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What cannot be protected under the Trade Marks Act- India

November 10, 2022
trademark notebook

By Diksha Singh and Titiksha Sinha

A trade mark is a logo or a sign that identifies the product/service of one entity and distinguishes it from the products/services of others. As per Section 2(1) (zb) of the Trade Marks Act, (hereinafter referred to as “the Act”), a trade mark is a “mark which is capable of being graphically represented and can distinguish the goods and services of one entity from those of another entity”. Further, a trade mark is not limited to a simple word or an artistic logo, but may include numerals, labels, as well as include shape of goods, their packaging and combination of colors. Trade marks play a very important role in the market as they help customers in identifying products emanating from a particular source, and help in preventing consumer confusion. Additionally, a trade mark forms the basis of the image and reputation of any entity amongst their customer base.

Trade marks are not mandatorily required to be registered under the Trade Marks Act, 1999, however, a registered trade mark is easier to protect, and enforce, against conflicting trade marks. However, before filing for the registration of a trade mark, it is important for any business to understand the dos and don’ts’ of Trade Marks Law, and recognize the basic tenets which can prevent their trade mark from being accorded statutory protection. The Trade Marks Act, 1999 expressly mentions the grounds of refusal, absolute grounds under Section 9, relative grounds under Section 11, and other relevant provisions such as Section 13 and 14. The same have been discussed in detail below-

Absolute grounds for refusal of registration – Section 9 of the Act

Section 9 (1)

  1. Non-distinctive mark- Section 9(1) (a) states that if a mark is not capable of distinguishing the goods and/or services of one person from another, then it is considered non-distinctive and descriptive in nature, and cannot be registered. As discussed above, the rationale behind the trade marks law is to enable distinction between brands and therefore, any mark which is non-distinctive cannot be registered. A trade mark, in order to be granted registration, should be invented, coined, arbitrary and/or suggestive in nature i.e., have no direct relation and/or reference to the goods and/or services applied for. This is to prevent a single party from gaining exclusive rights over a common / descriptive word and restricting bonafide use by other proprietors. For example, the Hon’ble court held that the term ‘Evergreen’ was not descriptive or suggestive of ‘sweets’ and is an arbitrary term in relation to sweets and confectionary[1].

 

  1. Exclusive Description/Characteristics of the goods or services- Section 9 (1) (b) states that any indication which serves in the trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the service or other characteristics of the goods or service, cannot be registered as a trade mark. For example, the name ‘Saffo’ was not registered for cleaning powder and liquid because it was too similar to the Hindi word ‘Saff,’ which means clean, and denoted the nature of the goods.[2]

Another example is the case of Aegon Life Insurance Company Ltd v. Aviva Life Insurance Company India Ltd[3], wherein the Bombay High Court had observed that “Whether words or marks claimed as trade-marks are descriptive or whether they are suggestive or arbitrary and fanciful must be decided with respect to the articles to which they are applied and the mark must be considered as a whole”, and held that the Plaintiff’s mark ‘iTerm’ was descriptive of the goods and services provided by the Plaintiff i.e., insurance term.

In ELGI Ultra Industries Limited v. The Assistant Registrar of Trade Marks[4], it was held that the words ‘ultra’ and ‘perfect’ are highly descriptive and laudatory and cannot be seen as trade marks.  The Hon’ble Court in the landmark and often quoted case of Imperial Tobacco Company of India Ltd v. Registrar of Trademarks[5], held that SIMLA is a well-known hill station of India, therefore, its geographical signification is plain and unequivocal, and the same was rejected registration on these grounds.

