Ways to Overcome Trademark Objection Under Section 9

Published On: Sep 22, 2022Last Updated: Sep 23, 20224.5 min read

Trademark Objections are based on either of these two grounds: a. Absolute grounds and b. Relative Grounds. Trademark objection under section 9 of the Trademarks Act, 1999 (“the Act”) covers the ‘absolute grounds’.  

This blog will focus on the absolute grounds of refusal covered under section 9 of the Act. Learn more about the relative grounds of Trademark refusal here. 

Scope of Trademark Objection Under Section 9

Trademark objection under section 9 covers these ‘absolute grounds’ of refusal: 

a. Marks which are devoid of any distinctive character

This means all marks which are very common and are not capable of having a distinguished identity in the market. Marks are non – distinctive when they consist of only such words that are very common and have a dictionary meaning. These marks usually have no unique brand identity. 

b. Marks that consist of only such words that are descriptive of trade or goods being provided

The best way to explain this trademark objection under section 9 is through the example of Apple Inc. If Apple Inc. sold apples instead of electronic products, they would have gotten this objection while getting their brand registered. This is the most common absolute ground for refusal for trademark registration, covered under section 9 (1)(b) of the trademark act.

c. Trademarks that consist of words and designs that have become customary in the course of trade

An example of this can be that the mark “Xerox” has now become customary and a substitute for the word ‘photocopying’. However, since the Xerox owners have been using the mark for a long time, they have become a well-known mark, they are a registered proprietor of Trademark. 

d. Capable of confusing the public

For example, if someone applies for registration of the mark “Adibas” it is very likely to confuse the market with the well-known trademark “Adidas”. Hence, the mark that is creating such confusion falls under trademark objection under section 9. 

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e. Matter likely to hurt the religious sentiments of anyone

India being a secular country, is home to a lot of people with different religious beliefs. It becomes the duty of young entrepreneurs to take that extra effort to protect religious sentiments. Hence the trademark objection under section 9 also protects religious beliefs. 

In 2015, the word “Ramayan” was refused registration under class 3. The reasoning behind this order was that this term is associated with religious sentiments, and hence, no individual can claim an exclusive right over such a word. 

f. If the mark consists of obscene scandalous matters, or is a restricted name

The Emblems and Names (Prevention of Improper Use) Act, 1950 sets out a list of restricted names . No person can apply for any of these names. Further, any matter that is ‘obscene’ or scandalous in nature are also prone to objection under section 9.

g. Any logo consisting of the shape of the goods or products the business is aiming to sell.

As stated above, these grounds cover the trademark objection under section 9. However, there are certain measures you can take to protect your mark from refusal.

Ways to Overcome Trademark Objection Under Section 9

a. Try to be unique when it comes to your brand! 

This is the most helpful suggestion to avoid the trademark objection under section 9. The whole basis of section 9 objection can be avoided if you use a mark that is unique and true to your business. A unique mark will not only be registered sooner but will also leave a long-lasting impression in the industry. For Example “Nikon” for photography products such as cameras, stood as a unique and distinctive mark. 

b. Claim a Date

Claiming a date of prior use is a big exception to all the absolute grounds of trademark objection under section 9. This is very helpful, especially when you are aware that your mark is not distinctive. Claiming a date of prior use means that you are letting the registry know that you have been using the mark, even before you applied for the same. This claim can help a lot of brands having non-distinctive names with registering their marks.

c. When the mark has acquired a secondary meaning in the industry

McDonald's slogan: I'm lovin' it
Image Source: Google
Book My Show logo
Image Source: Google

Examples will help you understand this easily. Marks like “Book my Show” or “I’m lovin’ it” are not exactly distinctive. However, as soon as we hear these words, we know the two pioneer brands that one is talking about. This is known as “acquiring a secondary meaning”. When the generic words have a such strong impact on the target market, the registry cannot refuse them based on objection under section 9. 

d. Select the most appropriate class for your business

This can be a major factor that will help you in avoiding any objections. When you understand how to select the most appropriate applicable class, you can easily overcome the objection under section 9 of the Act. 

How Can LegalWiz.in Help You?

Even LegalWiz.in had to overcome the trademark objection under section 9. We can understand the hassle caused to business owners due to objections to TM registration. Our team of expert lawyers aim to assist in overcoming trademark objections. We file a reply to the examination report that covers all points to save your mark from refusal!

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Diksha Shastri
About the Author

Diksha Shastri

As a writer, Diksha aims to make complex legal subjects easier to comprehend for all. As a Lawyer, she assists startups with their legal and IPR drafting requirements. To understand and further spread awareness about the startup ecosystem is her motto.