Section 9 and Section 11 of Trademark Act, 1999 guide whether a trademark can be registered or not. Section 9 of Trademark Act looks at absolute grounds, which are problems with the mark itself that make it unsuitable for registration. Section 11 focuses on relative grounds, which involve conflicts with existing trademarks. Knowing these sections is crucial for lawyers, businesses, and intellectual property experts. If you don’t follow these rules, your trademark could be rejected, opposed, or canceled. This article explains Section 9 and 11 of Trademark Act with examples and important landmark judgements and major differences between the two.
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Section 9: Absolute Grounds for Refusal of Registration
Section 9 of Trademark Act provides reasons for when a trademark cannot be registered because of its own flaws. These are called absolute grounds. They do not depend on other marks but focus on whether the mark can work as a trademark. Section 9 has three parts, each covering different problems.
Subsection 9(1): Lack of Distinctiveness
Section 9(1) refuses marks that aren’t distinctive. There are three specific rules:
Clause (a): Marks with no distinctive character are not allowed. They can’t show whose goods or services they are. For example, “Apple” for computers is distinctive, but “Computer” for computers is not.
Clause (b): Marks that only describe the kind, quality, quantity, purpose, value, origin, or other features of goods or services are banned. Words like “Best” or “Delhi Made” fit here.
Clause (c): Marks that are common in everyday language or trade practices are not allowed. For example, “Super” for quality products is too common.
A special rule, called a proviso, allows registration if the mark becomes distinctive through use or is well-known before the application date. This idea of “acquired distinctiveness” is important. Some generic terms gain a unique meaning over time.
Subsection 9(2): Deceptive or Offensive Marks
Section 9(2) refuses marks that could mislead or offend people:
Clause (a): Marks that might deceive or confuse the public, like false claims about a product’s origin, are not allowed.
Clause (b): Marks that hurt religious feelings, like using sacred symbols for business, are banned.
Clause (c): Marks that are scandalous or obscene are not allowed.
Clause (d): Marks banned under the Emblems and Names Act, 1950, like national emblems, are refused.
For example, a mark suggesting royal approval without permission would be rejected.
Subsection 9(3): Shape Marks
Section 9(3) focuses on shape marks. It refuses shapes that:
Come from the nature of the goods, like a banana shape for bananas.
Are needed for technical purposes, like a functional gear shape.
Add major value to the goods, like a fancy bottle shape.
The nature of goods or services isn’t a reason for refusal. The focus is on functionality, not descriptiveness. Section 9 ensures trademarks identify the source of goods without misleading people.
Read about What is a Trade Secret?
Section 11: Relative Grounds for Refusal of Registration
Section 11 of Trademark Act looks at conflicts with existing trademarks or rights, called relative grounds. Unlike absolute grounds, these depend on earlier marks or rights. Refusal usually happens only if someone opposes the application, except in obvious cases.
Subsection 11(1): Likelihood of Confusion
A mark cannot be registered if it’s identical or similar to an earlier mark and covers similar goods or services, causing public confusion. For example, “Adibas” for shoes might confuse people with “Adidas.”
Subsection 11(2): Well-Known Marks and Dilution
Even for different goods, a trademark is refused if it is identical or similar to a well-known earlier mark and its use would unfairly benefit or harm the original mark’s reputation or distinctiveness. This protects famous marks like “Coca-Cola” from being weakened.
Subsection 11(3): Other Legal Protections
A mark is refused if its use is blocked by laws like passing off or copyright. For example, unregistered users with prior rights can oppose a new mark based on common law.
Subsections 11(4) to 11(11): Exceptions, Definitions, and Considerations
Section 11(4) to Section 11(11) Provides exception, definition of earlier trade mar and considerations:
11(4): If the prior mark’s owner agrees, the new mark can be registered.
Explanation: Defines “earlier trade mark” broadly.
11(5): Refusal usually needs opposition, except in clear cases.
11(6)-(9): Lists factors for well-known marks, like public knowledge, use duration, promotion, and enforcement.
11(10): The Registrar protects well-known marks and considers bad faith.
11(11): Protects registrations made in good faith.
Also, Get to Know About Infringement of Geographical Indication.
Difference Between Section 9 and Section 11 of Trademark Act
To highlight the difference between Section 9 and 11 of Trademark Act, the following table compares major aspects of section 9 and 11 of the trademark act and underscores how section 9 and 11 of the trademark act complement each other in the registration process:
Aspect | Section 9 (Absolute Grounds) | Section 11 (Relative Grounds) |
Basis of Refusal | Inherent defects in the mark | Conflict with prior marks/rights |
Dependency on Others | Independent; no need for existing marks | Dependent on earlier trademarks |
Examples | Generic terms, deceptive marks, functional shapes | Similar marks causing confusion, dilution of well-known marks |
Overridable? | Yes, via acquired distinctiveness proviso | Yes, with consent or no opposition |
Focus | Public policy and distinctiveness | Protection of existing owners and consumer confusion |
Opposition Required | No, Registrar can refuse outright | Generally yes, except clear cases |
Well-Known Marks Role | Limited to proviso in 9(1) | Central, especially in 11(2) and (6)-(9) |
Landmark Judgments on Section 9 of TradeMark Act, 1999
Section 9 of the Trade Marks Act, 1999, outlines absolute grounds for refusal of trademark registration, focusing on marks that lack distinctiveness, are descriptive or are contrary to public policy.
