Responding to Objections under Section 9(1)(a) and 9(1)(b) on Trademark Applications in India

Responding to Objections under Section 9(1)(a) and 9(1)(b) on Trademark Applications in India

When filing a trademark application in India, one of the most common issues that applicants face is receiving objections under Section 9(1)(a) and Section 9(1)(b) of the Trademark Act, 1999. These objections are based on the absolute grounds for refusal, with Section 9(1)(a) addressing the distinctiveness of the mark and Section 9(1)(b) dealing with descriptive marks.

In this comprehensive guide, we will explore how to respond to objections under both sections, grounds for filing replies, and examples of how various trademark applications have successfully overcome these objections.

Understanding Section 9(1)(a) of the Trademark Act, 1999

Section 9(1)(a) states that a trademark may be refused registration if:

"It is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another."

A mark that lacks distinctiveness is generally generic or common to the trade. This section is invoked when the trademark is not inherently unique or has not acquired distinctiveness through use.

Example of Trademark Objection under Section 9(1)(a)

1. "FRESH" for juice products – The term “FRESH” is too generic and fails to distinguish one brand’s product from others.

Key Grounds for Response to Objections under Section 9(1)(a)

When responding to objections under Section 9(1)(a), the applicant can argue:

1. Acquired distinctiveness – Show that the mark has acquired distinctiveness due to its extensive and continuous use in the marketplace.

2. Secondary meaning – Prove that the mark has acquired a secondary meaning associated with the applicant’s goods/services.

3. Consumer perception – Provide evidence that the public identifies the mark as representing the applicant’s product.

4. Trademark uniqueness – Emphasize any unique aspects of the mark, such as stylization or combination with a logo.

Draft Statement for Section 9(1)(a) Response

"Your Honour, the mark ‘FRESH’ has been used extensively in connection with our juice products for over 15 years. The mark has acquired distinctiveness and secondary meaning in the minds of the public, as evidenced by market surveys and widespread advertising campaigns. The public associates the term ‘FRESH’ with our brand alone. Therefore, the objection under Section 9(1)(a) is unfounded and should be dismissed."

Case Law Supporting Responses to Section 9(1)(a) Objections

In the Godfrey Phillips India Ltd. vs Girnar Food & Beverages (P) Ltd. case [AIR 2005 SC 236], the Supreme Court emphasized the importance of acquired distinctiveness. The Court held that a mark that was originally generic or descriptive could acquire distinctiveness through prolonged use, and therefore, objections under Section 9(1)(a) may be defeated if such distinctiveness can be demonstrated.

Understanding Section 9(1)(b) of the Trademark Act, 1999

Section 9(1)(b) addresses trademarks that are descriptive in nature, stating that a trademark shall not be registered if:

"It consists 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 goods or of rendering of services or other characteristics of goods or services."

A descriptive trademark refers to a mark that describes the characteristics of the goods or services, such as their quality, origin, or intended use.

Example of Trademark Objection under Section 9(1)(b)

2. "FAST DELIVERY" for courier services – The phrase "FAST DELIVERY" is descriptive of the service being provided and lacks distinctiveness.

Key Grounds for Response to Objections under Section 9(1)(b)

To overcome objections under Section 9(1)(b), the applicant can argue:

1. Combination of words – Demonstrate that the combination of words or phrases creates a distinctive mark.

2. Figurative elements – Highlight any unique logos, designs, or symbols that add distinctiveness to the mark.

3. Acquired distinctiveness – Show that the descriptive mark has acquired distinctiveness through long-term use.

4. Not solely descriptive – Prove that the mark, although descriptive in part, is not exclusively descriptive of the goods/services.

Draft Statement for Section 9(1)(b) Response

"Your Honour, while the term ‘FAST DELIVERY’ is descriptive of the service, it has acquired distinctiveness due to our consistent branding and advertising over the past decade. Additionally, the stylized representation of the mark and its unique combination with our logo distinguishes it from other service providers. The mark is widely recognized by consumers and should therefore be eligible for registration under the Trademark Act."

