certain situations involving earlier well-known trademarks.
An objection may arise where the proposed trademark is identical or similar to an earlier well-known trademark and its use without due cause may take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.
Section 11(3)
Section 11(3) deals with situations where the use of the proposed trademark may be prevented by the law of passing off or by the law of copyright.
Section 11(4)
Section 11(4) concerns situations involving the rights of a person who is entitled to the earlier trademark, subject to the conditions provided under the Act.
Section 11(5)
Section 11(5) contains a procedural requirement concerning refusal under Section 11(1) and Section 11(2) in circumstances where the proprietor of the earlier trademark has not raised an objection.
Section 11(6) to Section 11(9) – Well-Known Trademark
Sections 11(6) to 11(9) contain provisions concerning the determination and recognition of well-known trademarks.
- Section 11(6): Provides factors that the Registrar may take into account when determining whether a trademark is well known.
- Section 11(7): Deals with the relevant public and other factors relevant to determining a well-known trademark.
- Section 11(8): Provides for recognition of a trademark as a well-known trademark in accordance with the Act.
- Section 11(9): Specifies circumstances that are not necessarily required for determining whether a trademark is well known.
Section 11(10) – Bad Faith
Section 11(10) requires the Registrar and the Court to take into account relevant circumstances, including the bad faith involved either of the applicant or the opponent affecting the right relating to the trademark.
Section 9 vs Section 11 – Comparison
| Basis | Section 9 | Section 11 |
|---|---|---|
| Nature | Absolute Grounds for Refusal | Relative Grounds for Refusal |
| Main Focus | The inherent characteristics of the trademark | Relationship with earlier trademarks or rights |
| Earlier Trademark Required? | No | Generally relevant |
| Distinctiveness | A key consideration | May be relevant to the earlier mark and overall circumstances |
| Descriptive Mark | Section 9(1)(b) | Not the primary ground |
| Common / Customary Terms | Section 9(1)(c) | Not the primary ground |
| Confusion | Relevant under Section 9(2)(a) | A key consideration under Section 11(1) |
| Well-Known Trademark | Not the primary subject | Specifically relevant under Section 11(2) |
| Functional Shape | Section 9(3) | Not the primary subject |
| Earlier Trademark Search | Not the basis of the objection | Very important |
| Basic Question | “Is the mark registrable in itself?” | “Does the mark conflict with an earlier trademark or right?” |
Quick Difference
Section 9: Is the trademark registrable in itself?
Section 11: Does the trademark conflict with an earlier trademark or right?
Can Section 9 and Section 11 Objections Both Be Raised?
Yes.
A single trademark application may face objections under both Section 9 and Section 11.
For example, a proposed trademark may:
- Be descriptive of the goods or services, resulting in a possible Section 9 objection; and
- Be similar to an earlier trademark, resulting in a possible Section 11 objection.
In such a situation, the applicant needs to address each objection raised in the Examination Report with an appropriate legal and factual response.
Conclusion
Understanding Section 9 and Section 11 objections is important for anyone seeking trademark registration in India.
Section 9 primarily concerns the inherent registrability of a trademark, including issues relating to distinctiveness, descriptiveness, customary terms and certain prohibited characteristics.
Section 11 primarily addresses potential conflicts between the proposed trademark and earlier trademarks or other relevant rights.
Therefore, when an Examination Report is issued, it is important to identify the specific statutory provision and sub-section under which the objection has been raised and respond to each ground appropriately.
Disclaimer: This article is intended for general informational and educational purposes only. It should not be treated as legal advice. The appropriate response to a trademark objection depends on the facts, documents and circumstances of each individual application.