Trademark registration is important for a brand in establishing and protecting an identity in the market. By being able to register a mark, businesses are guaranteed exclusive ownership of their names, logos, and slogans, which customers learn to trust and acknowledge. However, not all types of trademarks are eligible for registration. There are some grounds upon which a trademark application may be refused, and understanding them will allow applicants to avoid common pitfalls and rejections.
This article will discuss the various absolute and relative grounds for refusal of trademark registration. Understanding such grounds will help applicants undergo the trademark registration process more smoothly and get better chances of approval.
Absolute Grounds for Refusal
The absolute grounds for refusal concern the inherent characteristics of the mark itself, irrespective of the way the mark is used in the market. These grounds ensure that trademarks serve their primary purpose: to distinguish one business’s goods or services from those of others. Now, let’s take a closer look at the key provisions under absolute grounds for refusal.
Section 9(1) of the Trade Marks Act, 1999
Section 9(1) of the Trademarks Act gives grounds for refusal of registering trademarks that are devoid of distinctive character or signs or indications serving in commerce to designate the kind, quality, or intended purpose of the goods or services. In other words, in case a trademark is not distinctive and merely descriptive of goods or services offered, then that would not qualify for registration under the Act.
For instance, a trademark like “Fresh Juice” for a juice brand would be rejected because it merely describes the product rather than giving it a distinctive identity. Also, a mark that says “Quality Shoes” for a shoe store wouldn’t meet the distinctiveness requirements since it is directly related to the nature of the product being sold.
Section 9(2) of the Trade Marks Act, 1999
Section 9(2) deals with those trademarks that have become customary in the language or established practices of trade. If a mark has been used to the extent that it is customarily used to describe a good or service, then the mark is not registrable. The rationale behind this is that such a trademark, when registered, would unduly restrict competition and that third parties could not use common terms.
For instance, a word like “computer” describing any computing device would be rejected as it has become generic in common parlance and trade.
Section 9(3) of the Trade Marks Act, 1999
Section 9(3) targets trademarks likely to deceive the public or confuse them as to the nature, quality, or geographical origin of the goods/services. If a trademark deceives the public about the origin or quality of the product, then it is a rejected registration.
This may be regarded as a mark like “Swiss Chocolate” but used by a brand which does not manufacture its products in Switzerland. The consumer, in this case, could be misled to believe they are buying an authentic Swiss product when it is really not.
Relative Grounds for Refusal
Relative grounds for refusal arise from the relationship between the proposed trademark and existing trademarks. These grounds are taken into consideration during the examination process to prevent conflicts and protect existing brand identities. Let’s look into the key sections related to relative grounds for refusal.
Section 11(1)
Section 11(1) rejects the registration of any trademark that is identical to an earlier trademark in respect of identical goods or services in order to avoid consumer confusion. It is in this regard that a possibility of confusion in the marketplace may be taken into account. Two trademarks cannot be identical concerning the same goods or services as the customers might get confused between them and mistakenly think they are buying from the same source.
For example, if “Dairy Delight” is registered for a dairy product, an application for “Dairy Delight” in the same class would probably be refused because of the possibility of consumer confusion.
Section 11(2)
Section 11(2) deals with trademarks that are similar to an earlier mark and goods or services in the same class. It is not necessary that the marks be identical; a high degree of similarity may result in a likelihood of confusion on the part of the average consumer.
For instance, if “Sweet Treats” is registered for a bakery, an application made for “Sweet Eats” within the same business could be denied because it would likely create confusion. Consumers may recognize both brands as related due to the similarity in words.
Section 11(3)
Section 11(3) protects well-known trademarks against dilution by new applications. A new mark that is not identical or similar to an existing well-known mark may be refused if it takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the well-known mark.
A typical example would be the attempt by a new brand to register a mark such as “Coca-Cola Lite” for beverages. The mark, though not identical, might be refused because it would take unfair advantage of the reputation of the well-known Coca-Cola brand
Special Considerations for Certain Types of Trademarks
A few types of trademarks require special consideration in the process of registration. These are some non-traditional types of trademarks which may have more hurdles to go through.
Trademarks Consisting of Colors or Shapes
Trademarks comprising only color or shape may be difficult to register. These types of marks must acquire distinctiveness through long use in the marketplace. For instance, a brand could use a specific shade of blue across its products and be able to show that consumers associate that color with its brand. Such a brand may succeed in registering that color. Conversely, an application to register a color commonly used in a industry would likely be refused.
