Section 9 of the Indian Trade Marks Act, 1999 outlines the absolute grounds for refusal of trademark registration. This section sets out certain conditions that a trademark must satisfy in order to be eligible for registration. If the trademark application fails to meet these conditions, the trademark registrar can raise an objection under Section 9 of the Act.
There are several grounds for objection under Section 9, including:
Deceptiveness or descriptiveness: A trademark cannot be registered if it is purely descriptive of the goods or services for which registration is sought, or if it is likely to deceive or cause confusion among the public.
Geographical origin: A trademark cannot be registered if it contains any matter which falsely suggests a connection with a place, person or quality associated with a particular geographical location.
Common or generic words: A trademark cannot be registered if it consists exclusively of words that are common to the trade or are commonly used to describe the goods or services.
Prohibited symbols: A trademark cannot be registered if it contains any symbol, emblem or representation that is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
Offensive or immoral content: A trademark cannot be registered if it contains any matter which is likely to hurt religious sentiments or is against public order, morality or decency.
When a trademark application is objected to under Section 9, the trademark examiner will issue an objection notice, setting out the grounds for objection and inviting the applicant to respond. The applicant must file a trademark objection response, addressing each ground of objection raised by the examiner and providing evidence and arguments to overcome the objections.
If the trademark objection response is accepted by the examiner, the trademark application will proceed to publication in the trademark journal. If the response is not accepted, the trademark applicant can file an appeal with the Intellectual Property Appellate Board (IPAB).
If you have received a trademark objection notice under Section 9 of the Indian Trade Marks Act, 1999, it is important to respond to the objection in a timely and appropriate manner. Here are some steps to help you prepare a draft response to a trademark objection in Section 9:
Understand the grounds for objection: Carefully read the objection notice to understand the grounds on which your trademark application has been objected to. This will help you to address each ground of objection in your response.
Gather evidence: Collect all relevant evidence to support your trademark application. This may include market research, consumer surveys, trade association reports, or other evidence to demonstrate that your trademark is distinctive and capable of distinguishing your goods or services from those of others in the marketplace.
Analyze the objection: Analyze each ground of objection and identify the specific issues that need to be addressed in your response. This may include addressing the descriptiveness or deceptiveness of your trademark, or explaining why your trademark is not similar to any other registered trademarks.
Provide arguments and evidence: Use the evidence you have collected to support your arguments and demonstrate why your trademark is eligible for registration. Be sure to address each ground of objection raised in the notice.
Be clear and concise: Your response should be clear and concise, and should address each ground of objection in a logical and organized manner. Use simple and easy-to-understand language to avoid confusion.
Follow the guidelines: Make sure that your response follows the guidelines set out by the trademark office, including the formatting and filing requirements for the response.
Seek professional assistance: If you are not familiar with the trademark objection response process or require legal advice, it is recommended that you seek assistance from a trademark attorney or agent.
Section 9 of the Indian Trade Marks Act, 1999 deals with absolute grounds for refusal of trademark registration. This section provides that a trademark application can be refused on the basis of certain absolute grounds such as lack of distinctiveness, descriptive nature, generic or common use, etc. Some of the important cases related to Section 9 of the Trade Marks Act in India are:
Eicher Goodearth Ltd. v. Registrar of Trade Marks (2000): In this case, the Supreme Court held that the mark “Royal Enfield” for motorcycles was not descriptive or generic in nature, and had acquired a secondary meaning as a result of long and continuous use. Hence, the mark was considered to be distinctive and eligible for registration.
Yahoo! Inc. v. Akash Arora and Another (1999): In this case, the Delhi High Court held that the mark “Yahoo!” used by the plaintiff for online services was inherently distinctive and not descriptive or generic in nature. The court held that the mark had acquired a secondary meaning as a result of long and continuous use, and hence, was eligible for registration.
J.R. Kapoor v. Micronix India (1994): In this case, the Supreme Court held that the mark “Micronix” used by the defendant for electronic goods was similar to the plaintiff’s registered trademark “Micromax”. The court held that the two marks were phonetically similar and likely to cause confusion among the public, and hence, the defendant was restrained from using the mark.
Bajaj Electricals Ltd. v. Laxmi Cable Vision (2015): In this case, the Bombay High Court held that the mark “Bajaj” used by the plaintiff for electrical goods was well-known and had acquired a reputation in India. The court held that the defendant’s mark “Bajaj Electronics” for electrical goods was likely to cause confusion and deception among the public, as it was phonetically similar to the plaintiff’s mark. Hence, the defendant was restrained from using the mark.
These cases demonstrate the importance of ensuring that the proposed trademark is distinctive and not descriptive or generic in nature. It is also important to conduct a thorough trademark search to ensure that the proposed trademark is not similar or identical to any existing registered trademarks or pending applications. If a trademark application is objected to under Section 9, it is important to respond to the objection in a timely and appropriate manner, and provide evidence to demonstrate why the proposed trademark is distinctive and eligible for registration.
In conclusion, responding to a trademark objection in Section 9 requires careful analysis, evidence gathering, and clear and concise communication. By following these steps, you can prepare a strong draft response that addresses each ground of objection and demonstrates why your trademark is eligible for registration.
In conclusion, a trademark objection under Section 9 of the Indian Trade Marks Act, 1999 means that the trademark application has failed to meet certain conditions for registration, as set out in the Act. If a trademark application is objected to, the applicant must file a trademark objection response to address the objections raised by the examiner and provide evidence and arguments to overcome the objections.