  1. Customary marks-Section 9(1) (c) states that any word, acronym or abbreviation which has become publici juris cannot be registered as a trade mark, as it belongs to the public at large[6]. In other words, if a sign or an indication has become ‘common to trade’, and so well accepted, that it is now used to describe the type of the product/service in general. For instance, in the case of Ford v. Foster[7], Lord Justice said “Then the question is, has it become public juris? And there is no doubt, I think, that a word which was originally a trademark, to the exclusive use of which a particular trader, or his successors in trade, may have been entitled, may subsequently become publici juris, as in the case which has been cited of “Harvey’s Sauce. It was admitted that, although that originally had been the name of a sauce made by a particular individual, it had become publici juris, and that all the world were entitled to call the sauce they made ‘Harvey’s Sauce’ if they pleased”. Further, in Haughton Elevator Co v. Seeberger[8], it was held that the mark Escalator has become generic and thus, customary in respect of moving stairs, and cannot be registered.

 

The only scenario, wherein a descriptive/prima facie non-distinctive trade mark may be granted registration, if the proprietor is able to prove secondary meaning, i.e., acquired distinctiveness on account of long usage and promotion, prior to the date of application and/or well-known status of the mark in question. This means that the customers associate a particular trade mark with a certain product or entity on account of extensive use. In Godfrey Philips India v Girnar Food & Beverages[9], the Hon’ble Supreme Court held that a trade mark may be entitled to protection if it has assumed secondary meaning which identifies it with a particular product or as being from a particular source. Further, in the case of Mrs. Ishi Khosla v. Anil Aggarwal and Anr[10], the Hon’ble Court had held that “The plaintiff has been able to show, prima facie, prior use, distinctiveness as well as reputation which the plaintiff’s trademark `Whole Foods’ has acquired.”

Section 9 (2)

1. Deceitful in nature- As per Section 9(2)(a), a trade mark should not deceive the public or cause confusion by reason of something inherent in it or its use i.e., it cannot contain any false or misleading matter notwithstanding the fact that the applicant had acted in good faith [Boots Pure Drug Co.’s Ltd. Trademark[11]], or that there has been no opposition [Diamond T Motor Car Co.’s Application[12]], or that there is consent [Dewhurst’s Appl[13]].

 

2. Hurtful to religious sentiments- According to Section 9(2) (b), if the mark is offensive to religious sentiments of a class or section of the Indian citizens, it will not be granted registration as a trade mark. For example – Use of the trade mark containing the word ‘Ganesh’ (i.e., the name of a God) in respect of ‘Bidis’ was not allowed to be registered[14]. Another thing to remember here is that name of Gods & religious texts cannot be monopolized. A Supreme Court verdict in 2015 in the case of Lal Babu Priyadarshi v. Amrit Pal Singh [15]ruled that names of Gods or Holy Books cannot be trademarked to sell goods and services as such a thing could offend people’s sensibilities. See also: https://ssrana.in/ip-laws/trademarks-in-india/marks-not-registerable-india/. The defense that may be taken in such cases, and which also counters the ‘common to trade’ principle, is of acquired distinctiveness, and that religious symbols as names / trade marks for “religious items” (such as incense sticks) will ordinarily not be offensive to religious sensibilities of the public.

 

