Specialization: Intellectual Property Law | Startup Legal Advisory

In India's innovation-driven economy, where startups are reshaping industries with creativity and speed, intellectual property protection is no longer a luxury—it is a necessity. Among the various forms of IP, trademark registration plays a pivotal role in establishing and protecting brand identity. However, many early-stage businesses face a major legal obstacle in their branding journey: trademark refusal under Sections 9 and 11 of the Trade Marks Act, 1999.

As an advocate working closely with startups and businesses on IP strategy. Avoidable errors in trademark selection and application often lead to delays, disputes, or outright rejections.

Understanding Section 9: Absolute Grounds for Refusal

Section 9 of the Trade Marks Act, 1999 sets out the absolute grounds on which a trademark can be refused. It examines the mark independently, without considering existing trademarks, to assess whether the mark is registrable in its own right. Registration will be denied if a mark:

• Lacks distinctive character
• Merely describes the goods or services
• Is customary, generic, or commonplace
• Is deceptive, misleading, or offensive
• Misuses religious symbols, national emblems, or protected expressions.
   

Key Judicial Interpretation:

• In F. Hoffmann-La Roche v. Geoffrey Manners (AIR 1970 SC 2062), the Supreme Court clarified that descriptive terms, unless proven to have acquired distinctiveness through use, cannot qualify for trademark registration.
• Similarly, in Just Lime My Child Foundation v. Registrar of Trademarks (2024), the Delhi High Court reiterated that simply using descriptive words without showing public association or secondary meaning will not satisfy Section 9 requirements.
   

Section 11: Relative Grounds for Refusal – Preventing Confusion

Unlike Section 9, Section 11 compares a proposed trademark against existing marks. The goal is to protect consumers from confusion or deception and to prevent newer brands from benefiting unfairly from the goodwill of established trademarks.

Important Precedent:

• In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001), the Supreme Court held that even without intention to deceive, if the likelihood of confusion exists—based on phonetic, visual, or structural similarity—registration should be refused.
• Even minor similarities between marks in related markets can lead to rejection under Section 11.
   

Why These Provisions Matter for Startups

Startups often operate with limited legal knowledge and tight budgets. In this context, brand names are often selected based on marketing appeal or domain name availability, without proper legal vetting.

This leads to issues such as:

• Choosing descriptive or generic names
• Ignoring the need for a trademark search
• Overlooking conflicts with existing marks
• Filing trademark applications late in the business cycle

All these actions increase the risk of refusal, opposition, or even litigation, which can be devastating for a new venture.
 

The Value of Intellectual Property Rights for Startups

Beyond protection, IPR can be a powerful business tool:

• Secures brand identity in a competitive marketplace
• Builds investor confidence through risk mitigation
• Opens revenue streams via licensing, franchising, and IP commercialization
• Strengthens legal standing against infringement or misuse

Companies like Ola, BYJU'S, and Zomato have successfully used IP protection not just as a shield, but as a growth accelerator.
 

Proactive Legal Steps for Founders

• Avoid generic/descriptive names – focus on coined or suggestive marks
• Conduct a trademark availability search before finalizing branding
• Register early – India follows the "first-to-file" rule
• Plan for global expansion using international systems like the Madrid Protocol
• Use government schemes such as SIPP (Startup India Intellectual Property Protection) to reduce costs

Conclusion: Build Brands with Legal Backbone
Sections 9 and 11 of the Trade Marks Act are not just statutory hurdles—they are essential safeguards that uphold the credibility of India's IP system. For startups, navigating these provisions wisely is critical to long-term success.

I strongly advocate for early legal consultation and a sound IPR strategy. A registered trademark is more than a symbol it is a legal asset that speaks of foresight, credibility, and ownership. Written By: Shubhika Pant, Advocate