Trademark registration is a critical legal mechanism that grants exclusive rights to businesses or individuals over their distinctive marks, protecting them from unauthorized use by competitors. However, not all marks are eligible for registration under the law. Section 9(1) of the Trademarks Act lays down absolute grounds for refusal, emphasizing that marks lacking distinctiveness, being descriptive, generic, or misleading, cannot monopolize common language or public domain elements. This article explores the nuanced criteria under which trademarks may be refused registration, ensuring fair competition and clarity in the marketplace.

Absolute Grounds for Refusal of Registration

Section 9(1) prohibits registration of certain marks for the reason that a person should not unnecessarily obtain a statutory monopoly through registration of such a mark that another person is entitled to use. However, a trademark is not to be refused registration if, before the date of application for registration, it has acquired a distinctive character as a well-known trademark.

Thus, if a mark through use becomes clearly associated in the public mind, with the goods/services of a particular person, then it could not be legitimately used as a trademark by others. The burden in such a case, is on the applicant to show by persuasive evidence that the trademark, because of use has acquired distinctiveness to his goods or services.

Distinctiveness

A trademark is considered "distinctive" if it's unique enough to set apart the goods or services connected to it from others in the market. This uniqueness helps consumers identify products or services associated with the trademark's owner or even if there are similar products or services available. However, a trademark could be registered even if it was not 'distinctive' but was capable of distinguishing the goods of its proprietor from the goods of others. In determining whether a trademark was 'distinctive' or 'capable of distinguishing' regard could be had by the tribunal to the extent to which:

• A trademark was inherently distinctive or was inherently capable of distinguishing.
• Because of the use of the trademark or any other circumstance, the trademark was so adapted to distinguish was capable of distinguishing.

There are valid parameters that objectively reflect the popularity, usage, consumer recognition, and market strength of a trademark and thus help in ascertaining whether the trademark has acquired a secondary meaning. The parameters for testing the distinctiveness are the extent and period of use, goodwill and association in the minds of consumers, investments in advertisements, recognition in trade circles and channels of distribution, and the relevant class of customers.

• The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks, Calcutta High Court stated that distinctiveness means some quality in the trademark that earmarks the goods so marked as distinct from those of other producer's goods.
   
• In W.N. Sharpe Ld. v. Solomon Bros Ld., it was held that certain words such as "good", "best", and "superfine" were incapable of adoption. They could not have a secondary meaning and were not capable of registration. The mark "Super Deluxe", which otherwise may come within the purview of section 9(1), can nevertheless be registered if, before the date of application for registration, it has acquired a distinctive character as a well-known trademark.
   
• In Britannia Industries Ltd. v. Cremica Agro Foods Ltd., the court believed that prima facie the plaintiff's claim for distinctiveness and acquisition of secondary meaning about its mark "Greetings" has not been established.
   
• In PP. Jewellers P. Ltd. v. P.P. Buildwell Pvt. Ltd., the court stated that letter marks which are a combination of alphabets did not admit of easy acceptance as distinctive marks. However, on account of long usage in a line of trade, letter marks can attain a formidable reputation and considerable goodwill. That will depend on the facts of each case.

Invented Word

To be an invented word, a word must not only be newly coined, in the sense of not being already current in the English language, but must be such as not to convey any meaning, or, at any rate, any obvious meaning to ordinary Englishman. It must be a word having meaning or no obvious meaning until one has been assigned to it.

F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. (P) Ltd., The trademark 'Dropovit' which was coined from the words "Drop of Vitamin" was considered as an invented word in which the Supreme Court held, It is true that the word "Dropovit" is coined out of words commonly used by and known to an ordinary person knowing English. But the resulting combination produces a new word, a newly coined word which does not remind an ordinary person who knows English, of the original words out of which it is coined, unless he is so told or unless at least he devotes some thought to it.

Grounds of Refusal under Section 9(1)(b)
Section 9(1)(b) states that trademarks cannot be registered if they only describe the characteristics of the goods or services they represent, like their quality, origin, or purpose. However, if a trademark becomes well-known before the application for registration, it can still be registered, even if it initially describes the product or service.

