Sections 9 and 11 of Trademark Act, 1999 provides the grounds on which a trademark application may be refused registration. These sections serve distinct purposes i.e. one focuses on inherent flaws in the mark itself, while the other addresses conflicts with existing rights. Exploring the difference between Section 9 and 11 of Trademark Act is essential for legal practitioners, businesses and IP professionals to navigate the registration process effectively. This article delves into these sections, highlighting their provisions, implications, and major differences between the two.
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Section 9 of TradeMark Act: Absolute Grounds for Refusal
Section 9 of the Trademark Act, 1999, specifies absolute grounds for refusal, meaning these are inherent defects in the mark that render it unregistrable regardless of other trademarks. These grounds protect public interest by ensuring only distinctive and non-misleading marks are registered.
Lack of Distinctiveness
Under Section 9(1)(a), marks devoid of distinctive character those incapable of distinguishing one person's goods or services from another's are refused. For example, generic terms like "soap" for cleaning products fail this test because they describe the product rather than identify its source.
Section 9(1)(b) prohibits marks consisting exclusively of indications that designate kind, quality, quantity, purpose, value, geographical origin or other characteristics of goods/services. Examples include "best quality" or "Indian cotton," as these are descriptive and not unique.
Section 9(1)(c) bars marks that have become customary in current language or bona fide trade practices, such as "xerox" for photocopying, which has lost its distinctiveness through generic use.
A proviso allows registration if the mark has acquired distinctiveness through prior use or is a well-known trademark before the application date.
Deceptive or Offensive Marks
Section 9(2) addresses marks that could mislead or offend. Subsection (a) refuses marks likely to deceive or confuse the public, such as a mark implying false attributes (e.g., "organic" for non-organic products).
Subsection (b) prohibits marks hurting religious susceptibilities, like using sacred symbols inappropriately. In Amritpal Singh v. Lal Babu Priyadarshi, the mark "RAMAYAN" for incense was refused as it could offend Hindu sentiments.
Subsection (c) bars scandalous or obscene matter, while (d) covers marks prohibited under the Emblems and Names Act, 1950, such as national symbols or names like "Gandhi."
Shape-Based Refusals
Section 9(3) deals with shape marks i.e. those resulting from the goods' nature (e.g., a spherical shape for balls), necessary for technical results (e.g., Lego brick shapes) or adding substantial value (e.g., ornamental designs). These ensure functional aspects remain in the public domain.
Absolute grounds under Section 9 are non-negotiable in most cases, emphasizing the mark's intrinsic suitability. This contrasts sharply with the relational focus in the difference between Section 9 and 11 of Trademark Act.
Know How to Name a Trademark in India.
Section 11 of TradeMark Act: Relative Grounds for Refusal
Unlike Section 9, Section 11 Trademark Act provides relative grounds, where refusal depends on the mark's similarity to earlier trademarks or rights. These protect existing proprietors from dilution or confusion.
Likelihood of Confusion
Section 11(1) refuses registration if the mark's identity or similarity to an earlier trademark, combined with similar goods/services, creates a likelihood of public confusion or association. For example, a new "Coke" mark for beverages would conflict with Coca-Cola's existing mark.
Well-Known Trademarks
Section 11(2) protects well-known trademarks even for dissimilar goods/services if the new mark takes unfair advantage or harms the earlier trademark's distinctiveness. Factors like public recognition, usage duration, and enforcement history determine well-known status (Subsections 6-10). In Honda Motors Co. Ltd v. Charanjit Singh, "HONDA" for pressure cookers was opposed because of the automotive giant's well-known status.
Other Legal Protections
Section 11(3) bars marks liable to prevention under passing off (protecting unregistered marks) or copyright law. This ensures broader IP harmony.
Exceptions include consent from the earlier proprietor (Section 11(4)) or honest concurrent use. Refusals under Subsections (2) and (3) require opposition from the earlier owner (Section 11(5)). Good faith registrations are safeguarded (Section 11(11)).
Relative grounds highlight conflicts, which reflects a major difference between Section 9 and 11 of Trademark Act: one is self-contained, the other comparative.
Learn How to Check Trademark Availability.
Differences Between Section 9 and 11
The major difference between Section 9 and 11 of Trademark Act revolves around the basis of evaluation. Section 9 assesses the mark in isolation, focusing on public policy and inherent qualities, while Section 11 compares it to prior rights, prioritizing private interests. The Table given below shows the major differences between Section 9 and 11 of Trademark Act:
Aspect | Section 9 (Absolute Grounds) | Section 11 (Relative Grounds) |
Basis of Refusal | Inherent defects in the mark itself (e.g., lack of distinctiveness, deceptiveness). | Conflicts with prior rights (e.g., earlier marks, well-known marks, passing-off, copyright). |
Reference Point | No comparison with other marks; absolute and self-contained. | Comparative; requires examination against existing marks or rights. |
Who Raises Objection | Registrar of Trademarks can refuse suo motu during examination. | Primarily through opposition by interested parties (e.g., earlier mark owners); Registrar raises only in limited cases (e.g., well-known marks). |
Public Interest vs. Private Rights | Protects public interest (e.g., preventing monopoly on descriptive terms). | Protects private rights of prior owners (e.g., against confusion or dilution). |
Overcoming Objections | Evidence of acquired distinctiveness or use (proviso in (1)); no consent mechanism. | Possible with consent from earlier right holder (sub-section (4)); good faith defense (11). |
Scope | Applies to all marks, including shapes; focuses on public policy, morality, functionality. | Broader, includes well-known marks across classes; involves bad faith and international aspects. |
Examples | Refusal of "Best Quality" for products (descriptive under 9(1)(b)). | Refusal of "Puma Shoes" if similar to existing "Puma" mark for footwear (confusion under 11(1)). |
Procedural Stage | Examination stage; applicant responds to objection report. | Opposition stage post-advertisement; can lead to hearings. |
Exceptions/Provisos | Proviso for acquired distinctiveness; explanation excluding nature of goods as ground. | Multiple: Consent, good faith, opposition requirement; detailed well-known mark criteria. |
An application might face objections under both sections, requiring a comprehensive response. The difference between Section 9 and 11 of Trademark Act often determines strategy i.e. absolute objections demand evidence of acquired distinctiveness, while relative ones involve negotiations or oppositions.
Summary
Sections 9 and 11 of Trademark Act ensure a balanced system where only worthy marks gain protection. The difference between Section 9 and 11 of Trademark Act is fundamental by stating that absolute grounds prevent inherently flawed marks from cluttering the register, while relative grounds maintain order among existing rights. Understanding this distinction is important in advising clients on robust applications, responses to objections and oppositions. By anticipating these grounds, applicants can enhance their chances of success. Whether drafting replies or litigating, recognizing the difference between Section 9 and 11 of Trademark Act empowers effective IP management in India's evolving legal landscape.
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Difference Between Section 9 and 11 of Trademark Act: FAQs
Q1. What is Section 9 of the Trademarks Act?
Section 9 lists absolute grounds for refusing a trademark, like if it’s not distinctive or against public policy.
Q2. What is Section 11 of the Trademarks Act?
Section 11 lists relative grounds for refusing a trademark, like if it conflicts with an earlier registered mark.
Q3. What is the difference between relative grounds and absolute grounds?
Absolute grounds (Section 9) focus on the trademark’s inherent issues, while relative grounds (Section 11) involve conflicts with existing trademarks.
Q4. What is the difference between Section 9 and 11 of the Trademark Act?
Section 9 deals with inherent flaws in a trademark, while Section 11 addresses conflicts with prior registered or well-known marks.