Sound and Motion Trademarks
For non-traditional trademarks, such as sounds or motion marks, to be registered, they must be specifically identifiable with the brand. In the case of a sound mark, such as a jingle, for example, an applicant would have to show that consumers identify the sound with the brand. Similarly, motion marks must clearly and unmistakably convey a source-identifying message. The lion’s roar for a film studio is a good example of a sound mark that has become synonymous with that brand.
How to Overcome Grounds for Refusal
First, you need to understand the grounds of refusal. However, if you fall into the refusal category, there are ways to get past these obstacles and to strengthen your application for a trademark..
Strengthening Trademark Distinctiveness
One good strategy for making a mark distinctive is to use invented words or fanciful brand names. Instead of using descriptive words, just make up a brand name that has nothing to do with your product or service. For instance, the word “Google” is a made-up word with no literal meaning, but through usage, it has become distinctive.
Conducting a Thorough Trademark Search
Before filing an application, a thorough search should be conducted to identify potential conflicts with other registered trademarks. This will enable the applicant to avoid filing an application for the registration of a trademark that will most likely be refused because it is similar to an existing mark. The applicant may engage the services of a trademark attorney or professional search services for this purpose.
Responding to Office Actions and Objections
Timely and effective responses to office actions are very important in case the trademark office raises objections during the examination. Applicants should carefully analyze the grounds for refusal and prepare and submit persuasive arguments or evidence in support of their applications. For instance, proof of acquired distinctiveness by extensive use and consumer recognition will help in strengthening the application when a trademark application is refused on the grounds of lack of distinctiveness.
Examples of Trademarks That Were Refused
Real-life examples can illustrate the grounds for refusal and how they are applied in practice.
Case Study: Descriptive Trademarks
One well-known case of a trademark refusal owing to descriptiveness involves an application for “Best Electronics” with respect to services relating to an electronics retail store. The term was refused since “best” is merely an adjective that could describe something, without constituting any distinctive identification. Accordingly, the trademark office made it clear that consumers will not consider “Best Electronics” to refer to a specific origin of goods, but rather they would look at it to refer to a quality of goods or services.
Case Study: Likelihood of Confusion
Another example is the refusal of the mark “Tea-Powered” for a new brand of tea. This mark was considered by the trademark office to be confusingly similar to “TeaTime,” an already registered trademark for a tea company. The similarity of the names and the overlap in the product category raised concerns about the likelihood of consumer confusion. Therefore, the application was refused so as not to create marketplace confusion.
Conclusion
Knowing the grounds for refusal beforehand will enable applicants to fix in advance any possible defects or deficiencies in their trademark applications, whether it is ensuring the distinctiveness of the proposed mark, conducting full searches, or drafting effective responses to objections. After all, it is not just naming; rather, it is about building an identity that resonates well with consumers.
FAQs Related to Grounds for Refusal of Registration of Trademark
What are the main reasons for the refusal of a trademark application?
The main reasons include lack of distinctiveness, conflicts with existing trademarks, deceptive or misleading marks, and trademarks that are contrary to public policy or morality.
Can a descriptive term be registered as a trademark?
Generally, no. Descriptive terms are not eligible for trademark registration unless they have acquired distinctiveness or a secondary meaning associated with a particular brand.
How can I check if my trademark will be refused due to similarity with existing marks?
Conduct a thorough trademark search using online databases, such as those provided by trademark offices, to identify any existing marks that might cause conflicts.
What is the difference between absolute and relative grounds for refusal?
Absolute grounds relate to the inherent characteristics of the trademark, such as being generic or deceptive. Relative grounds involve the relationship between the proposed mark and existing trademarks, focusing on conflicts and confusion.
Can I appeal a trademark refusal?
Yes, applicants can appeal a refusal by responding to the trademark office's objections, providing additional evidence, or requesting a hearing. The process may vary depending on the jurisdiction.
Is it possible to trademark a colour or shape?
Yes, but it can be challenging. The colour or shape must be distinctive and associated with the brand. Applicants may need to prove that the mark has acquired distinctiveness through extensive use.
What can I do if my trademark application is refused?
If your application is refused, you can respond to the objections, modify the application, or file an appeal. Consulting with a trademark attorney can also help address the specific grounds for refusal.
