What Can and Cannot be Registered as a Trademark

The Trade Marks Act, 1999 does not define the categories of marks registerable or the requisites of a trademark. The basic qualification for registrability of a mark is contained in the definition of a Trademark itself.

An ideal trademark should be easy to speak, remember and spell. It should be small, simple and attractive and suggest the desirable qualities of the goods or services to which the mark pertains. It should be different from other trademarks of the same class and should be registerable.

What can be registered as a Trademark?

The new Act has enormously increased the scope of registerable marks, as whatever is not prohibited from registration is registerable, if it satisfies the requirements of Section 2 viz. A Trademark, to be capable of registration, must satisfy the following essential conditions:

 

Section 2(1)(m) It must be a Mark. A “Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging and combination of colours or any combination thereof.  
Section 2(1)(o) Provides that a ‘Name’ includes any abbreviation of a name.  
Section 2(1)(q) Further provides that a ‘Package’ includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork
Section 2(1)(zb)  Provides that the Mark must be used or proposed to be used in relation to goods which are the subject matter of trade or manufacture, or in relation to services.  
Section 2(2)(b)  Provides that the use must be of a printed or other visual representation of the Mark.  
Section 2(2)(c)  Provides that the mark must be present on goods by some means or the other.

 

What cannot be registered as a Trademark?

Names, numerals, letters, devices, a combination of colours, slogans, signatures, sound marks and smells inter alia may be registered. It defines what marks are not registerable under Sections 9(Absolute grounds for refusal) and 11(Relative grounds for refusal).

Absolute grounds for refusal:

  • As per Section 9(1) of the new Act, a Trademark shall not be registered:
  1. Which is devoid of any distinctive character, i.e. not capable of distinguishing goods/services of one person from those of the others. A trademark is not registerable unless it is distinctive.

  2. Which is descriptive of goods are not considered prima facie distinctive. A common word is having reference to the character or quality of goods and having no reference to anything else cannot be registered as a trademark.

  3. Which have become customary in the current language or the bona fide or established practice of the trade, i.e. words in the public domain are prohibited from being registered as trademarks unless they acquire distinctive character.

 

  • Section 9(2) lays down that a mark shall not be registered if:
  1. It is of such nature as to deceive theconfusion.

  2. It contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the Indian citizens.

  3. It contains scandalous or obscene matter.

  4. It uses is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

 

  • Section 9(3) provides refusal of registration in relation to shapes. A mark shall not be registered if it consists exclusively of:
  1. The shape of goods which results from the nature of goods themselves; or

  2. The shape of goods which is necessary to obtain a technical result; or

  3. the shape which gives the substantial value of the goods.
  • Section 10 provides that the colour elements in the visual presentation of the trademark may also be registered. If the registration does not mention the colours, the trademark is deemed to be registered for all colours.

Relative grounds for refusal:

  • Section 11(1) provides that a subsequent mark would be refused registration if:
  1. it is identical or similar to an earlier trademark,

  2. the goods/services covered by the subsequent mark are identical or similar to the goods/services covered by the earlier mark, and

  3. there is likelihood of confusion or association with the earlier mark on the part of the public if the subsequent mark is allowed.

 

  • However, Section 12 provides an exception by laying down that in the case of honest concurrent use or other special circumstances, registration may be permitted.       

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