Handling Trademark Objection under Section 9 of the Trademark Act of 1999 | IP Attorney in Delhi NCR | IP Lawyer in Delhi NCR |

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What should be done for a Trademark Objection under Section 9 of the Trademark Act of 1999?
The Section 9 of the Trademark Act of 1999 talks about the absolute ground of refusal.

The Section 9(1) a trademark cannot be registered if;

1. which lack any distinguishing characteristics, i.e., are incapable of distinguishing one person’s goods or services from those of another;
2. which consist exclusively of marks or indications that may be used in commerce to designate the kind, quality, quantity, intended purpose, values, geographical origin, or time of production of goods or rendering of service or other characteristics.
3. which are exclusively made up of marks or signs that have become customary in modern language or in genuine and well-established business practices, shall not be registered: A trade mark shall not be denied registration if it has gained a distinctive character as a result of its use or is a well-known trade mark before the date of application for registration.

The Section 9(2) provides that a trademark cannot be registered if the mark is;

1. of a nature that would deceive/create confusion among the customer
2. hurting someone’s religious sentiments in India
3. is obscene and scandalous in nature
4. if it is a sign which is a national emblem/names/having national importance

The Section 9(3) provides that a trademark should not be registered if the mark mainly consists of:

1. the shape of goods that results from the design of the goods
2. the shape of goods that is needed to achieve a technological result
3. the shape that gives significant value to the goods.
   If a trademark during registration possess these above mentioned elements, then these trademark are not going to be considered for registration and the application would be rejected.
   Usually this is seen in the Examination Stage under section 18 of the Trademark Act of 1999, when the application is sent for registration.

The examination stage consists of two stages
A. Formal Examination Stage: In this the particulars of an application are checked
B. Substantive Examination Stage: In this stage it is seen whether the application is barred by law under section 9 of the Act.

In the case of Laxmikant V. Patel v. Chetanbhat Shah & Anr (Appeal (Civil) 8266-8267 of 2001) this case was dealing with the issue of consumer confusion caused by the defendant use of a mark similar to that of the appellant i.e. Muktijivan Colour lab &Studio. To this the Supreme Court discussed about Section-9(1)(a) and held that a passing-off action will be brought whenever the defendant company’s name, or its intended name, is calculated to deceive and divert business away from the plaintiff, or to cause confusion between the two businesses. Even if the defendant is innocent, an injunction will be granted as soon as there is some business confusion. The reputation of the goods, the likelihood of deception, and the likelihood of damages to the plaintiff are the three components of a passing off suit. If the defendant is responsible for all of the above elements, an injunction can be granted. In order to win the suit, the plaintiff would not have to show substantial damages. Hence the defendant was restrained from using the mark as it was causing consumer confusion hence it cannot carry on business under the name of Muktijivan Colour lab & Studio.

The Calcutta High Court held in Imperial Tobacco Company of India Ltd v. Registrar of Trademarks (AIR 1968 Cal 582, 73 CWN 169), that “the trade mark “Shimla” with the label is composite in nature.” It is a well-known Indian hill station. As a result, its geographical significance is obvious and unmistakable.” This was done in reference with Section-9(1)(b) as the applicant was using the geo-graphical indication as its trademark.

In another case Lal Babu Priyadarshi v. Amrit Pal Singh (2015 (12) SCALE 76) the appellant had applied for registration of the label “Ramayan” with the device of a crown. To this the Court held that “No one may say the name of a holy text as a trademark,” as it is contrary to Section9(2) of the Trademark Act of 1999.

The major take away is that, if one are not in compliance with section 9 of the Trademark Act of 1999, then one’s application is dismissed irrespective of the fact that one’s mark is distinctive and has passed the formal examination stage. One have to file a reply to the Examination Report along with supporting documents within thirty days, if one fail to do so then one’s application would be declared abandoned and one may have to re-apply for registration where it is complying with the provisions of the Act.
Authored By: Adv. Anant Sharma & Swayamsiddha Das