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A trademark is much more than a name or logo; it is a vital asset that sets a brand apart in a competitive marketplace. However, not every proposed trademark is eligible for registration. The Indian Trademarks Act, 1999 specifies certain absolute and relative grounds for refusal that every applicant must understand. These rules aim to ensure fair competition, prevent consumer confusion, and protect public interest.
Sections 9 and 11 of the Act form the backbone of these provisions. This guide explores them in detail, offering explanations, practical examples, and insights to help businesses design distinctive marks and navigate the trademark process successfully.
Section 9 sets out the absolute grounds for refusing a trademark. Unlike relative grounds, these relate solely to the nature of the trademark itself, irrespective of other existing marks. The law bars registration of marks that lack distinctiveness, are purely descriptive, misleading, offensive, or contrary to public policy.
This section is particularly important for startups and businesses when choosing a name or logo, as it can help avoid filing for inherently unregistrable marks.
A trademark must function as a badge of origin, enabling consumers to identify a product or service as coming from a specific source. Unlike relative grounds, Section 9(1)(a) prohibits marks that are incapable of distinguishing one business’s goods or services from another’s. Generic terms, commonly used expressions, or simplistic symbols fail this basic test of distinctiveness.
Example: “Milk” for dairy products is incapable of distinguishing one dairy producer from another. Similarly, “Bread” for bakery items is too generic to be monopolized.
💡 Intepat Insight: Invented or fanciful words (like “ZARA” for clothing) are inherently distinctive and more likely to secure registration.
Unlike 9(1)(a), which focuses on genericness, Section 9(1)(b) targets marks that directly describe the product’s attributes—its kind, quality, quantity, purpose, geographical origin, or characteristics. The law prevents businesses from monopolizing terms that competitors may need to describe their own products fairly in the marketplace.
Example: “Cotton Wear” for garments describes the fabric used. “Sweet & Fresh” for bakery goods directly describes the quality and freshness of the products.
💡 Intepat Insight: Suggestive marks, which require consumers to use imagination to connect the mark to the product (like “Netflix” for streaming services), are more likely to succeed than purely descriptive ones.
Section 9(1)(c) bars marks that have become customary in the current language or established trade practices. Even if such marks were once distinctive, they may lose protection over time due to widespread public use—a phenomenon called genericide (loss of trademark rights through generic use).
Example: “Escalator” was originally a trademark but became a generic term for moving staircases. “Aspirin” and “Thermos” faced similar fates due to common usage.
💡 Intepat Insight: To avoid genericide, enforce your trademark rights consistently and educate consumers to use your brand name correctly (e.g., “use Xerox copier” instead of “make a Xerox”).
Marks that are inherently deceptive or likely to mislead the public are excluded under Section 9(2)(a). This includes marks that falsely suggest qualities, geographical origins, or endorsements that the goods or services do not actually possess. Can deceptively similar mark can coexist? Read here.
Example: “Silk Touch” for synthetic fabrics implies the presence of silk when none exists.
💡 Intepat Insight: Ensure your trademark is truthful and does not create an incorrect impression about your product’s nature or quality.
Trademarks that offend religious sentiments or misuse sacred names and symbols are strictly prohibited. In India’s diverse socio-cultural landscape, this provision carries special significance.
Example: Registering a mark like “Ramayan” for footwear or using deity images on alcohol bottles would likely result in refusal.
💡 Intepat Insight: Always perform a cultural sensitivity check to avoid both legal objections and potential consumer backlash.
Marks containing obscene, vulgar, or scandalous matter are barred under this provision to maintain public decency. Even stylized logos with suggestive graphics can trigger objections.
Example: A logo with hidden obscene imagery or a brand name containing offensive slang would fail at the examination stage.
💡 Intepat Insight: Test your proposed mark across diverse demographics to ensure it is free from unintended offensive connotations.
Trademarks containing elements prohibited under other laws (e.g., Emblems and Names Act, 1950) cannot be registered. This includes national symbols, government insignia, and names of prominent personalities.
Example: Attempts to trademark “Ashoka Chakra” or “Mahatma Gandhi” would violate statutory restrictions.
💡 Intepat Insight: Verify your proposed mark’s compliance with all applicable laws before applying.
Section 9(3) excludes from registration any mark consisting exclusively of:
🔹 Shapes resulting from the nature of the goods.
🔹 Shapes necessary to achieve a technical result.
🔹 Shapes that add substantial aesthetic or commercial value.
This provision prevents businesses from unfairly monopolizing functional or decorative product features.
Example 1: LEGO’s interlocking brick shape was denied trademark protection as it was deemed functional.
Example 2: Coca-Cola’s contoured bottle design achieved protection because it had acquired distinctiveness over time.
Example 3: Toblerone’s triangular chocolate shape has been protected in several jurisdictions due to its strong association with the brand.
💡 Intepat Insight: For functional or decorative product designs, consider filing for design protection under the Designs Act rather than trademark law.
Intepat’s experts can assess your proposed mark for compliance with Section 9 requirements and help you avoid objections.
👉 Request a Free Trademark Clearance Check
Section 11 of the Trademarks Act, 1999 deals with relative grounds for refusal, which concern potential conflicts between a new trademark application and existing rights. Unlike absolute grounds under Section 9 (which focus on the nature of the mark itself), Section 11 focuses on whether the new mark could:
🔹 Confuse consumers about the source of goods/services
🔹 Infringe earlier trademark rights
🔹 Harm the distinctiveness or reputation of well-known marks
For businesses, understanding this section is vital to avoid costly objections, oppositions, and rebranding.
This provision prohibits registration of trademarks that are identical or similar to an earlier mark if their use on identical or similar goods/services would likely cause confusion among consumers. The law also recognizes indirect confusion—where consumers assume some association between the two brands.
