Most trademark applications do not fail because of a clerical error. They fail because the mark itself runs into a statutory ground of refusal. The Trade Marks Act, 1999, organizes these grounds into two groups: absolute grounds under Section 9, which concern the mark on its own, and relative grounds under Section 11, which concern conflict with earlier marks.
What Counts as a Trademark
Section 2(1)(zb) defines a trade mark as a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others. It may include the shape of goods, their packaging, and combinations of colors.
Absolute Grounds: Section 9
Under Section 9(1), a mark is refused if it is:
- devoid of distinctive character (the mark cannot identify a single trade origin);
- descriptive, meaning it designates the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods or services; or
- customary in the current language or in the established practices of the trade.
Acquired Distinctiveness Under Section 9
The proviso to Section 9(1) is important: a mark will not be refused if, before the date of application, it has acquired a distinctive character through use or is a well-known trademark.
Evidence of use (sales figures, invoices, advertising spend, turnover) is therefore central to overcoming a Section 9 objection.
Other Section 9 Refusal Grounds
Section 9(2) bars marks likely to deceive or confuse the public, marks that hurt religious susceptibilities, marks containing scandalous or obscene matter, and marks whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Section 9(3) excludes shapes that result from the nature of the goods, are necessary to obtain a technical result, or give substantial value to the goods.
Trademark Distinctiveness Scale
A useful working scale runs from generic and descriptive marks (weakest) through suggestive marks to arbitrary and coined marks (strongest). The further a mark sits toward the coined end, the easier the registration.
| Type of Mark | General Character |
|---|---|
| Generic | Weakest |
| Descriptive | Generally weak and may require evidence of acquired distinctiveness |
| Suggestive | More distinctive |
| Arbitrary | Strong |
| Coined | Strongest |
Relative Grounds: Section 11
Section 11(1) refuses a mark that is identical or similar to an earlier mark for identical or similar goods or services, where there is a likelihood of confusion on the part of the public, including a likelihood of association.
Section 11(2) extends protection to earlier marks with a reputation in India, even against dissimilar goods, where use would take unfair advantage of, or harm, that reputation.
Section 11(3) refuses marks whose use would be prevented by the law of passing off or copyright. Section 12 permits registration in cases of honest concurrent use.
How Similarity Is Judged
Indian courts look at the marks as a whole, at the impression on a person of average intelligence and imperfect recollection, and at phonetic, visual and structural similarity.
Leading authorities include Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449), Parle Products v. J.P. & Co. (1972) 1 SCC 618, and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, the last of which lists factors such as the nature of the goods, the class of purchasers, the degree of care in purchase, and the trade channels.
Key Factors in Trademark Similarity
- The marks should be considered as a whole.
- The impression on a person of average intelligence and imperfect recollection is relevant.
- Phonetic similarity may be considered.
- Visual similarity may be considered.
- Structural similarity may be considered.
- The nature of the goods or services may be relevant.
- The class of purchasers may be relevant.
- The degree of care exercised during purchase may be relevant.
- The trade channels may be relevant.
A Practical Registrability Checklist
Before filing a trademark application, consider the following questions:
- Is the mark descriptive of the goods or services, or geographically descriptive?
- Is it coined or arbitrary, or does it need evidence of acquired distinctiveness?
- Does a search reveal identical or phonetically similar marks in the same or related classes?
- Are the goods or services of the earlier mark close to the client’s?
- Does the mark include a name, emblem, or symbol protected by statute?
Conclusion
A sound registrability opinion is built on a proper search and an honest assessment of both Section 9 and Section 11 risks before filing.
Choosing a distinctive mark at the outset is far cheaper than defending a weak one through examination and opposition.