Case Law Supporting Responses to Section 9(1)(b) Objections

In the Tata Sons Ltd. vs Manoj Dodia & Ors. [2006 (32) PTC 317 (Bom)], the Bombay High Court held that even descriptive trademarks could be registered if they had acquired a secondary meaning through long and substantial use. The Court noted that the applicant must demonstrate consumer recognition of the descriptive mark as representing their goods or services.

Steps to Overcome Trademark Objections under Section 9(1)(a) and Section 9(1)(b)

When facing objections under these sections, applicants must be thorough in preparing their responses. Below are the key steps to respond effectively:

1. Conduct a Trademark Search: Before responding, ensure that the mark does not conflict with existing marks.

2. Provide Evidence of Use: Compile sales data, advertising materials, invoices, and market research to prove extensive use.

3. Argue Acquired Distinctiveness: Show that the mark, although initially non-distinctive or descriptive, has become distinctive through prolonged use.

4. Modify the Mark: If necessary, make slight modifications to the trademark (e.g., adding a stylized logo) to overcome the objection.

5. Seek Legal Counsel: Consult with an intellectual property (IP) lawyer who has experience in dealing with such objections.

Examples of Overcoming Trademark Objections

Here are 10 real-world examples of trademarks that overcame objections under Section 9(1)(a) or Section 9(1)(b):

1. "MOTHER DAIRY" for dairy products – Faced objections under Section 9(1)(b) for being descriptive but overcame them by proving acquired distinctiveness.

2. "AMUL" for dairy products – Objection under Section 9(1)(a) was dismissed due to the mark’s long-standing recognition.

3. "KINGFISHER" for beer – Successfully argued acquired distinctiveness for a mark that could be seen as descriptive of a bird.

4. "BRITANNIA" for biscuits – Overcame objections under Section 9(1)(b) by demonstrating historical use and public association with biscuits.

5. "MAGGI" for noodles – Fought off objections under Section 9(1)(a) due to widespread recognition of the brand name.

6. "PEPSI" for beverages – Faced objections under Section 9(1)(a) but established distinctiveness through decades of use.

7. "BIG BAZAAR" for retail services – Overcame descriptive objections under Section 9(1)(b) by emphasizing the uniqueness of the brand name.

8. "AIRTEL" for telecommunication services – Faced objections under Section 9(1)(a), which were dismissed upon showing its distinctiveness.

9. "ZARA" for clothing – Dealt with objections under Section 9(1)(a), but the brand’s global recognition led to successful registration.

10. "LENOVO" for electronics – Fought off objections under Section 9(1)(a) by providing evidence of consumer recognition and market presence.

Notable Judgements on Responding to Trademark Objections

• T.V. Venugopal vs Ushodaya Enterprises Ltd. [2006 (33) PTC 10 (SC)]: The Supreme Court upheld the principle of acquired distinctiveness in cases involving descriptive trademarks, stating that such marks could be registered if they had gained secondary meaning through substantial use.

• Marico Limited vs Agro Tech Foods Limited [2010 (44) PTC 736 (Del.)]: The Delhi High Court held that a trademark must be distinctive in the eyes of the public and allowed the registration of a mark that was initially objected to under Section 9(1)(a) for lacking distinctiveness.

Conclusion

Responding to objections under Section 9(1)(a) and Section 9(1)(b) of the Trademark Act, 1999 requires a well-drafted response based on legal principles, case laws, and substantial evidence of use or distinctiveness. By carefully analyzing the objection, gathering relevant data, and strategically framing responses, applicants can successfully overcome these objections and proceed with trademark registration. The use of supporting case laws and judgements from the Supreme Court of India and High Courts provides a solid foundation for such responses.

For applicants facing objections, it’s crucial to seek professional legal guidance to ensure that their responses are well-drafted, complete, and persuasive. A well-handled response can pave the way for securing a valuable trademark in the competitive Indian market.