Trademark registration paves the way for products and services to be uniquely identified. It differentiates between products and services.
Trademark registration not only gives the trademark owner exclusive rights over his own trademark but also protects the trademark from infringements. It is necessary to build goodwill, customer loyalty and valuable assets.
However, before choosing a brand name, it is critical to understand what can and cannot be trademarked. In this article, you will learn what cannot be trademarked when choosing a brand name.
Absolute Grounds for Refusal of Registration
1. Void of distinguishing characteristics
The requirement of being distinct has been narrowly interpreted in Indian law. A trademark for a product or service that is not distinctive in nature is not a trademark. Registration of descriptive and non-distinctive trademarks is prohibited under Section 9(1) (a) and 9(1)(b) of the Trade Marks Act, 1999 unless they are distinctive.
The Act makes an exception here namely where the trademarks lack distinctiveness or contain exclusive marks that are used in trade to define kind, quality, etc., or contain marks that have become customary in trade practices. The trademarks falling under this point will not be refused registration if they have acquired a distinctive character as a result of the use or are a well-known trademark prior to applying for registration.
2. Names/surnames
In India, names and surnames cannot be used as trademarks unless they have a distinctive character. Furthermore, if those names were used dishonestly, they would not be granted trademark status.
3. Colour
While the Trademarks Act of 1999 does not prohibit the use of colours as a trademark, the threat of ‘colour deprivation’ has led the Indian Registry and Courts to decline colour use as a trademark, resulting in a backlog of court cases. It is important to note that the colour of a brand is not the same as the colour of a colour label.
4. Numerical
Numbers should not be considered solely as a trademark in and of themselves. In some cases, Indian courts have ruled that the numbers attached to them lack distinctiveness and thus do not qualify as a trademark. In India, numerals do not apply for a trademark. They are disqualified because they lack the most important aspect of a trademark, a distinctive character.
5. Location geographically
It is not possible to register a trademark based on the name of a place, city, or other geographical location.
6. Sound
Before a brand registration can be used for a specific tone, ‘Factual Distinctiveness’ must be demonstrated. Factual distinctiveness implies the immediate recall value of sound in relation to the product or service.
7. Smell
Different fragrances are not eligible for trademark protection because they are not easily distinguishable and are subjective in nature.
8. The structure of goods
Section 9(3) of the Trade Marks Act of 1999 states—
If a trademark consists solely of a trademark, it cannot be licenced as a trademark.
- The shape of the goods as a result of the nature of the goods;
- The shape of the goods is a result of their nature.
- The form of the products required to achieve a technical result; or,
- The shape adds significant value to the goods.
9. Decietful
A trademark should not be misleading to the public.
10. Religious feelings are harmed
Trademarks should not be offensive to a person’s religious beliefs.
11. Does not Violate Emblems and Names (Prevention of Improper Use) Act, 1950
If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Relative grounds for refusal
- According to Section 11(1), a subsequent mark will be refused registration if it is identical or similar to an earlier trademark,
- The subsequent mark’s goods/services are identical or similar to the earlier mark’s goods/services, and
- If the subsequent mark is permitted, there is a risk of public confusion or association with the earlier mark.
Section 12 makes an exception, stating that registration may be permitted in the case of honest concurrent use or other special circumstances.
Grounds of trademark removal/cancellation
Trademarks registered with goods and services are registered so without any genuine intention to use them.
The trademark was not in use for five years from the date of registration, and that period has now expired.
A registered trademark is used in a way that deceives or confuses the public.
The proprietor misrepresented or failed to disclose any material fact relating to it in the registration application, which, if properly disclosed, would not justify such registration.
Changes in circumstances after registration cause the registration to be invalid.
When a condition is mentioned in the Register of Trademarks and there is a violation or failure to observe it, any person can file for registration cancellation.
Non-renewal of Trademark
Conclusion
The Trade Marks Act of 1999 specifies the number of absolute and relative grounds that must be considered before a trademark is approved for registration. When a trademark is likely to cause confusion or deception, the prohibition on registering the mark is absolute, in order to protect the buyer’s interests.
Similarly, a subsequent mark that is similar or identical to an earlier mark cannot be registered. This is true even if the goods/services represented by a subsequent and an earlier mark are identical or similar, or if the public is likely to be confused or misled. In both of these cases, registration of the mark will be denied.
As a result, a trademark is extremely valuable and significant because the reputation, identity, and goodwill associated with the goods/services become coextensive with the trademark itself. The mark representing the goods/services is not mutually exclusive; rather, it substantiates the authenticity and distinctiveness ascribed to such goods/services by the mark and vice versa.
Registration Arena is the expert hub that can help you with the registration of your trademark, copyright or patent. For more details call us at 8600544411 / 8600544422