3. Scandalous & obscene matter-Section 9(2) (c) states that if any word is to be trademarked, it should not be against the principles of morality. An obscene mark is likely to undermine social values, therefore, in order to be registered, a mark should be acceptable by society and should not contain any matter that might cause distaste to a significant section of the public. In the case of S. Rangarajan v. P Jagjivan Ram[16], the court had held that the basis of obscenity should be from the view point of an ordinary person of common sense and prudence and not that of a “hypersensitive man”. In the case of London Rubber Co. Ltd v. Durex Products[17], the Appellant had opposed the registration of the trade mark “Durex”. The Hon’ble Supreme Court, upholding the decision of Calcutta High court held that registration of trade marks in respect of contraceptive is not considered to be obscene. The registration of the trade mark FCUK owned by the famous fashion retail group, French Connection Limited, was challenged in United Kingdom on the basis that it was contrary to the accepted principles of morality. It is interesting to note that the same is registered in Class 3, 9, 14, 18 etc., in India.
4. Prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950-Section 9(2) (d) states that if the use of a mark is prohibited under the aforementioned act, it shall not be registered as a trade mark. For example, Indian National Flag, Ashok Chakra, name of the United Nations Organization, Emblem of the World Health Organization, name of International Civil Aviation Organization etc., cannot be used as trade marks. In the case of M/S Sable Waghire & Co. & Others v. Union of India[18], the petitioners were carrying on the business of selling bidis under the representation and trade name “Chhatrapati Shivaji Biddii”, and also had the concerned trade marks registered. However, after the issuance of the Emblems and Names Act, the trade marks were considered to be against the law. It is interesting to note that the term UNO (i.e. just the word mark without any label or device) is not registered in India in any of the classes. In fact, one of the Application No. 2510389 for the mark UNO filed by Asian Paints Limited, has been objected by the Learned Registry stating that “UNO is a prohibited mark under the Emblems Act, 1950”. In another interesting case, M/S Jindal Industries Private Limited v. The Registrar of Trade Mark[19], it has been held that the Emblems Act, nowhere forbids the use of the outline of the map of India.Section 9 (3)Shape of the goods- Section 9(3) states that a mark shall not be registered as a trade mark if it consists exclusively of the shape of the product resulting from the nature of the commodities themselves; the shape of goods is required to attain a technological outcome,  or if a shape which adds significant value to the goods. Some countries require that the particular shape must be ‘distinctive by itself’ for consumers. The shape of a product, if new and novel, may either be a design protected under the Designs Act, 2000, or if it has become distinctive then as a trade mark under the Trade Marks Act, but as per the Designs Act, a design does not include a trade mark.The primary purpose of a design is to add aesthetic value to a product, whether by its shape or pattern or any other configuration. On the other hand, the purpose of a trade mark, and even one determined by the shape of a product, is to identify a specific trade source in affiliation with specific goods and/or services, although there may be a general overlap between the two. It is to be noted that the shape of a product which is necessary for the functioning of the product, or is of a functional nature, cannot be registered as a trade mark. In the case of Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd[20], Philips was claiming a shape mark over its shaver with three rotational shavers in an equilateral triangle and tried to prevent the Defendant from manufacturing a shaver with the three shavers in an equilateral triangle. It was held that Philips could not protect its shaver as a shape mark as it was a shape, which was important to get a specialized technical result. Thus, it was held that the Defendant had not encroached upon the trade mark of Philips, since it was not a legitimate trade mark to begin with.In another case of The Coca Cola Company and Ors. Vs. Narsing Rao and Ors[21], the court had held that the KELBY Club Soda was being offered for sale in a bottle, the shape of which was virtually identical to the bottle used by the Coca Cola Company for its KINLEY Club Soda bottle. Further, the familiar curvaceous shape of the Coca-Cola bottle is registered as trade marks in India vide Registration No. 1170153 for KINLEY Club Soda bottle  in Class 32 since January 29, 2003, and  Coca Cola bottle  vide Registration No. 1414264 since January 17, 2006. (See also: https://ssrana.in/articles/importance-and-challenges-of-protecting-a-shape-mark/)
II. Relative grounds for refusal of registration – Section 11 of the Act

While absolute grounds under Section 9 pertain to a trade mark on its own, relative grounds under Section 11 pertain to how a trade mark holds up against other prior trade marks already on the Register.

Section 11(1)

The relative grounds pertain to a trade mark’s identity/similarity with an earlier trade mark and similarity with regard to the goods/services, due to which there is a possibility that the public may get confused/deceived as to origin of the goods and/or services. India is a first-to-use country which means that unregistered trade marks with prior use are protected in India. Whereas in first-to-file countries such as China, the first person to register a mark obtains rights in the same irrespective of the prior use by a different proprietor. The “first-to-use” concept is defined in Section 34 of the Indian Trade Marks Act, 1999 as per which no provision of the Act shall allow a registered trade mark owner to interfere and/or restrain on the rights of a person who has been using a similar trade mark for a period of time prior to the date of first use of the later trade mark or the registration of the later trade mark.

