Registration of trade marks: procedure and grounds for refusal

Intellectual Property Rights I · Unit II · Topic 7 of 20 · 7 min read

Registrable and non-registrable marks, the absolute grounds of refusal in section 9 (lack of distinctiveness, descriptive and geographical marks, deceptive and prohibited marks, functional shapes), the relative grounds in section 11, and the registration procedure from application to certificate.

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1. Absolute grounds: section 9(1) lack of distinctiveness
2. Absolute grounds: section 9(2) and (3)
3. Relative grounds: section 11
4. Procedure for registration
5. Problem
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.

Absolute and relative. Section 9 refuses a mark because of something in the mark itself (it does not distinguish, it describes, it deceives, it offends). Section 11 refuses it because of someone else’s earlier mark. The first can be raised by the Registrar on his own; the main relative grounds in section 11(2) and (3) can only be raised by the earlier proprietor in opposition (section 11(5)). Keep the two lists apart and the answer organises itself.

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

The following shall not be registered:

(a) marks devoid of any distinctive character, that is, not capable of distinguishing the goods or services of one person from those of another;
(b) marks consisting exclusively of 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 (“Best Quality”, “Super Fresh”, “Bangalore Coffee”);
(c) marks consisting exclusively of indications that have become customary in current language or in the bona fide and established practices of the trade.

The proviso is the key to every problem: a mark shall not be refused if, before the date of application, it has acquired a distinctive character as a result of use, or is a well-known trade mark. This is the doctrine of secondary meaning: a descriptive or geographical word that the public has come to associate with one trader becomes registrable. The word “exclusively” also matters: a descriptive word combined with a distinctive word or device may be registrable, with a disclaimer of the descriptive part (section 17).

Why descriptive and geographical words are excluded: other traders have a legitimate need to describe their goods or say where they come from, and one trader should not monopolise the language. The Calcutta High Court refused registration of “Simla” for cigarettes on this ground (Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Marks, 1977).

2. Absolute grounds: section 9(2) and (3)

A mark shall not be registered if (section 9(2)):

(a) it is of such nature as to deceive the public or cause confusion (for example, “Swiss” on watches made in India);
(b) it contains matter likely to hurt religious susceptibilities of any class or section of citizens;
(c) it contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (the national flag, the emblem of the UN, the name of the Prime Minister and so on).

A mark consisting exclusively of a shape shall not be registered if the shape results from the nature of the goods, is necessary to obtain a technical result, or gives substantial value to the goods (section 9(3)). Functional shapes belong to patent and design law, which are limited in time; trade mark law cannot be used to get a perpetual monopoly over them. The Explanation adds that the nature of the goods or services is not itself a ground for refusal.

Sections 13 and 14 add two more: names of chemical elements and international non-proprietary names of drugs, and names or representations of living persons or persons recently dead without consent.

3. Relative grounds: section 11

Section 11(1). Refusal where, because of identity with an earlier mark and similarity of goods, or similarity to an earlier mark and identity or similarity of goods, there is a likelihood of confusion on the part of the public, including likelihood of association.
Section 11(2). Even for dissimilar goods, refusal where the earlier mark is a well-known trade mark in India and use of the later mark without due cause would take unfair advantage of, or be detrimental to, its distinctive character or repute.
Section 11(3). Refusal where use would be prevented by the law of passing off protecting an unregistered mark, or by the law of copyright (for example, a label copied from another’s artistic work).
Section 11(4). The earlier proprietor may consent.
Sections 11(6) to (10) tell the Registrar how to determine whether a mark is well known: knowledge in the relevant section of the public, duration and extent of use and promotion, registrations, and successful enforcement. Use in India or registration in India is not required (section 11(9)).

“Earlier trade mark” means a registered mark, an earlier application, an international registration designating India, or a convention application with an earlier date, and a mark entitled to protection as well known (Explanation to section 11(4)).

Honest concurrent use (section 12). Even where section 11 would apply, the Registrar may register an identical or similar mark for more than one proprietor in case of honest concurrent use or other special circumstances, subject to conditions.

4. Procedure for registration

Search. Not compulsory, but advisable, of the Register and the Trade Marks Journal.
Application (section 18). By any person claiming to be the proprietor of a mark used or proposed to be used, in the prescribed form, at the office within whose territory his principal place of business in India lies. One application may cover several classes, with fees for each class.
Examination. The Registry examines the mark under sections 9 and 11 and issues an examination report; the applicant replies and may ask for a hearing. The Registrar may refuse or accept absolutely or with conditions, and must record reasons for refusal or conditional acceptance (section 18(4) and (5)). Acceptance may be withdrawn if made in error (section 19).
Advertisement (section 20) in the Trade Marks Journal.
Opposition (section 21). Any person may oppose within four months of advertisement. The applicant must file a counter-statement within two months of receiving the notice, failing which the application is deemed abandoned. Evidence is filed and the Registrar decides after hearing. Appeal lies to the High Court (section 91).
Registration (section 23). If unopposed, or opposition fails, the mark is registered as of the date of application, and a certificate issued under the seal of the Registry.
Duration and renewal (section 25). Ten years, renewable for ten years at a time indefinitely. A mark not renewed may be removed, with a grace period and restoration on payment.

5. Problem

A proprietor started a new shop to sell meat products under the trade mark “Hubballi Chickens”. Can he register his trade mark? (August 2024)

Issue. Whether a mark made up of a place name and the name of the goods is registrable.

Law. Section 9(1)(b) bars marks consisting exclusively of indications designating the kind of goods or their geographical origin; section 9(1)(a) bars marks devoid of distinctive character. The proviso allows registration if the mark has acquired distinctiveness through use before the date of application.

Application. “Hubballi” is the name of a city and tells the buyer where the shop or the meat comes from; “Chickens” is the common name of the goods. The mark consists exclusively of a geographical indication and a generic word. Every meat seller in Hubballi has an equal right to say that he sells chickens in Hubballi. The shop is new, so the mark cannot have acquired a secondary meaning by use.

Conclusion. The word mark “Hubballi Chickens” will be refused under section 9(1)(a) and (b). The proprietor should adopt a distinctive invented word or a distinctive logo and register that, disclaiming exclusive rights in “Hubballi” and “Chickens” (section 17). If after years of use the public comes to identify “Hubballi Chickens” with his shop alone, he may apply again under the proviso.

How this is examined

January 2026: “What is a Trade Mark? Explain the absolute and relative grounds for refusal of registration of Trade Mark.” August 2024: “One of the grounds for rejecting an application for registration of trade mark is the lack of distinctiveness — Explain”, the alternative “Explain the procedure of registration of trade marks”, and the Hubballi Chickens problem. Sections 9 and 11 with the proviso and examples answer the first two; section 4 answers the third. Section 9(1) and its proviso are the law for any problem about a place name or a descriptive word.

Now try the real questions: Intellectual Property Rights I past question papers.