Trademark refusal in India

A trade mark application is filed in a specific class for specific goods and/or services. Shortly after that the application proceeds to examination, during which the Registrar of trademarks may call for certain additional requirements for registration, refuse the application or accept it unconditionally.

Information presented here also applies to International Trademark Provisional refusal in India

The trademark refusal in India is usually under the ABSOLUTE grounds or RELATIVE grounds as below:

  • Absolute grounds: The refusal of a trademark is often under Section 9(1) (a) of the Trade Marks Act 1999, if the mark is descriptive or non-distinctive as such that it is not capable of distinguishing the goods and services of one business from others, or is something that indicates kind, quality, quantity, intended purpose, values, geographical origin of the product.
  • Relative grounds: The refusal of a trademark can also be under Section 11 (1) of the Trade Marks Act, 1999, if the mark is identical with or similar to earlier marks in respect of identical or similar goods and services, and due to this there exists a likelihood of confusion on the part of the public.

The examination report contains the reason for the refusal along with a list of conflicting marks if any.

What are the reasons for trademark refusal in India?

Absolute grounds for trademark refusal

Section 9 of the Act lays down scenarios in which the trademark will not be registered as below:

  • Marks which are devoid of any distinctive character. Such marks are not capable of distinguishing the goods or services of one person from those of another.
  • Marks which which serve in trade to define the kind, quality, quantity, intended purpose, values or geographical origin of goods or services rendered.
  • Marks which have become customary in the current language or the established practices of the trade.
  • Marks which deceives or cause confusion to the public.
  • Marks which are likely to hurt the religious sentiments of any class or sections of citizens of India.
  • Marks which contain scandalous or obscene matter.
  • If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
  • Marks which consist of the shape of goods which result from the nature of goods themselves.
  • Marks which consist of the shape of goods which is necessary to obtain a technical result.
  • Marks which consist of the shape which gives substantial value to the goods.

Exception: The trademark shall not be refused registration if the mark has acquired a distinctive character as a result of prolonged use or is a well-known trademark before the date of application for registration.

Relative grounds for trademark refusal

Section 11 of the Act provides relative grounds for objection/refusal of registration. This section provides exceptions to the grounds of refusal. If the exceptions are complied with, then the trademarks under section 11 can be registered.
Section 11(1) states the following grounds for objection–

  • Trademarks which are identical with similar goods or services.
  • Trademarks which are similar of earlier trademarks with identical goods or services.

Exception: If there is an honest concurrent use of the trademark, the Registrar of Trademarks may allow the registration.

Section 11(2) states the following grounds for objection –

  • Trademarks is identical with or similar to an earlier trade mark; and with different goods and services but
  • Which would be likely to take unfair advantage of the well known similar or identical earlier trademark in India.

Section 11(3) states the following grounds for objection –

  • The usage of the trademark is prevented by the law of passing off protecting an unregistered trademark used in the course of trade.
  • The usage of the trademark is prevented by virtue of law of copyright.

Section 11(4) provides an exception that the trademarks shall not be refused registration if the the proprietor of the earlier trade mark or other earlier right consents to the registration or unless an objection is raised in opposition proceedings by the proprietor of the earlier trademark.

Attorney fee for handling a trademark refusal in India

Action based fee

  • Attorney fee for preparing and filing a response to trademark refusal in India
  • Additional fee for responding to office actions
  • Additional fee for preparing evidences and arguments
  • Additional fee for attending hearings with the examiner

Capped Flat fee

  • Attorney fee for preparing and filing a response to trademark refusal in India
  • No further fee for responding to office actions
  • No further fee for preparing evidences and arguments
  • No further fee for attending hearings with the examiner

Overcoming Trademark Refusal in India

The refusal notification is usually accompanied by a list of conflicting marks. The applicants must study the conflicting marks cited by the Indian Trademarks office for objecting the mark and then file a proper response along with their arguments to overcome the refusal/objections. This response needs to be filed within ONE month of the date of communication of the examination report to the applicant.

An applicant must file a response along with an statement requesting the Registrar to review his decision within 30 days of such refusal notice.

Rule 119 of the Trade Marks Rules 2017 states that ‘An application to the Registrar for the review of his decision under sub-section (c)of section 127 shall be made in Form TM-M within one month from the date of such decision or within such further period not exceeding one month thereafter as the Registrar may on request allow, and shall be accompanied by a statement setting forth the grounds on which the review is sought’.

Section 127 in The Trade Marks At 1999 states the Powers of Registrar and sub clause (c) of the Section states that ‘the Registrar may, on an application made in the prescribed manner, review his own decision’.

Further, on dismissal of review petition, the applicant also has an option of filing an appeal before the Intellectual Property Appellate Board (IPAB) within 3 months of the dismissal.

We shall study the documents cited for provisional refusal of the case by the Indian Trademarks office and file our proper response to overcome the objections. This response needs to be filed within ONE month of the date of communication of the refusal to the applicant. A notice of refusal is usually accompanied by a list of conflicting marks. We shall also study this list and offer our opinion on the possibility of successful registration of the mark.

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