Absolute vs. Relative Grounds on Refusal of Trademark Registration

In India, the registration of trademarks is regulated by the terms of the Trade Marks Act, 1999 and supervised by the Office of the Controller General of Patents, Designs and Trade Marks. Registration is not only an effective way of enhancing brand identity but it also gives legal redress in infringement, passing off cases, or misuse. Not all applications of trademarks are, however, approved. The Act outlines some absolute and relative reasons as per which application can be denied.

Absolute Grounds for Refusal of Trademark Registration?

Section 9 of Trade Mark Act 1999 provides absolute grounds under which refusal may be made. These grounds put emphasis on the nature of the mark itself, not with reference to any existing trademark. A mark that does not satisfy the basic legal criteria on distinctiveness or legality in question may be thrown out during the examination stage.

1. Absence of Characteristic Traits

A trademark should have the ability to differentiate among the goods or services of a particular person and others. Non-distinctive marks are generic, common marks, ones unable to designate a specific source. The marks of this kind do not deserve the status of a trademark, since they are not able to fulfill the basic task of a trademark.

2. Descriptive Marks

Marking that just relate to the quality, nature, purpose, quantity or characteristics of the goods or services are not registrable. As the case in point, being able to use common descriptive words that are directly related to the product does not enable the mark to be able to shine in the market place. The marks unless they have become distinct by their long use are subject to be rejected.

3. Marks Opposite to Social Lifestyle or Law

Any mark, which contains offensive, obscene, immoral, or scandalous material, or which is otherwise contrary to the order or policy of the people, is not subject to registration. The trademarks advising against illegal acts or those with derogatory statements are not allowed in this ground.

4. False or Misleading Marks

Marks that deceive the people on the nature, quality, geographical origin or nature of goods or services are refused. In case a trademark leads to a misleading impression that can mislead the consumers, this is not acceptable across the trademark law.

5. Geographical Names or Surname Common Name

Marks containing only the names of geographic locations or which are commonly used last names do not have uniqueness. These marks are usually regarded as descriptive and it might be rejected unless the applicant can prove that acquired distinctiveness due to long and continuous usage.

6. Close resemblance to Authoritative Icons

Trademarks which are similar or utilize national flags, government emblems, government seals, or international organizations symbols are not allowed to be registered. This is limited by the fact that it is meant to ensure there is no confusion, abuse, and disrespect to official insignia.

Relative Grounds of Trademark Refusal Registration

Section 11 of the Trade Marks Act, 1999 regulates relative grounds of refusal. They are not based on absolute grounds as are the existing trademarks in comparison with the mark applied. The major issue on the relative grounds is that of the probability of confusion among the consumers.

1. Similarity with Existing Trademarks

A trademark that is proposed to be similar to an already registered trademark may be rejected as either similar or deceptively similar. The similarity can be based on the visual look, the sound, or the general impression. Refusal may also be given in cases of similarity even in respect of allied or related goods where confusion is probable.

2. Possibility of confusing the consumer

The confusion is evaluated on the point of view of an average consumer having an imperfect memory. The consideration of factors includes phonetic similarity, conceptual similarity and the properties of goods or services. In case of confusion or deception, the application can be denied.

3. Dispute with Well-Known Trademarks

Popular trademarks are better protected because of a good reputation. Even a slight resemblance to a renowned name may lead to denial, irrespective of the identity of goods or services. The purpose of this protection is to avoid watering down the reputation of the brand.

4. Opposition on Ground of Reputation

In case there is likely prejudice or injury to the distinctive nature of a reputed trademark by the proposed mark, it can be rejected. The courts and trademark organizations have been especially tough to guard against the misuse or imitation of famous brands.

5. Prior Rights or Earlier Applications

The trademark law prioritizes previous applications and previous users. In case the trademark in question is already undergoing registration or the benefits of the prior use, the subsequent application can be denied. The first user or the applicant with earlier application is usually given priority.

How Trademark Lawyers help in overcoming refusals

The process of trademark registration and objections may not be an easy task, particularly when this is the first time an individual is filing a trademark. The lawyers of Trademark are crucial in performing preceding search, advice on mark selection, reacting to examination reports and opposition or refusal. Their proficiency would minimize chances of rejection and make certain that they meet legal requirements.

How to deal with the rejection of Trademarks

In case an application in trademarks is rejected on absolute or relative basis, there are a number of course of options available to the applicants:

• Amendment or Clarification
  Applicants have a chance to address the objections by explaining what goods or services are involved or by putting across legal arguments to show uniqueness.
• Filing an Appeal
  Where the objections are upheld, the applicant can appeal against the rejection to the concerned appellate authority.
• Submission of Evidence
  Evidence of previous use, reputation or distinctiveness acquired can be provided to bolster the application and overcome objections.

Conclusion

Registering trademarks is a very important procedure in ensuring brand security, but the process is closely examined in terms of legal matters. Knowing both the absolute and relative reasons that will lead to such refusal will enable the applicants to avoid some of the pitfalls that normally occur during registration, and enhance chances of success in registration. A unique, sincere and controversy-free trademark has a much higher probability of success.