One of the major defenses which is taken up to defend against these provisions is of the ‘Anti-Dissection Rule’, which means that marks are to be compared as a whole. It draws from Section 17 of the Act, as per which if a mark contains several matters, then the proprietor will hold exclusive right over the mark as a whole. In Cadila Health Care Limited v. Cadila Pharma Limited[22], it was said that the true test is whether the totality of the proposed trade mark is such that it is likely to cause confusion or deception or mistake in the minds of persons accustomed to the existing trade marks. For example, in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd.[23], the Respondent was a manufacturer of biscuits, and had filed for the registration of the mark GLUVITA in Class 30 on November 05, 1949. The Appellant had registered the mark GLUCOVITA in Class 30 on August 31, 1942 and argued that the Respondent’s mark should not be registered. The Hon’ble Court observed that the Appellant’s trade mark had acquired a reputation among the public, and therefore, the Respondent’s mark is likely to cause confusion and deception. Therefore, the mark was refused registration.Another argument in favor of registration of a similar trade mark is that no one can claim monopoly over an entire class, as held in the case of Vishnudas Trading as Vishnudas v. The Vazir Sultan Tobacco Ltd[24], which was reiterated in the case M/S. Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd[25]. Here it was held that monopoly under the trade mark only extends to the goods being manufactured by the proprietor in a particular class and not the entire class of goods, and the trade mark which is identical or similar in nature can be registered for different goods which fall within the same class.

 

Sections 11(2) and 11(3)

A subsequent similar/identical mark for unrelated/dissimilar goods/services may also be refused registration, if the earlier trade mark is well-known in India, and the use of the subsequent mark would take unfair advantage of or be detrimental to the character or repute of the earlier trade mark. Further, a trade mark will not be registered if it amounts of passing off of a prior trade mark, or if it is liable to be prevented under copyright law. For example, in the case of Rolex SA v. Alex Jewellery Pvt Ltd & Ors[26] , the Defendants were trading in artificial jewellery under the Plaintiff’s trade name “Rolex”, and had also filed for ROLEX formative trade marks under Application Nos. 806729, 996834 and 706527 in Classes 14 and 26. Therefore, the Plaintiff opposed the said applications, and filed a lawsuit to prevent the Defendant from using their trade name. The Plaintiff’s business dealt with watches and the Court observed that the general public is familiar with the trade name / mark ROLEX, which is a well-known trade mark in India. Thus, if a similar segment of population comes across artificial jewellery with the same trade name / mark, they may assume that the source/origin of those are from the Plaintiff’s company. For the same reasons, the Court granted an injunction against the Defendant’s actions and restrained them from using the identical mark “ROLEX” for dissimilar goods. The trade mark applications of the Defendant were abandoned on ground of non-prosecution.

However, where both the marks are honestly and concurrently being used by the respective trade mark holders or if the proprietor of the earlier mark had consented to the registration of the subsequent mark, then registration may not be refused under Section 12 of the Trade Marks Act, 1999, whereby even similar trade marks may be permitted to be registered for the same / similar goods. Factors such as honest adoption, quantum of concurrent use, degree of confusion likely to ensure, relative inconvenience etc., are taken into account while considering an application under this section.  Another defense that can be taken is of a prior user under Section 34 of the Act, which grants vested rights to the prior user / proprietor of a trade mark.

III. Chemical Element or International Non-Proprietary Name

Section 13 of the Trade Marks Act, 1999 prohibits the registration of trade marks that include a frequently used and accepted name of any single chemical element or chemical compound in relation to a chemical product or preparation. A word that has been declared as an International Non-Proprietary Name (INN) by WHO (World Health Organization) or that is deceptively similar to such a name as informed by the Registrar is not permitted to be registered. This provisions applies to all applications which are made under Class 5. The Indian Trade Marks Registry also maintains a list of the names declared as INNs by WHO, and the same cannot be registered as trade marks.[27] In the case of Cadila Laboratories Limited v. Burroughs Wellcome India Ltd. And Anr[28], ‘CYLCOVIR’ in class 5 was denied registration as it was held that to be confusingly similar to the word ‘ACYCLOVIR’ which is an international non-proprietary name in respect of a particular pharmaceutical substance.