1. Marico Limited v. Agro Tech Foods Limited (2010)
Facts: Marico Limited wanted to stop Agro Tech Foods from using “LOW ABSORB TECHNOLOGY” with their “Sundrop” trademark for edible oils. Marico claimed their unregistered mark “LOSORB” was infringed. Agro Tech argued that “LOW ABSORB” described the product’s low oil absorption and was generic.
Issues: Was “LOW ABSORB” distinctive, or was it descriptive and unregistrable under Section 9(1)(b)? Could it cause passing off?
Judgment: The Delhi High Court ruled that “LOW ABSORB” was a common descriptive term for the product’s feature. It was not distinctive and could not be protected under Section 9 of Trademark Act. The court found no confusion because Agro Tech used “Sundrop” prominently. It said that generic terms should stay available for everyone in the trade.
2. Superon Schweiss Technik India v. Modi Hi-Tech India Ltd. (2018)
Facts: The plaintiff claimed rights to SUPERON and VAC-PAC for welding electrodes. They said the defendant’s use of “VAC-PAC” was dishonest. The defendant argued “VAC-PAC” was short for “vacuum packaging,” a common term in the welding industry.
Issues: Was “VAC-PAC” a distinctive trademark, or was it descriptive and common under Section 9(1)(b) and (c)? Could exclusive rights be claimed?
Judgment: The Delhi High Court said “VAC-PAC,” as a short form of “vacuum packaging,” was descriptive and common in the industry. It couldn’t be protected under Section 9. The court refused an injunction, saying descriptive terms needed for trade use can’t be monopolized.
Landmark Judgments on Section 11 of TradeMark Act, 1999
Section 11 of Trade Marks Act, 1999 addresses relative grounds for refusal, preventing registration if a trademark is identical or similar to an earlier mark which likely causes confusion.
1. Toyota Jidosha Kabushiki Kaisha vs Prius Auto Industries Ltd. (2017)
Facts: Toyota used trademarks like Toyota, Innova, and Prius globally since 1997 and launched the Prius car in India in 2009. The defendants used and registered “Prius” for auto parts in India, claiming first use there. Toyota sued for infringement, but the trial court’s injunction was reversed by the High Court.
Issues: Did Toyota have enough goodwill in India before the defendants’ use to claim protection under Section 11(1) and (2)? Did global use matter without local reputation?
Judgment: The Supreme Court agreed with the High Court. Toyota didn’t prove strong goodwill in India before the defendants’ use. Limited media exposure wasn’t enough for trans-border reputation under Section 11. The court said global use doesn’t override local first-use without evidence of Indian market presence, so Toyota’s suit was dismissed.
2. M/S. Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. (2018)
Facts: The respondent used NANDINI for milk products since 1985, registered under Classes 29 and 30. The appellant used NANDHINI for restaurants since 1989 and he wanted to register it for foodstuffs. The respondent opposed and the IPAB and High Court canceled the registration, claiming similarity under Section 11.
Issues: Was “NANDHINI” too similar to “NANDINI” for different goods, causing confusion under Section 11(1)? Did visual or phonetic similarity alone justify refusal?
Judgment: The Supreme Court allowed “NANDHINI” to be registered. Despite similar sounds, the marks looked different, and the goods (restaurants vs. milk) were unrelated, so there was no confusion under Section 11. The court said the mark couldn’t be used for milk products and stressed that similarity must consider goods and visual differences.
Summary
Section 9 and Section 11 of the Trade Marks Act, 1999, are key to keeping India’s trademark system fair. Section 9 stops marks that aren’t distinctive or go against public interest. Section 11 prevents conflicts with existing marks to avoid confusion. These rules ensure trademarks work properly in business without harming consumers or prior owners. For lawyers and businesses, understanding these sections helps avoid problems during registration and enforcement. As India’s innovation grows, shown by its Global Innovation Index ranking, these sections will keep evolving through court cases and law changes. Knowing Section 9 and Section 11 helps protect intellectual property in a competitive market.
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Section 9 and 11 of Trademark Act: FAQs
Q1. What is Section 9 and Section 11 of the Trademark Act?
Section 9 lists absolute grounds (like lack of distinctiveness) for refusing trademark registration, while Section 11 covers relative grounds (like conflicts with earlier marks) in the Trade Marks Act, 1999.
Q2. What is Section 9 of the Trademark Act case law?
Marico Ltd. v. Agro Tech Foods Ltd. (2010) held that descriptive terms like "LOW ABSORB" are unregistrable under Section 9 as they lack distinctiveness.
Q3. What is the rule 11 for trademarks?
There is no "Rule 11" in the Trade Marks Act, 1999; you may mean Section 11, which prevents registration of marks likely to cause confusion with existing trademarks.
Q3. When examining for registrability, U/S 9 or 11 marks ought to be viewed as a whole Delhi High Court?
The Delhi High Court in Nandhini Deluxe v. Karnataka Co-Operative (2018) ruled that marks under Sections 9 and 11 should be assessed holistically, considering all elements like goods and visual differences.
Q4. What is Section 11 of the Trade Mark Act 1994?
Section 11 of the Trade Marks Act, 1994 (UK) limits trademark rights, allowing honest use of names or descriptive terms; India’s equivalent is Section 11 of the 1999 Act, focusing on conflicts with prior marks.
