Among the different types of marks, descriptive marks are not registrable as they fail to distinguish the goods/services of the applicant in question. However where the mark has acquired distinctiveness by extensive usage of the mark so much so that it known in relation to that particular applicant only, then even such a descriptive mark could be registered. However the whole registration would hinge upon showing that the mark has indeed ‘acquired distinctiveness’ by showing immense and continual usage.

Suggestive marks are generally registrable though in some cases, since it is only a fine line between descriptive and suggestive marks, in some cases, suggestive marks might not secure registration.

Grounds of Refusal
Section 9 called Absolute Grounds and Section 11, called Relative Grounds, of the Trademarks Act, 1999 provides certain grounds on which a trademark could be refused registration.

Absolute Grounds
Section 9 (1) lays down “The trade marks ——

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

Two exceptions to this rule are the marks which have “acquired distinctiveness” and “well-known trademarks (information on which is mentioned below).

Section 9(2) lays down, “A mark shall not be registered as a trade mark if —-

  1. it is of such nature as to deceive the public or cause confusion:
  2. it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
  3. it comprises or contains scandalous or obscene matter;
  4. its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.


  • First Instance : where a person applied for mark like “PATA” for footwear which is deceptively similar to BATA
  • Any mark that violates any religious sentiments like say portraying a deity in an unpleasant manner;
  • Anything which is vulgar.
  • Words like India or the Indian flag per se.

Section 9(3) lays down, “A mark shall not be registered as a trade mark if it consists exclusively of –

  1. the shape of goods which results from the nature of the goods themselves;
  2. the shape of goods which is necessary to obtain a technical result;
  3. the shape which gives substantial value to the goods”

It is pertinent to note that shape of goods per se is registrable. However such shape cannot be the very nature of the goods or the shape becomes mandatory to attain a technical result or gives some value to it.

These are the absolute grounds on which a mark may be refused registration.

Relative Grounds

Section 11 lays down that a trade mark shall not be registered if,
because of

    1. its identity with an earlier trade mark and similarity of goods services covered by the trade mark; (or)
    2. its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark.

There exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark

This provision deals with refusal of registration due to prior existing similar/identical trademarks. So where the mark is similar/identical to a prior existing mark in relation to similar/identical goods/services and due to which there is a possibility of the public to get confused/deceived as to origin of the goods/services, the said mark shall be refused registration.

One exception for this is Section 12 which deals with “honest, concurrent usage,” i.e where both the marks have been honestly and concurrently being used by the respective trademark holders, then registration may not be refused.

Section 11(2) lays down “A trade mark which –

    1. is identical with or similar to an earlier trade mark
    2. is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor.”

This provision deals with marks which are deceptively similar/identical to an earlier mark but is used/applied with respect to goods/services totally different from those of the earlier mark. In such a case, the subsequent mark will be refused registration only where the earlier mark is well-known and the subsequent mark would be detrimental to the interest of the earlier mark.

Section 11(3) of the Act lays down “A trade mark shall not be registered if, or to the extend that, its use in India is liable to be prevented —

      • by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade (or)
      • by virtue of law of copyright.”

Passing off is a Common law tort where an entity uses a trademark deceptively similar/identical to an earlier mark of a different entity so as to pass off its goods/services as belonging to the latter. The concept of passing off particularly assumes importance in the case of unregistered marks.

Read Next: Well Known Trademarks?