• The expression may serve in trade means that other people can use the mark to describe qualities of goods or services as well.
• The expression kind would include the name itself along with words that show size or type. The generic descriptions of the goods, words which are the only available method of description of the goods, are not capable of distinguishing. For example, words such as Extra Large, Large, or Small are not allowable.
• The expression quality may include laudatory words like Good or Best but can't be registered for products because all businesses should be able to use them freely to advertise. Some words may not be suitable for certain products, like "High Tech" for computers, but they might be okay for other things, like food.
• The expression quantity may refer to numbers, but in certain contexts like wine, 12 bottles make up a case. It depends on the specific product or item discussed.
• The expression intended purpose means the specific use or outcome that a product or service is designed for. For instance, words like 'Twist and Curl' for hair tools or 'RUSTFREE' for paints imply their function or quality and may not be allowed for trademark registration because they describe the product characteristics.
• The expression value means words or symbols that show the worth or importance of goods or services. For instance, phrases like 'Two for One' or 'Worth their Weight in Gold' can't be officially registered.

Descriptive Words

A trademark is descriptive if it conveys information directly. A trademark shall not be registered in the register unless it contains or consists of one or more words having no direct reference to the character or quality of goods. Descriptive words are different from suggestive words. However, if it stands for some idea that requires some imagination to connect it with the goods, it is suggestive. Descriptive words are not registrable whereas suggestive words may be registered if have distinctive characters.

• M/S Hindusthan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks, The Calcutta High Court, held that the word "Rasoi" for the hydrogenated groundnut oil referred directly to the goods used ordinarily for cooking purposes.
   
• Evergreen Sweet House v. Ever Green, The court decided that the trademark "EVERGREEN" wasn't just a common word describing the products or services provided. It didn't immediately make people think of sweets. Instead, it made people think of green scenery or nature. Therefore, it was considered a unique and protectable trademark, not just a descriptive term.

Registration and Protection of Descriptive Trademark

Section 9(1), a descriptive trademark may be registered if, before the date of application for registration, it has acquired a distinctive character as a well-known trademark. Thus, a descriptive trademark may still be registered as well as protected provided it has assumed a secondary meaning and become distinctive.

Word Having Different Meanings in Different Parts of India
Where the word is such which has different meanings in different parts of India, and one of the meanings is descriptive of the goods, will such a word be registrable?

JL Mehta v. Registrar of Trade Marks, the Bombay High Court said that if a word describes the goods, it should be understood by people all over India, not just in certain areas.

Geographical Names
The name of the place applied to goods/services will prima facie be taken to indicate their origin, and hence they are considered non-distinctive. The rules for registering place names as trademarks are like those for descriptive words. But, a place name can become a trademark if it's shown to be unique through evidence.

In The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks, The ITC wanted to register a trademark for its cigarette packets with the word "Simla" and a picture of snow-clad hills. However, the Calcutta High Court rejected the registration. They said that "Simla" and the image of snow-clad hills were too common and clearly related to a specific place, making them not unique enough to distinguish the company's products. The court emphasized that if a word gains a geographical meaning even after applying for a trademark but before it's officially registered, it can face objections.

When Geographical Name may be Registered as A Trade Mark
This statement means that only geographical names that don't directly show where a product comes from can be registered as trademarks. For example, if the name is from a small or unimportant place, or if it's used creatively or randomly.

• Hi-Tech Pipes Lud. v. Asian Mills Pvt Ltd. The court said that if a place isn't very important or well-known, it might be okay to use its name as a trademark. So, they allowed the trademark "Tijuana Smalls" to be registered for cigars.

Grounds of Refusal under Section 9(1)(c)
Section 9(1)(c), if a trademark consists only of words or symbols that are commonly used in everyday language or a specific industry, it can't be registered. For instance, the word 'auto' in German can't be registered for cars or car parts because many people use it in the car industry. Similarly, if many people in a trade use the same mark, it can't be registered for one person. When a mark is widely used in an industry, it's called 'common to trade'. This includes simple symbols like flowers for incense sticks. To prove that a sign has become common or established, the Registrar needs evidence that matches these descriptions.

Publici Juris Or Generic Word
Generic Word is a word that most people use to describe a type of product or service. These words belong to everyone and cannot be owned by any individual or company as a trademark. Whether a word is generic or Publici Juris, if a word becomes strongly associated with a particular company or product, it can be recognized. However, if many people start using it commonly, its distinctiveness can be lost.

Evergreen Sweet House v. Ever Green, the court sorted marks into different groups based on how easy they are to register. Marks are grouped into five categories: generic, descriptive, suggestive, arbitrary, and fanciful. The last three categories get trademark protection because they are unique and can identify where a product comes from. Generic marks, on the other hand, refer to the whole category of products and usually can't be registered as trademarks.