IV. Suggesting a false connection

As per Section 14 of the Trade Marks Act, 1999, trade marks which falsely suggest a connection with any living person can be declined registration by the Registrar unless the consent of such living person is obtained. Similarly, trade marks which falsely suggest a connection with any dead person within twenty years of submitting the application for registration can be declined by the Registrar, unless the consent of legal representatives of such person is obtained. In the case of Adepu Surrender v. Adepu Ramaiah Narayana & Co[29], the trade mark in question was ‘ADEPU’. The IPAB held that “The respondent in this case has improperly secured registration behind the back of both the applicant and the father who was the Karta of HUF until 2005 and the owner of the trade mark. Clearly the provisions of Section 14 of the Act is being violated by the respondent both in letter and spirit. To apply for registration of a mark, an applicant has to invoke Section 18(1) claiming to be the proprietor of the mark. On the date of filing that was not the case with respect to respondent’s application. The registered mark of the respondent is therefore, hit by both sections 14 and 18(1) of the Act. A case of willful and dishonest misappropriation of the trade mark has been made out by the applicant.”

CONCLUSION

Since the competition is rife in every possible aspect around the globe, it is crucial to distinguish the goods or services being offered by different entities. As a result, having a strong trademark is vital to the success of any business, because it will increase brand recognition and customer satisfaction while also providing important legal protection from infringement. For any business, when choosing a trade mark, it is necessary to keep in mind the spectrum of registrability. Invented/fanciful words which have no meaning are considered as the strongest trade marks, followed by arbitrary trade marks, which are common names but have no relation with the goods or services they represent. Whereas, descriptive and generic trade marks are generally not registrable unless proven to have acquired distinctive character. Further, one cannot register a trade mark, if both the mark and products/services thereunder are conflicting with someone else’s prior trade mark. Therefore, it is important to do a thorough market search, and trade mark search, to ensure that the registrability parameters laid down in the Trade Marks Act are met!

Kush Bisht, Junior Associate at S.S. Rana & Co. has assisted in the research of this article.

[1] Evergreen Sweet House v. Ever Green and Ors (2008 (38) PTC 325 (Del.))

[2] Hindustan Level Limited, Bombay v Kilts Products, New Delhi (Decided on January 12, 1982, RTM Delhi)

[3] Commercial Suit (IP) No. 298 Of 2019

[4] MANU/IC/0062/2008

[5] AIR 1968 Cal 582

[6] SBL Limited v Himalayan Drug Company 1997 (17) PCT 540

[7] 7th Chancery Appeals,611

[8] 85 USPQ 80 (1950)

[9] 1997 (2) ARBLR 559 Delhi

[10] 2007 (34) PTC 370 Del

[11] [1937] 54 RPC 327

[12]  [1921] 38 RPC 373

[13] (1896) 13 RPC 288

[14] Manglore Ganesh Beedi Works… v. District Judge, Munsif City and Anr (2005 (3) AWC 2097)

[15] Civil Appeal No. 2138 / 2006

[16] (1989) 2 SCC 574

[17] AIR 1959 CAL 56 (DB)  Also  AIR 1963  SC 1882

[18] 1975 AIR 1172

[19] C.A (COMM.IPD-TM) 50/2021

[20] (2004) ALL ER (D) 301

[21] MANU/DE/0699/2014

[22] 2001 (2) PTC 541 SC

[23] AIR 1960 SC 142

[24] 366 1996 SCALE (5)267

[25] AIR 2018 SC 3516

[26] 2009 (41) PTC 284 (Del)

[27] www.ipindia.gov.in/international-non-proprietary-names-inn.htm

[28] 2005 30 PTC 349 IPAB

[29] M.P. No. 218/2011. TM/CH IN

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