Recent years have witnessed an upsurge in the number of Trademark applications being filed every year; and why not? Constant innovation and cut-throat competition have turned intellectual property registration into a brand-building investment for businesses. Coming up with the perfect name for a business or getting that logo design just right is not sufficient anymore. Protecting the name and the logo from piracy is vital, especially in this era of internet where everything is accessible and available just a click away. Trademark registration for a brand name or logo is extremely important to prevent piracy and infringement. However, registration of a trademark is not a matter of right and there exist certain grounds for refusal that could stop a mark from getting registered.
It is important to know these grounds for refusal so that a mark is saved from potential rejection.
These grounds forbid the registration of a trademark under all circumstances.
1. No Distinctive Character:
If the Trademark is not capable of creating a distinctive mark that can distinguish one good from another, its registration will be refused under this ground. The trademark needs to possess a quality that differentiates goods of the applicant from other goods belonging to someone else.
For example, ‘A’ is the manufacturer of sweets and confectionery. He names his goods as ‘BEST SWEETS’. Registration of this trademark will be rejected as it does not have any other meaning. Best simply means better than all others and does not distinguish A’s goods from any other goods.
2. Descriptive Words:
Trademarks which directly impart information like the kind, quality, quantity, values, intended purpose, geographical origin, time of production of the products and services rendered are liable to be refused as they fall under the category of descriptive marks.
For example ‘A’ manufactures computer software with the brand name ‘HIGH TECH HOME COMPUTING SYSTEM’. Registration of this mark will be refused under this ground as the name directly describes the function of goods. In another example, B manufactures solar panels to generate solar energy. His goods are called ‘SOLAR GOODS’. This case clearly falls under the category of descriptive marks as it describes the way energy is produced, that is, through sun rays; and B’s application is liable to be refused.
3. Words which are Not Inventive:
An invented word is a word which is not common in the English Language but is newly coined so as to give it a distinctive character. It must be a word having no meaning or no obvious meaning until one has been assigned to it.
For example, the word ‘DROPOVIT’ was coined from the terms ‘DROPS OF VITAMIN’ and this was considered an inventive word. Such words are distinctive in nature and can be registered.
However, consider a case where a person ‘P’ decides to sell vegetables under the name ‘VEGEETABLES’. In this case, P has merely changed the spelling of the word vegetables and has not come up with a distinctive and inventive term. Registration of this mark can be refused on account of being uninventive.
4. Geographical Names:
A geographical name or term is commonly used to designate a locality, country or a section of a country and it cannot be used to denote the place of origin of a product/service.
For example, A is the manufacturer of silk products with the trademark ‘EBOLINE’. It was later found out that EBOLI was the name of an Italian town and mere addition of the word ‘NE’ did not make it an inventive word. Refusal of trademark registration under this ground ensures that the trader is not able to cast his monopoly over the name of a place by suggesting that the goods originated from that place, when in fact, they may not have.
5. Publici Juris or Generic Words:
These are words which belong to the public at large, that is, those words which are common or inclusive in nature. A trademark has to be distinctive and its distinctiveness will be lost if the same word is in use by the public at large. For example, if ‘A’ sells furniture with the trademark ‘WOOD GOODS’, the term is generic and many other traders are likely to have also used the same term. If B has a trademark called ‘BIKANER WOODS’ and C has a trademark called ‘WOODGREAT’, A’s trademark is not capable of being distinguished from these existing marks and his application is likely to be rejected.
6. Words which Hurt Religious Sentiments of the Citizens of India:
Consider this situation, ‘A’ starts a business called ‘DURGA BEEF SHOP’. Now the word Durga on its own is not offensive and its use on a pack of incense sticks or vermillion packet will not be prohibited. However, Durga is a sacred deity in the Hindu religion. Also, cows are considered sacred in the Hindu religion and use of the word “DURGA’ in relation to a beef shop will offend the religious sentiments of an entire community. Consequently, its registration will be refused.
7. Obscene or Scandalous Manner:
For example, ‘A’ sells DVDs with the trademark ‘SNUFF Movies’. The word ‘SNUFF’ is a commonly used slang which means murder or arousal. The use of this word in a Trademark will be considered to be promoting murder and pornography and its registration will be refused.
8. Prohibition under the Emblems and Names (Prevention of Improper Use) Act:
This Act prohibits improper use of official emblems and names for professional and commercial purposes. For example, the name, emblem or official seal of the United Nations Organization/World Health Organization or the National Flag of India are prohibited from use as a trademark and these words cannot be registered under the trademarks act.
For a list of all such words click here.
When a Trademark is incapable of getting registered by reason of its similarity with existing trademarks, the grounds for refusal are known as Relative Grounds.
1. Identity of Goods with Earlier Trademark or Similarity of Goods:
The two words must be compared and judged to see whether there will be a confusion among the trademarks which would lead to one party being injured while the other gaining illicit benefit. The decisive factor is whether there will be confusion in the minds of the public or not.
For example if ‘A’, an established seller, sells beds with the trademark ‘ BED KINGS’ and B, a new player in the market sells his beds with the trademark ‘ KING BEDS’, there will be a confusion in the minds of the public. This is a relative ground for refusal and B’s application will be rejected because A’s mark with a similar name already exists.
2. Similarity of Goods or Services:
There are three tests to determine whether the goods or services are similar:
a. The Nature and Composition of Goods
In this test, let’s take the example of A who sells soaps made of rose extracts and his soaps are known in the market as ‘ROSESOAPIES’. If B also decides to sell soaps made of rose extracts in the market as ‘ROSIES’, his application will be rejected as the nature and composition of both the goods is similar and B’s application is not distinctive in nature.
b. Respective Use of the Goods:
In this test, let’s take the example of X who sells eucalyptus oil bottles called ‘EVERGREEN’ to cure headaches. Y also decides to do the same and sell his product as ‘GREEN FRESH’ which is nothing but eucalyptus oil for treating migraines. Here, both goods are used for curing headaches and migraines which makes them deceptively similar. This will confuse the public and cause unfair losses to X. Hence, Y’s application is liable to be rejected under this test.
c. Trade Channels for Sale/Distribution of Goods:
Goods can be sold through various channels and when the channels are similar, the application for registration of a trademark may get rejected under relative grounds. For example, if ‘A’ sells clothes online under the trade name ‘VOOKNIC’ and ‘B’ also decides to sell clothes online under the trade name ‘VOONIK’, the trade channels for both goods are the same. This would lead to confusion in the minds of the public and B’s application is likely to get rejected.
3. Identity with or Similarity to Well Known Trademarks:
Well, known trademarks are those trademarks which are famous among a substantial portion of the general public for their goods or services. These marks have acquired reputation and goodwill over the years and the use of such well known trademark in the market is immediately associated with the particular goods in the minds of the public.
For example, ‘APPLE’ is famous for the Iphone, Ipod and other electronic goods. If a trader B decides to sell speakers with the trademark ‘APPLE SPEAKERS’ or even jeans as ‘APPLE JEANS’, his trademark application will be rejected. Apple is a well-known trademark and its use in relation to jeans, speakers or any other goods will cause the general public to believe that the company Apple has produced it.
Brainstorming sessions dedicated to the search for the perfect name or logo should be accompanied with complete knowledge of these grounds for refusal of Trademark registration. The grounds are plenty and have to be considered before applying for Trademark registration. Whether the grounds are absolute or relative, being mindful of them will not only save you time and money but will also save you from disappointment in the future if your trademark application gets rejected.
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