Absolute and Relative Grounds for Trademark Refusal

• Home
• /
• Knowledge Base
• /
• IPR Services
• /
• Trademark Objection
• /
• Absolute and Relative Grounds for Trademark Refusal

Absolute and Relative Grounds for Trademark Refusal

Trademark registration is popular among businesses in India. It helps them to protect their brand value and build their reputation in the market. However, not every trademark application gets accepted by the Trade Mark Registry. There are certain grounds on which the trademark can get rejected. 

These grounds can be divided into two categories: (i) absolute grounds and (ii) relative grounds. In this blog post, we shall discuss both of these grounds according to the provisions of the Indian Trade Mark Act 1999. 

Absolute Grounds for Trademark Refusal

The absolute grounds for trademark rejection are explained under Section 9 of the Trade Mark Act 1999. These grounds focus on the mark’s inherent characteristics. Here are some absolute grounds for refusal of trademark registration:

• Trademarks that aren’t able to differentiate between goods/services of one person from another: The proposed mark must be able to identify the source of goods or services. If it fails to do that, then such a mark is viewed as devoid of having any distinctive character. As per the TM Act 1999, a trademark application can be rejected on the ground that the proposed mark lacks the inherent ability to distinguish goods or services of one individual from those of another individual. For instance, if you want to trademark ‘XYZ milk’ for a milk brand, your application for trademark will get rejected as the mark lacks distinctiveness.

• Trademarks that are descriptive about the quality, geographical origin, time or production of the goods and services: If your proposed mark contains any descriptive term that tells the quality, location, time or production of the product, it cannot be registered as a trademark. For example, you can’t name the cars you are selling as “Fast” cars, and you can’t name your pizza delivery service as “fast” delivery services.

• Trademarks that are generic terms: You can’t trademark the generic words that are used every day. For example, if you want to trademark the mark on your water filter unit, you can’t use the terms “amazing”, “filter” or “auto” or any other word that is considered common and lacks distinctive character.

• Trademarks that are likely to cause confusion in public: Have you ever heard of Abibas - the deceptive cousin of Adidas? Abibas tried to be registered as a trademark but was refused trademark registration. If it was granted registration, it would’ve caused confusion among the public. Similarly, there are marks such as “Ferrapi”, “Nikee” or “Reedok” that can’t be registered.

• Trademarks that harm the religious sentiments of one particular section of society: If it’s offensive, it can’t be trademarked. The trademark rule specifically states that if your trademark upsets a particular section of a particular community, you most likely won’t be able to register it.

• If the trademark is obscene or scandalous: While controversy is a good way to get the attention of your customers, it’s most suitable for certain film-stars. As a brand, creating a controversy can tarnish your reputation even before you land in the market. Therefore, to protect you and your trade, the trademark association regarded it fit to refuse trademarks that appear to be obscene and scandalous.

• If the trademarks come under Emblems and Names Act: As per the Emblem and Names Prevention of Improper use Act 1950, there are certain specific emblems and names that you can’t use as a trademark. 

Relative Grounds for Trademark Refusal

In Section 11 of the Trade Marks Act, the relative grounds for trademark refusal are outlined. These grounds assess the trademark in relation to existing trademarks registered with the Trademark Registry. Some of the relative grounds for trademark rejections are stated below:

• Similar/Identical to an Existing TM for similar goods and services: If the proposed mark is similar/identical to an existing trademark for similar/identical goods and services, and there’s a likelihood of confusion on the part of the public, then the proposed mark can be rejected. For instance, if you attempt to register ‘Tanishk’ for gold jewelry, then this could be viewed as too similar to the existing ‘Tanishq’ brand. Such a mark would cause confusion among the public and some might think it’s the same brand as ‘Tanishq’. Therefore, such a mark could get rejected.

• Existing well-reputed trademarks: If the proposed mark is identical or similar to a well-known and reputed trademark in India, where the later mark’s usage would take unfair advantage of or be detrimental to the distinctiveness or reputation of earlier trademark, then it is not registrable. For instance, using “Starbus” for beverages would infringe upon the famous trademark “Starbucks”.

• Pending Application or Earlier Rights: A trademark application may be rejected if it is similar to a trademark that has a pending application or an earlier right. Under the trademark law, priority is given to marks that were used earlier or those that have prior rights of use. 

Conclusion

There’s no doubt that a trademark is a valuable asset to have. However, what trademark to choose is also important. The trademark registration online India process can’t succeed in registering your trademark if you don’t make the right choice. Need assistance in the online trademark logo registration process, you can connect with our IPR experts at Registrationwala. 

Frequently Asked Questions (FAQs)

Q1. What can I do if my trademark application gets rejected?

A. If your trademark application gets rejected, you can modify or refile the application. It would be best to reach out to an IPR legal consultant to know which option is appropriate for you.

Q2. Which authority is responsible for registering/rejecting trademarks in India?

A. The Trade Marks Registry is responsible for registering/rejecting trademarks in India.

Q3. What are the absolute grounds for trademark refusal?

A. Absolute grounds for TM refusal refer to reasons due to which a trademark application can be rejected, and take into account the inherent deficiencies in the mark itself, regardless of whether such a mark conflicts with existing trademarks.

Q4. What are the relative grounds for trademark refusal?

A. Relative grounds for TM rejection refer to reasons due to which a trademark application can be rejected, and take into consideration the potential conflicts with existing/pending trademarks or other earlier rights.

• 19351 views