Example: A beverage company applying for “Peppsi” would face refusal because of its similarity to “Pepsi” and the identical nature of goods. Consumers may believe the two brands are connected.
💡 Intepat Insight: A comprehensive trademark availability search is the first defense against such conflicts. It identifies risky similarities before filing.
Section 11(2) extends protection to well-known trademarks even in unrelated product or service classes. A mark identical or similar to a well-known trademark will be refused if its use:
Would take unfair advantage of the famous mark’s reputation (free-riding), or
Harm its distinctiveness or repute (dilution), and
The applicant cannot prove “due cause” for adopting the mark.
Example: Registering “Nikee” for electronics would likely be refused because of “Nike’s” well-known status. Even though electronics differ from sportswear, using “Nikee” could exploit Nike’s global reputation.
💡 Intepat Insight: Avoid adopting marks even remotely similar to globally recognized brands, regardless of your industry.
This provision bars registration where the proposed mark’s use in India:
(a) Could be prevented by the law of passing off (protecting unregistered marks used in commerce), or
(b) Infringes an existing copyright.
Example: Using a well-known unregistered mark like “Khadi” for textiles, or a copyrighted character like Mickey Mouse in a logo, would face refusal under this clause.
💡 Intepat Insight: Ensure your branding elements are original and do not conflict with others’ common law rights or copyrighted material.
This clause provides relief where the owner of the earlier trademark consents to the registration of a similar or identical mark. In such cases, the Registrar may allow registration under special circumstances covered in Section 12.
💡 Intepat Insight: Always document consent through a formal agreement to secure a defensible right to register and use your trademark.
Sections 11(6) to 11(10) outline how the Registrar determines whether a trademark qualifies as “well-known” and the protections granted once it does.
When evaluating if a trademark is well-known, the Registrar considers:
Public recognition of the mark (even if achieved via global advertising).
Duration, extent, and geographical area of use and promotion.
History of successful enforcement by courts or trademark offices.
Reach within actual/potential consumers, distributors, and business circles.
Importantly, the Registrar cannot require:
That the mark has been used or registered in India.
That the mark is known to the public at large in India.
This means international brands can be protected as “well-known” in India even without prior use or registration within the country.
The Registrar must protect well-known marks from identical/similar registrations across all categories and consider bad faith in applications or oppositions.
Example: “Rolex” enjoys protection not just for watches but against use in unrelated sectors like electronics or clothing.
💡 Intepat Insight: To build a case for your brand as “well-known,” maintain comprehensive records of global promotion, use, and enforcement.
Section 11(11) protects marks that were registered or used in good faith before the commencement of the Act. Even if they are similar to a well-known trademark, such registrations remain valid if obtained in good faith and with full disclosure of material facts to the Registrar.
Example: A small Indian business that registered a mark decades ago may retain rights despite a later well-known international brand entering the market.
💡 Intepat Insight: For legacy brands, maintaining records of first use and registration history is vital for defending your rights.
Understanding Sections 9 and 11 helps businesses create distinctive marks and avoid costly delays. Intepat’s trademark specialists can assess your proposed mark, identify potential objections, and guide you through a smooth application process.
Successfully navigating trademark registration requires a proactive strategy. Intepat recommends the following steps to help businesses avoid common pitfalls and secure protection with confidence:
Before filing, perform an in-depth search across:
The Indian Trademarks Registry (Class-wise)
Global databases (WIPO, USPTO, EUIPO) for international conflicts
Online platforms and domain names for unregistered use
This helps identify identical or similar marks and reduces the risk of objections under Sections 11(1) and 11(2).
Opt for:
Avoid religious names, images, or cultural references likely to hurt sentiments.
Check for restrictions under other laws (e.g., Emblems and Names Act, 1950).
Ensure that your branding assets (logos, typography, packaging) are not similar to existing copyrighted works or unregistered trademarks. This prevents objections under Section 11(3).
Maintain clear evidence of use, advertisements, sales invoices, and customer reach. These records are invaluable in defending against objections and building claims for acquired distinctiveness or well-known status.
Intepat’s trademark specialists can evaluate your proposed mark against Indian and international standards. Early professional advice saves time, cost, and effort in responding to objections or oppositions.
Absolute grounds (Section 9): Focus on the nature of the trademark itself (e.g., non-distinctive, descriptive, offensive).
Relative grounds (Section 11): Focus on conflicts with earlier rights (e.g., identical or similar marks).
Yes, in some cases. If your mark has acquired distinctiveness through extensive use and recognition, you can present evidence (sales data, advertising, media mentions) to support registration.
A mark may be well-known if it has:
Global recognition
Long-term use and promotion
Prior legal recognition in India (by court/Registrar)
The Registrar considers several factors, but international use alone does not guarantee “well-known” status in India.
“Due cause” refers to a legitimate reason, such as prior use in good faith, for adopting a mark that resembles a well-known trademark. Without strong justification, your application may face refusal under Section 11(2).
Generally no. Section 11(2) protects well-known marks even across unrelated industries to prevent unfair advantage or harm to reputation.
Resolution timelines vary based on the complexity of the objection and the quality of the response. Prompt and comprehensive replies improve chances of success.
You can contest oppositions by filing a counterstatement, presenting evidence of use or distinctiveness, and defending your application during hearings. Expert representation is highly recommended.
If you plan to export or expand globally, consider using the Madrid Protocol to file in multiple countries efficiently. Intepat assists clients with international trademark filings.
Yes. If your product’s shape is functional or aesthetic but cannot qualify as a trademark under Section 9(3), filing a design application is a viable alternative.
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