Section 9 of the Trade Marks Act, 1999, outlines the absolute grounds for refusal of registration of a trademark. These grounds apply regardless of any existing or prior trademarks and focus on the inherent characteristics of the mark itself. If a mark fails to meet the requirements listed under Section 9, it will not be eligible for registration under Indian law. Here's a detailed breakdown of each provision:

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Section 9(1): Absolute Grounds for Refusal (General Principles)

(a) Lacking in Distinctive Character

• Meaning: A trademark must be able to distinguish the goods or services of one person from those of another. A mark lacking in distinctive character cannot be registered.

• Distinctiveness refers to the ability of a mark to identify the source or origin of goods or services, making it distinguishable from others in the market.

• Non-distinctive marks are those that cannot be different from other marks and fail to indicate the specific origin of goods/services.

• Examples: Generic words (e.g., "Book" for a bookshop); Ordinary or common shapes of shapes (e.g., simply a circle for any type of product);

(b) Descriptive or Indicative of Characteristics

Meaning: Marks that consist only of words, signs, or indications that describe or refer to the characteristics of goods or services, such as kind, quality, quantity, purpose, place of origin, or time of production, are not registrable.

These marks are descriptive of the goods or services they represent and do not have the necessary distinctiveness to distinguish them in the marketplace.

Examples:

• "Fresh" for food products

• "Speedy Delivery" for courier services

• "Genuine Taste" for a food product

• Geographic terms like "Kashmir" for shawls or "Paris" for perfumes

(c)  Marks that Have Become Customary in the Trade

• Meaning: Marks or indications so common in the trade and industry as to be used generically to describe a particular product or service. These marks are not inherently distinctive because they have become commonly used in the ordinary course of commercial trade.

• Examples: "Ice Cream" as a mark for ice cream vendors (generic term), "Bank" for a financial institution (too common)

Also, See What are the Relative grounds for refusal of Trademark Registration under Section 11 of the Trade Marks Act, 1999

Section 9(2): Marks Likely to Deceive, Offend, or Contradict Public Policy

This subsection sets out absolute grounds for refusal based on public order, morality, and deceptiveness.

(a) Marks that Deceive or Cause Confusion

• Meaning: A mark will not be registered if it is likely to deceive the public or cause confusion with existing marks. This is often concerned with consumer protection and preventing confusion in the marketplace regarding the origin of goods or services.

• Examples: A mark that resembles an already existing mark of a famous brand (e.g., a new brand using a similar logo to that of Coca-Cola)A mark leading consumers to believe that goods/services associate a different brand

• Case Study: Revlon Inc. v. Cipla Ltd., where the mark "Revlon" was protected by reason of its distinctiveness and the likelihood that identical or similar marks could also cause confusion.

(b) Marks Likely to Hurt Religious Susceptibilities

• Meaning: Marks that might offend religious sentiments or may be offensive to any specific class or group of people based on religion, caste, or ethnicity will not be registered.

• Examples: Marks that use religious symbols in a manner considered derogatory (for instance, using sacred images or symbols like a Hindu God or the Islamic crescent in an inappropriate or commercial context).

• Example: The mark "OM" has been denied registration if it is considered a religious sacred symbol. (OM Logistics Ltd. v. Mahendra Pandey, 2022)

Also, Get to Know What is Trademark Infringement

(c) Scandalous or Obscene Matter

• Definition: A mark that consists or comprises obscene, scandalous, or vulgar material will be rejected. Such marks that may offend public morals or decency are also denied.

• Examples: Marks which have offending words or pictures with sexually explicit or offensive images.

(d) Marks Barred Under the Emblems and Names (Prevention of Improper Use) Act, 1950

• Explanation: The registration will be refused if a mark contravenes sections under the Emblems and Names (Prevention of Improper Use) Act, 1950 as prohibited emblems or names may not be used.

• Examples: Use of the National Flag of India, official seals or any other emblems which are under the control of the government.

• Case Example: Emblems and Names (Prevention of Improper Use) Act, 1950 prohibits the use of the Indian National Flag or National Emblems as a commercial brand.

Check Major Types of Trademarks with Examples

Section 9(3): Marks consisting of shape-based features

This subsection deals with the shape of the goods and covers certain kinds of marks that are denied registration due to their intrinsic characteristics concerning shape.

(a) The Shape of Goods Due to the Nature of the Goods

• Meaning: A mark that comprises exclusively the shape of the goods due to the nature of the goods themselves is not registrable.

• Examples: A bottle shape that is merely functional and not distinctive of the mark (such as a bottle for soft drinks).The shape of the goods cannot be merely dictated by the inherent nature of the product.

(b) The Shape Necessary to Achieve a Technical Result

• Meaning: Marks that have shapes required to achieve a technical result, that is the shape is determined by the functional or technical purpose of goods, cannot be registered.

• Examples: A gear wheel design for machinery parts Tools wherein the shape shall follow specific ergonomic or functional design requirements.

(c) The Shape Giving Substantial Value to the Goods

• Meaning: Where the shape of the goods substantially contributes to the commercial value of the goods (i.e., the shape is not only aesthetic but substantially adds value to the product), then it cannot be registered.

• Examples: a designer handbag where the shape forms part of the product's value.

Designer furniture where the shape is a key feature that forms part of the product's market value.

In Short,

Section 9 provides absolute grounds for refusal based on the intrinsic characteristics of a mark, such as lack of distinctiveness, descriptiveness, deceptive elements, and offensive or scandalous content. It protects both consumers and competitors by ensuring that marks that fail to fulfill the basic principles of trademark law—such as the ability to distinguish goods/services or that conflict with public morals—cannot be registered. This framework balances commercial interest with the broader public interest.

FAQs on Section 9 of Trademark Act 1999

Q1. What is meant by "devoid of any distinctive character"?

A mark that cannot distinguish between goods or services of a different person is deemed to be devoid of distinctiveness and cannot be registered.

Q2. Can a descriptive mark be registered?

Yes, it can if it has acquired distinctiveness by reason of the use in the marketplace that makes it distinctive of a particular good or service.

Q3. What signs are likely to cause confusion or be misleading?

Marks that are similar to existing well-known brands or mislead consumers about the origin or quality of goods/services are refused.

Q4. Can marks with religious symbols or offensive content be registered?

No, marks that offend religious sentiments or contain scandalous or obscene matter will be refused registration.

Q5. Can the shape of goods be a registered trademark?

Yes, if shape is distinctive and not purely functional, technical or contributing to the value of the product.