Grounds for Trademark Refusal

Section 9 and 11 of The Trade Marks Act, 1999 specifies the absolute and relative grounds for refusal of trademark registration.

Absolute ground for refusal of Trademark registration are:

1. Mark is devoid of or not capable of distinguishing the goods or services of one person from those of another person
2. Mark consists exclusively 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
3. Mark consists exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade

Relative Grounds for Refusal of Registration are:

1. It is identical or similar with an earlier trademark with similar list of goods or services and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark
2. If it is identical or similar with an earlier well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark.

Nevertheless in the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations.

Therefore, it is possible to overcome refusal of Trademark registration on relative grounds

Here are some useful tips

1. Similarity means not only similar marks but also similar or identical list of goods and/or services of these marks. So easiest way to avoid registration refusal is to remove conflicting goods or services from your application
2. You can request for a trade mark application division. It is almost the same as to remove some of goods or services. Because you application would be divided into several application with certain classes. As a result, some of your application classes will be removed
3. You can ask the owner of conflicting trade mark to give you a consent letter.