Non-registrable marks: absolute and relative grounds of refusal - Law of Trademarks

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1. Absolute grounds: section 9(1), lack of distinctiveness
2. Absolute grounds: section 9(2), public policy
3. Absolute grounds: section 9(3), shapes
4. Sections 13 and 14
5. Relative grounds: section 11
6. Bad faith
7. The exception: honest concurrent use (section 12)
How this is examined

Cases checked to exist. Read the judgment before quoting a holding.

Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.

The structure of the answer. “Write an explanatory note on non-registrable trademarks” (February 2025) is answered in two halves. Absolute grounds (section 9) concern the mark itself and protect the public interest. Relative grounds (section 11) concern conflict with earlier rights and protect other traders. The Registrar raises absolute grounds on his own; relative grounds based on reputation or passing off are raised only by the earlier proprietor in opposition (section 11(5)).

1. Absolute grounds: section 9(1), lack of distinctiveness

A mark is refused if it:

(a) is devoid of any distinctive character, that is, not capable of distinguishing the goods or services of one person from those of another;
(b) consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the service, or other characteristics;
(c) consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.

The proviso saves a mark that has acquired distinctive character through use, or is a well-known mark, before the date of application. The word “exclusively” matters: a composite mark combining a descriptive word with a distinctive device may be registered, with a disclaimer of the descriptive part.

Geographical names are the standard example of clause (b). In Imperial Tobacco Co. of India v. Registrar of Trade Marks (Calcutta High Court, 1977), “Simla” for cigarettes was refused because a place name is open to all traders from that place, and evidence of use did not show it had become distinctive of the applicant alone. A geographical name with no connection to the goods (“North Pole” for bananas) may be arbitrary and registrable.

2. Absolute grounds: section 9(2), public policy

A mark is refused if:

(a) it is of such a nature as to deceive the public or cause confusion, for example by misdescribing the goods (“Pure Silk” for polyester saris);
(b) it contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950, which protects names and emblems such as the national flag, the UN, the WHO and the Ashoka Chakra.

The Explanation to section 9 says that the nature of the goods or services shall not be a ground for refusal. Article 7 of the Paris Convention says the same.

Religious names and symbols are treated case by case. The Registry’s practice is to refuse names of deities for goods such as footwear, alcohol or meat, where use would offend, while accepting them for incense or puja articles, where their use is customary and respectful.

Comparative debate: should the State refuse offensive marks? The US Supreme Court struck down the ban on disparaging marks in Matal v. Tam (2017), the “The Slants” case, and the ban on immoral or scandalous marks in Iancu v. Brunetti (2019), both as viewpoint discrimination under the First Amendment. In Vidal v. Elster (2024) it upheld the bar on using a living person’s name without consent, as viewpoint-neutral. The CJEU in Constantin Film v. EUIPO (2020), on “Fack Ju Göhte”, held that the morality ground must be assessed by the perception of the relevant public in context, and that the film’s success without public outrage was relevant. India’s section 9(2)(b) and (c) have not been challenged under Article 19(1)(a); an LL.M. answer can argue that refusing registration does not stop use, so the restriction on speech is limited, while the religious ground may be wider than Article 19(2) permits.

3. Absolute grounds: section 9(3), shapes

A mark is refused if it consists exclusively of the shape of goods which results from the nature of the goods themselves, which is necessary to obtain a technical result, or which gives substantial value to the goods. Unlike section 9(1), section 9(3) has no proviso, so acquired distinctiveness cannot cure these objections.

4. Sections 13 and 14

Section 13: a word which is the commonly used and accepted name of a single chemical element or compound, or which is declared by the World Health Organisation as an international non-proprietary name (INN), or is deceptively similar to such a name, shall not be registered for chemical substances or preparations. This keeps generic drug names open to all.
Section 14: where a mark falsely suggests a connection with a living person, or a person who died within twenty years before the application, the Registrar may require that person’s (or his legal representative’s) consent.

5. Relative grounds: section 11

(a) Likelihood of confusion with an earlier mark (section 11(1))

A mark is refused if, because of its identity with an earlier trade mark and similarity of goods or services, or its similarity to an earlier trade mark and identity or similarity of goods or services, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier mark. The tests of deceptive similarity from Amritdhara Pharmacy v. Satya Deo Gupta, 1962 INSC 170, and Cadila Health Care v. Cadila Pharmaceuticals, 2001 INSC 173, apply here.

(b) Earlier marks with a reputation (section 11(2))

A mark identical or similar to an earlier mark, to be registered for goods or services not similar to those of the earlier mark, is refused if the earlier mark is a well-known mark in India and use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark.

(c) Passing off and copyright (section 11(3))

A mark is refused if its use is liable to be prevented by the law of passing off protecting an unregistered mark used in the course of trade, or by the law of copyright.

(d) Consent and opposition

The Registrar may register despite an earlier mark if its proprietor consents (section 11(4)). Section 11(5) says the Registrar shall not refuse under section 11(2) or (3) unless an objection on those grounds is raised in opposition by the proprietor of the earlier mark.

“Earlier trade mark” includes a registered mark or a convention application with an earlier date, and a mark which, on the date of the application, was entitled to protection as a well-known mark (Explanation to section 11).

6. Bad faith

The Act has no free-standing absolute ground of bad faith, unlike Article 59(1)(b) of the EU Trade Mark Regulation. Indian law reaches bad faith in other ways: section 11(10)(ii) requires the Registrar to consider the bad faith of the applicant or the opponent when deciding a well-known mark question, section 18 requires the applicant to claim to be the proprietor, and courts have cancelled registrations obtained by copying a foreign mark as not having been made by the true proprietor. The CJEU in Sky v. SkyKick (2020) held that applying for goods with no intention to use may be bad faith.

7. The exception: honest concurrent use (section 12)

The Registrar may register identical or similar marks for the same goods in the case of honest concurrent use or other special circumstances, subject to conditions. This is discussed in the note on registration.

How this is examined

For the 2025 note on non-registrable marks, structure the answer as section 9(1), 9(2), 9(3), sections 13 and 14, and section 11, with one case or example for each and a closing paragraph on section 12. The comparative note on offensive marks is where the extra LL.M. marks are.