A trademark is a form of intellectual property consisting of a recognisable symbol, pattern, or expression which distinguishes products or services of a particular source from those of others while trademarks used to distinguish services are generally called service marks. Therefore in order for a trade mark to be licensed as a trade mark under the Trade Marks Act, 1999, it must comply with three conditions, which include:
- It needs to be a mark
- It should be worthy of being graphically portrayed
- It should be able to differentiate between the goods or services of one person and those of another.
Apart from these conditions, the trade mark could not be subject to any basis for denial of registration of trade marks. Applications for approval of a trade mark can be rejected on either absolute or relative grounds, as provided for in Sections 9 and 11 respectively. These reasons for denial of registration shall be addressed in depth in the sequence on the grounds of refusal of registration of trade marks.
Section 9 of the Trademark act, 1999 states that:-
Absolute grounds for refusal of registration.—
(1) The trade marks—
(a) 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;
(b) 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 service;
(c) 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, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
As can be seen, Section 9(1)(a) prohibits registration of marks, They are devoid of any identifiable character. A term or a word that is genuinely characteristic to a person’s goods must usually be incapable of referring to any other person’s goods. Distinctiveness may be of two kinds: Innate and Acquired. In order to be distinctive or capable of distinguishing goods, the mark itself may have some inherent qualities or distinguishing characteristics which render it distinctive or capable of distinguishing the goods of one person from those of others. In American Online Inc.’s Application, the applicant sought to register the word “YOU’VE GOT MAIL” as a trade mark in various classes. “The examiner refused the application finding the trade mark was not distinctive. In appeal, the Board of Appeal held that the trade mark composed of common words to inform email users of the ordinary fact they have received a new mail and that the phrase must remain free from the individual monopoly rights”.
Section 9(1)(b) forbids the registration of trademarks consisting solely of trademarks or signs which may be used in exchange for the intent, quality, quantity, intended purpose, meaning, geographical origin or period of production of the products or for the rendering of services or other characteristics of the goods or services. This clause extends to markings which are both descriptive and non-distinctive in relation to the products or services for which protection is required. When evaluating a label, one has to look at the word, not in its strict grammatical significance, but as it will reflect itself to the general public, who would look at it and develop an opinion of what it connotes, as noted in Keystone Knitting Mills Ltd.’s TM [(1928) 45 RPC 193]. In M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks, “it has been held by the court that the mark “RASOI” for edible oils cannot be registered as a trademark because such mark indicates the nature of the product”.
Finally Section 9(1)(c) prohibits trademarks which consist solely of trademarks or signs which have been customary in the existing language or in the bona fide and defined trade practises from being licensed under the Act. Clause (c) to Section 9(1) of the Act was added specifically to shield against monopolisation as a trade mark the unrestricted use of signs or markings already in use in trade. This section applies not only to terms but also to colour combos. Delhi High Court held that the simple colour red, the mixture of red and white, was deemed to be common to the trade of toothpaste on the domestic and foreign market and could not be monopolised by any faction as noted in Colgate Palmolive ltd v. Patel (2005).
These being said, trademarks should be of distinctive character, but when the marks are devoid of distinctive character and are of descriptive nature, these marks can be registered to, if they have acquired their distinctiveness because of their use or if it’s a very popular or well-known trademark.
There are some other grounds for refusal which will be discussed in next part.
I have always been against Glorifying Over Work and therefore, in the year 2021, I have decided to launch this campaign “Balancing Life”and talk about this wrong practice, that we have been following since last few years. I will be talking to and interviewing around 1 lakh people in the coming 2021 and publish their interview regarding their opinion on glamourising Over Work.
If you are interested in participating in the same, do let me know.
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