There is usually a lot of confusion surrounding the kind of trademarks that can be registered under the Trademarks Act, 1999. While choosing an apt trademark that can be registered might seem to be a long drawn process, it is actually very simple. The trick is to be conversant with what cannot be registered.
The Trademarks Act (1999) makes this easy by dividing what cannot be registered into two grounds: absolute grounds of refusal (Section 9) and relative grounds of refusal (Section 11).
What Cannot be Registered As A Trademark
Section 9, simply put, disallows the following trademarks from being registered trademark:
Trademarks that do not have a distinctive character. This simply means that the trademarks that cannot distinguish the goods or services of one person from that of another cannot be registered. The whole purpose of trademark law is to enable distinction between brands. No mark that takes away from this purpose can be registered.
Trademarks that describe the good or service and give the consumer an idea about the quality, quantity or geographic origin of the particular good or service. Descriptive trademarks cannot be registered.
Marks that have become customary in the current language. For example, a consumer associates a restaurant with a chef.
Apart from this marks that are deceptive, hurt religious sentiments, are obscene or describe the shape of the good cannot be registered.
Section 11 disallows the following from being registered trademark:
Trademarks that may cause ‘likelihood of confusion’. This simply means that identical marks on similar goods and similar marks on identical/similar goods. A consumer views the trademark in its entirety. The test is to see if the consumer can distinguish between similar trademarks. In Society Des Products vs. V.M. Confectionary Limited the court held that the words ZERO and AERO to be similar as mere phonetic dissimilarity was not enough to enable a common person from distinguishing between the two.
Well-known: Trademarks that people are familiar with cannot be registered even if the goods are not similar as this would affect the reputation of the person who owns the well-known trademark.
Put in a nutshell, trademarks that are not distinctive, that are descriptive or that give rise to a likelihood of confusion cannot be registered.
This then brings us to the most important question of what can be the registrable trademark.
On the spectrum of registrability, invented/fanciful words rate first. Words that have no meaning and are a random combination of two or more words/letters are invented words. Almost on an equal footing are arbitrary trademarks. Trademarks that are common names, but are in no way related to the goods or services they represent.
At the other end are trademarks that cannot be registered. They are descriptive and generic trademarks. (As has already been mentioned under Section 9)
In between are suggestive trademarks. They may or may not be registrable depending on the extent to which they suggest the nature of the goods/services. This means that suggestive trademarks that require a certain amount of imagination to determine the nature of the goods and services can be registered.
As long as your trademark is different from existing trademarks and it does not describe the nature of the goods or services it represents, it can be registered!
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