Grounds for refusal of registration — absolute and relative grounds — Intellectual Property Rights I Notes

Grounds for refusal of registration — absolute and relative grounds

Why can no one own the word “cold” for a refrigerator, or “apple” for apples? Because a mark that merely describes the goods, or is deceptive, is barred at the door. These bars are the grounds of refusal — the most reliable essay in Unit II.

The two families of grounds

The Act splits objections into two: absolute grounds (defects in the mark itself, s.9) and relative grounds (conflict with someone else’s mark, s.11).

A. Absolute grounds — s.9

A mark is refused, regardless of any other mark, if it is:

devoid of distinctive character (s.9(1)(a)) — cannot distinguish the applicant’s goods;
descriptive (s.9(1)(b)) — designates the kind, quality, quantity, purpose, values, or geographical origin of the goods (e.g. “Sweet” for sugar);
customary / generic (s.9(1)(c)) — has become the common name in the trade;
deceptive or likely to confuse the public (s.9(2)(a));
hurtful to religious susceptibilities (s.9(2)(b));
scandalous or obscene (s.9(2)(c)); or
a protected emblem under the 1950 Emblems Act (s.9(2)(d)); or consists of the shape resulting from the nature of the goods / needed for a technical result / giving substantial value (s.9(3)).

The proviso — acquired distinctiveness. A descriptive or non-distinctive mark may still be registered if, before the application date, it has acquired distinctiveness through use — it has come to identify the applicant’s goods in the public mind (secondary meaning). This is what the “clock — used for 20 years” problem tests.

B. Relative grounds — s.11

A mark is refused because it conflicts with an earlier mark, where:

it is identical to an earlier mark and for similar goods, or similar to an earlier mark and for identical/similar goods, such that there is a likelihood of confusion (s.11(1)); or
it is identical/similar to an earlier well-known mark, even for different goods, and would take unfair advantage of or be detrimental to that mark (s.11(2)); or
its use is liable to be prevented by passing off or copyright law (s.11(3)).

Trade Marks Act, 1999, s.9(1): “The following trade marks shall not be registered — (a) which are devoid of any distinctive character…; (b) which consist exclusively of marks or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service…; (c) which consist exclusively of marks or indications which have become customary in the current language… Provided that a trade mark shall not be refused registration if before the date of application… it has acquired a distinctive character as a result of the use made of it…”

In Simple Terms: Absolute grounds (s.9) reject a mark for what it is — too descriptive, too generic, deceptive, offensive. Relative grounds (s.11) reject it for clashing with an earlier mark. But a descriptive mark can be rescued if long use has made the public associate it with one trader (acquired distinctiveness).

🧩 WORKED EXAMPLE — the “clock” long-use problem

Facts. A trader has used a “clock” device mark for 20 years and claims it has become distinctive of his goods; the Registrar objects that it lacks distinctiveness.

Rule. s.9(1)(a) bars non-distinctive marks, but the proviso allows registration if the mark has acquired distinctiveness through use before the application date.

Apply. Twenty years of continuous use, if it has made buyers associate “clock” specifically with this trader (secondary meaning), brings the mark within the proviso, curing the s.9 objection.

Conclusion. The claim of distinctiveness is sustainable if the acquired-distinctiveness proviso is satisfied; long, exclusive use is evidence of it.

flowchart TD
    REF["Grounds for refusal"]:::root
    REF --> ABS["Absolute (s.9) — defect in the mark itself"]:::leaf
    ABS --> D1["Non-distinctive / descriptive / generic"]:::leaf
    ABS --> D2["Deceptive / scandalous / protected emblem"]:::leaf
    ABS --> PRO["Cured by acquired distinctiveness (proviso)"]:::leaf
    REF --> REL["Relative (s.11) — conflict with earlier mark"]:::leaf
    REL --> C1["Likelihood of confusion (s.11(1))"]:::leaf
    REL --> C2["Well-known mark, even different goods (s.11(2))"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

Imperial Tobacco v Registrar of Trade Marks (1977) — a geographical/descriptive word is prima facie non-distinctive and barred under the absolute grounds.
Godfrey Phillips India v Girnar Food & Beverages (2004) — a descriptive mark can be protected only on proof of acquired distinctiveness/secondary meaning.

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