Trademark Registration refusal section 9 of TM act 1999. Section 9 absolute ground of refusal of TM, non distinctive, customary, generic words etc.
Section 9 of Trademark Act 1999 absolute ground for refusal of registration trademark.- Non distinctiveness character
- Kind, quality, quantity relate to words name. If you can relate something of words, then it will not.
- If not associate with words name eg. Name 5 litre and selling oil, water etc.
- Register proprietorship not, can be used if not acquired or kind related with name.
Non distinctive character trade mark case, ITC v Registrar of TM
In this case ITC v Registrar of TM, the kolkata High Court dismissed the appeal on ground funt word Simla and analog to famous geographical place Simla. Which can not be register as trade mark, Generic words not be given as trade mark.
American online Inc. case on Registration of TM
In this case American online Inc. this firm application for registration of trademarks words “YOU’VE GOT MAIL”. It is refused and denied to register as it is common message that YOU HAVE GOT MAIL, in this no any distinguish characters.
The Arbitration mark can br to register, it’s no matter either it’s relate to your goods or services or not.
Exception of section 9 refusal of trademarks Registration, Trademark Registration refusal
Section 9(1) of trademarks act, proviso state that trademarks shall not be a refused registration if before the date of application for registration it has acquired a distinctive characters as a result of the use made of it or is a well known trade mark.
Section 9 of trademarks act 1999 refusal of Registration
The trademark which are devoid of any distinctive character that is to say not capable of distinguishing the goods or services of one person from those of another person.
section 9(1)(b) The trademark which consist exclusively of marks are indications which may serve in trade to designate the kind, quality, quantity, intended purposes value, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.
Eastern photograph material company v Controller of Patent, Trademark Registration refusal
In this case Eastern photograph material company v Controller of Patent, the company sale photograph on paper and word SOLIO want to be registered as there TM. The word SOLIO is a Greek word means thorne, which is not associate with and it reverse the registrar decision.
Customary Trade mark, Trademark Registration refusal
The trademark which consists exclusively of marks or indication which have become customary in the current language or in the Bonafide and established practice of the trade shall not be registered.
The Generic words example DALDA popular for the name associated with Ghee, common in use.
SBL LIMITED V HIMALAYAN DRUGS COMPANY
In this case SBL Ltd v HIMALAYAN DRUGS COMPANY, the medicine name LIV-52 made by HIMALAYAN. And medicine name LIV.T made by SBL, here the word LIV is deceptive. Name is deceptive claim by HIMALAYAN. This claim rejected by registrar as it is not deceptive.
The Supreme Court reverse it, LIV is generic name it can be used in favour SBL it is not properties to generic words.
Example : ROSY relate associate with fragrance it is generic name, ROSY for table work then it may be given trade mark.
Mark Shall not be registered as a Trademark
Section 9 Sub clause 2, marks are not be registered as a trademark
- A Trademark if it is of such nature as to deceive the public or cause confusion.
- if it contains or comprise of any matter likely to hurt the religious suspectibility of any class or section of citizens of India.
- marks are not be registered if it compromise or contain scandals or obscene matter.
- if it use is prohibited under the emblems and names prevention of proper use act 1950.
Marks shall not be registered as trade mark if it consists exclusively section 9(3) trademarks
If it consists exclusively of the shape of goods which results from the nature of the goods themselves.
It consists if the shape of goods which is necessary to obtain a technical result.
If it consists exclusively the shape which gives substantial value to the goods.
The explanation of section 9 sub Clause 3, for the purposes of this section, the nature of goods or services in relation to which the trade mark is used. Or Proposed to be used shall not be a ground for refusal of Registration.