Grounds of Refusal under Section 9(2)

Section 9(2) makes a mark non-registrable if:

• It is of such nature as to deceive the public or cause confusion;
• Might offend the religious feelings of any group in India;
• It comprises or contains scandalous, obscene, offensive or indecent content;
• Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Relative Grounds for Refusal of Registration
Section 11 says that a trademark can be refused registration if it's too similar to another trademark that's already registered. This rule applies only when there's already a registered trademark that's similar to the new one being proposed.

Identity with Earlier Trademark and Similarity of Goods or Vice Versa
In simple terms, a trademark can't be registered if it's too similar to an earlier trademark and could confuse the public. When deciding if there's a likelihood of confusion, we look at factors like how unique the earlier trademark is, how similar the new and old trademarks are, and how alike the goods or services they represent are. If the new trademark is almost the same as the old one or could be easily confused with it, it can't be registered. The distinction, identity means being exactly the same, while similarity means being similar in some ways. If a mark is identical to the trademark or very similar, it can't be registered if it might confuse consumers.

Similarity of Goods/Services
Justice Romer pronounced three tests that should be applied to decide whether the goods were of the same description. The tests were –

1. the nature and composition of the goods;
2. the respective use of the goods;
3. the trade channels through which the respective goods were bought and sold.

Identity with Or Similarity to Well-Known Trademark
If trademark that is identical with or similar to an earlier trademark, but they're meant for different things owned by different people, it can't be registered if the earlier trademark is well-known in India. This is to prevent the new trademark from unfairly benefiting from the reputation of the earlier one.

Well-known Trade Mark
A well-known trademark is one that's widely recognized by a big part of the public who use those goods or services. If another product or service uses a well-known trademark, people might think there's a link between them and the original trademark owner. Just because a trademark is popular doesn't automatically mean it's considered well-known. Reputation alone isn't enough to make a trademark well-known.

• In Rolex SA V. Alex Jewellery Pvt. Ltd., the court stated that ROLEX is a well-known trademark from the point of the public that uses high-quality watches.
• In Yahoo Inc. v. Firoz Nadiawala, the court stated that YAHOO! had become a well-known trademark by long and continuous use and that the defendant made a film under the title YAHOO! which would cause the public to believe that the movie was in some way endorsed, sponsored, and associated with the plaintiff.

Well-known Trademark: Determining Factors
While determining whether a trade trademark is a well-known trademark or not, the Registrar is to take into account any fact that he considers relevant –

1. How well people know the trademark, including in India from promotions.
2. How long, where, and how much the trademark has been used.
3. How long, where, and how much the trademark has been promoted, like through ads or at events.
4. If and where the trademark is registered or applied for.
5. How successfully the trademark's rights have been enforced, especially if it's been recognized as well-known by courts or registrars before.

Registration in the Case of Honest Concurrent Use
Section 12 of trademark law lets similar trademarks be registered by different owners if they're being used honestly at the same time or in special situations. The Registrar can allow registration if the marks are alike and used for similar goods/services, but there are conditions. To get this permission, the initial adoption of the trademark must be honest. If they weren't honest initially, later concurrent use won't make it right. Protection is for innocent use by people unaware of each other. The defendant must prove they adopted the mark honestly.

No Registration of Names of Chemical Elements
Section 13 prohibits the registration of names of chemical elements or international

Non-Proprietary names. It provides that no word is to be registered as a trademark:

1. which is the commonly used and accepted name of any single chemical element or any single chemical compound to a chemical substance or preparation,
2. which is declared by the WHO and notified by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name.

Use of Names and Representations of Living or Dead Persons
Where an application is made for the registration of a trademark that falsely suggests a connection with any living person, or a person who died within 20 years before the date of application for registration of the trademark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or the legal representative of the deceased person to the connection appearing on the trade mark. The Registrar may refuse to proceed with the application unless the applicant furnishes him with such consent.

Conclusion
In conclusion, while trademark registration offers valuable protection to intellectual property owners, it must adhere to stringent criteria to maintain fairness and prevent monopolies over common and descriptive terms. The absolute grounds for refusal, as outlined under Section 9(1), underscore the importance of distinctiveness and non-descriptiveness in trademark applications. By understanding and applying these principles, both businesses and consumers benefit from a transparent and competitive market environment where trademarks serve their intended purpose of distinctiveness and identification.