The Trade Marks Act, 1999 sets out two categories of objection. Section 9 covers absolute grounds, which concern the mark itself. Section 11 covers relative grounds, which concern conflict with earlier rights.
Understanding which applies to your situation matters, because the arguments that answer them are completely different.
Absolute grounds: Section 9
Section 9(1): not distinctive
A mark shall not be registered where it is:
- Devoid of any distinctive character, meaning not capable of distinguishing the goods or services of one person from another’s.
- Consisting exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of goods or rendering of services, or other characteristics.
- Consisting exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.
In short: descriptive marks and generic terms.
Two exceptions apply. A mark that has acquired distinctiveness through use can be registered despite being descriptive. So can a well-known trademark.
Section 9(2): deceptive, offensive or prohibited
A mark shall not be registered if:
- It is of such nature as to deceive the public or cause confusion.
- It contains matter likely to hurt the religious susceptibilities of any class or section of citizens of India.
- It comprises or contains scandalous or obscene matter.
- Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Examples of how these bite in practice:
- “PATA” for footwear, deceptively similar to BATA.
- A mark portraying a deity in an unpleasant manner.
- Vulgar matter.
- Words like “India”, or the Indian flag, on their own.
Section 9(3): shapes
A mark shall not be registered if it consists exclusively of:
- The shape of goods which results from the nature of the goods themselves.
- The shape of goods which is necessary to obtain a technical result.
- The shape which gives substantial value to the goods.
This is the provision that limits attempts to secure perpetual protection over product shapes. It has been in issue where design protection has expired and the owner turns to trademark law instead, as in the Harpic bottle dispute.
Relative grounds: Section 11
Section 11 deals with conflict against earlier marks: identity or similarity with an earlier trademark, combined with identity or similarity of goods or services, where there exists a likelihood of confusion on the part of the public.
It also extends protection to well-known marks beyond the goods they are registered for, though as the Vicks judgment illustrates, that protection is not unlimited and does not amount to blanket exclusivity across all classes.
Where marks sit on the distinctiveness spectrum
The practical position tracks the types of trademarks:
Descriptive marks are not registrable, because they fail to distinguish the applicant’s goods or services. The exception is where the mark has acquired distinctiveness through extensive use, such that it is known in relation to that applicant only. Registration then hinges entirely on proving that immense and continual use.
Suggestive marks are generally registrable, though the line between suggestive and descriptive is fine, and in some cases a suggestive mark will not secure registration.
Fanciful and arbitrary marks face no Section 9(1) difficulty.
This is why brand naming decisions have legal consequences. The name that describes what you sell is the one you will struggle to own.
Answering the objection
For a Section 9 objection, the argument is about the mark: that it is not in fact descriptive, or that it has acquired distinctiveness. The second route requires evidence, and a good deal of it. Sales figures, advertising spend, length and continuity of use, market presence.
For a Section 11 objection, the argument is about the conflict: that the marks are distinguishable, that the goods or services differ, or that the cited mark is vulnerable, for instance through non-use, in which case rectification may clear the path.
Both are raised in the examination report, where the reply deadline is one month.
Frequently asked questions
Can a descriptive mark ever be registered in India? Yes, where it has acquired distinctiveness through use. The burden is substantial and evidential, and it is much harder than choosing a distinctive mark at the outset.
What is the difference between absolute and relative grounds? Absolute grounds concern the mark itself, whether it is capable of functioning as a trademark. Relative grounds concern conflict with someone else’s earlier rights.
Can I register a geographical name? Not where it serves in trade to designate geographical origin, under Section 9(1). Acquired distinctiveness can overcome this, and there is separate protection available for genuine geographical indications under the Geographical Indications of Goods (Registration and Protection) Act, 1999.
Can I register the shape of my product? Only if the shape is not excluded by Section 9(3), meaning it does not result from the nature of the goods, is not necessary to achieve a technical result, and does not give substantial value to the goods. That leaves a narrow path.
Does a well-known mark get protection in every class? It gets protection beyond the goods it is used on, but not blanket exclusivity. The Vicks judgment made clear that well-known status is not absolute.
Useful official resources
- Trade Marks Act, 1999 — Sections 9 and 11
- IP India public search
- Emblems and Names (Prevention of Improper Use) Act, 1950
Considering a name that might run into Section 9? Talk to us before you commit to branding. A clearance view early is far cheaper than an objection later.