Trademark Refusal in India
To get statutory protection under the Trade Marks Act, 1999 it is mandatory to register a trademark. Once an application for registration for trademark is filed, the next step is examination of the trademark application by the Indian Trademark Registry. The Trademark Registry while examining the mark considers various Relative and Absolute Grounds of Refusal.
Therefore, it becomes imperative to know and understand the various grounds for refusal of trademark application in India, as it would be helpful in preventing or overcoming trademark refusal in India.
Grounds for Trademark Refusal in India
Trademark Application in India can be refused under two grounds:
a) Absolute grounds: Section 9 of the Trademark Act, 1999 lists down the absolute grounds for refusal of trademark application. The absolute grounds for refusal of trademark application in India inter alia includes that the trademark is devoid of any distinctive character, trademark consists of marks which designate the kind, quality, quantity values, geographical origins or time or production of the goods or services or the trademark is such that it causes confusion or deceives public etc.
b) Relative grounds: Section 11 provides relative grounds for refusal of a trademark application in India. The Relative grounds for refusal of trademark application in India inter alia includes that the trademark is similar or deceptively similar to an earlier trademark, similarity to an earlier trademark and the identity or similarity of the goods and services etc.
It is pertinent to mention here that while refusing a trademark application the Registrar is duty bound to record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision, as clearly stated in Section 18(5) of the Trade Marks Act, 1999. The same was also reinstated by the Delhi High Court in an order dated October 16, 2019 in Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr, wherein itwas held that ‘the Registrar of Trade Marks is duty bound to send the copy of the order passed under Section 18(5) of the Trade Marks Act containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant. Rule 36 of the Trade Marks Rules is arbitrary, unreasonable and inconsistent with the mandatory provision of the statute insofar as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance. In that view of the matter, Section 18(5) of the Trade Marks Act shall prevail over Rule 36 of the Trade Marks Rules.’
Overcoming Trademark Refusal in India
An applicant may file a review petition before the Registrar to review its decision within 30 days of such refusal notice. Rule 119 of the Trade Marks Rules 2017 state thats ‘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 Act, 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.
 W.P.(C) 3851/2019 & CM Appls. 17546/2019, 29362/2019
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