Absolute grounds for refusal of Trade Mark

  1. The trademarks that are:
  • Incapable of distinguishing the goods/services of the applicant with those of others;
  • or may serve in trade to designate kind, quality, purpose, value, geographical origin;
  • or have been commonly used in the current language or established practices of trade;

shall not be registered.

Exception:If before the date of application, the mark has acquired distinctiveness by use or it is a well-known mark, it cannot be denied registration.

  1. A Mark shall not be registered as a Trade Mark if it causes:
  • Confusion or deceives the public; or
  • Hurts religious susceptibilities of class/ section of citizens of India; or
  • Comprises/contains scandalous/obscene matter which is against the morality of the public; or
  • Is prohibited under the Emblems and Names Act, 1950
  1. 3-Dimensional Mark or Shape of Goods

These may be registered as a trademark.However, the Act states that a Mark shall not be registered as a Trade Mark if:

  • it consists exclusively of the shape of goods itself or the shape of goods necessary to obtain a technical result; or
  • The shape which adds substantial value to the goods- the shape should have visual appeal to add value and not be of a functional nature to fall within the purview of this provision.
  • The nature of goods or services in relation to which trademark is used or proposed to be used shall not be a ground of refusal of registration.
  1. Chemical element/compound:

No word which is the name of a chemical element/ compound (not mixture) or which is declared by the World Health Organization and notified by the Registrar of Trade Marks as aninternational non-proprietary name / deceptively similar to such names shall be registered as a trademark.Even if the aforementioned word has acquired distinctiveness as a trademark it still cannot be registered as a trademark.

Relative grounds for refusal of Trade Mark

  1. Except in case of honest concurrent use, a Trade Mark shall not be registered if:
  • There is a likelihood of confusion for the public because the trademark being applied for is identical with an earlier trademark and the goods/ services of the two marks are similar; or
  • The trademark being applied for is similar to an earlier trademark and the goods/ services of the two marks are identical.
  1. Passing off or Copyright Infringement:

A trademark shall not be registered if its use is liable to be prevented by virtue of law of Passing off orLaw of Copyright.

  1. Earlier Trade Mark:

The term “Earlier Trade Mark” for the purpose of ‘Relative Grounds for Refusal of Registration’ by the Indian Trade Mark Office means a Registered mark or a convention application (from a citizen of a country/group of countries with which India has a treaty/ agreement) for which the date of application was earlier than the trademark sought to be registered.

  1. Living or Recently Deceased Person:

If an application for registration is in respect of a trademark which falsely suggests a connection with a living person or a person who died within 20 years prior to the date of application,then the Trade Mark Registrar may, prior to proceeding with the application, require the applicant to furnish consent in writing of such living person; or legal representative of the deceased person. The Registrar may refuse to proceed with the application if such consent is not furnished.