Responding to Trademark Objections under Section 9-2-a and Section 9-2-b

Responding to Trademark Objections under Section 9(2)(a) and Section 9(2)(b)

Trademark applications in India often face objections from the Trademark Registry, especially under Section 9(2)(a) and Section 9(2)(b) of the Trademark Act, 1999. These sections deal with absolute grounds of refusal, where a mark is likely to mislead or deceive the public, or offend religious or cultural sentiments. Responding to these objections is a critical part of the registration process.

This blog will provide a comprehensive overview of how to respond to objections raised under these sections, including real-life examples, supporting legal arguments, and landmark judgements from Indian courts.

Section 9(2)(a) of the Trademark Act, 1999: Definition and Grounds for Objection

Section 9(2)(a) states that a trademark shall not be registered if it is of such a nature as to:

"deceive the public or cause confusion."

This provision targets trademarks that could mislead consumers regarding the nature, quality, or origin of the goods and services they represent. The goal is to prevent consumer deception and ensure that trademarks accurately represent the products or services they are associated with.

Grounds for Raising Objections under Section 9(2)(a)

1. Misleading Information: Trademarks that create false impressions about a product's origin or composition.

2. Similarity to Existing Trademarks: Marks that are confusingly similar to an existing registered trademark, leading to consumer confusion.

3. False Claims: Trademarks that exaggerate or misrepresent the features or quality of the goods or services.

Examples of Trademark Objections under Section 9(2)(a)

1. "ORGANIC CARE" for non-organic skincare products – This could mislead consumers into thinking the products are made from organic ingredients.

2. "PARIS PERFUME" for a fragrance produced in India – The name could confuse the public about the origin of the product.

3. "SILK FABRICS" for synthetic textile goods – This implies that the fabric is made from silk, which could deceive consumers.

4. "SWISS MILK" for dairy products manufactured in India – The use of "Swiss" could mislead consumers about the origin of the milk.

5. "FAST BANK" for a financial service with slow processing times – This suggests a quick service, which may not be true.

Responding to Objections under Section 9(2)(a)

When responding to objections raised under Section 9(2)(a), applicants should focus on demonstrating that the trademark is not deceptive or confusing. Evidence, arguments, and precedents can help clarify that the mark has distinctiveness or does not mislead the public.

Draft Response for Section 9(2)(a) Objections

"Your Honour, the trademark ‘ORGANIC CARE’ has been in use for over five years, during which time it has garnered significant brand recognition. Although the products are not certified organic, they incorporate eco-friendly and natural ingredients, which the brand consistently highlights in its marketing. Therefore, consumers are fully aware of the nature of the products, and no deception or confusion has arisen. We submit evidence, including advertisements and consumer feedback, demonstrating that the public associates the brand with eco-friendly, natural products rather than purely organic offerings."

Supporting Judgements for Section 9(2)(a) Responses

1. Godfrey Phillips India Ltd. vs. Girnar Food & Beverages Pvt. Ltd. [AIR 2005 SC 576] – The Supreme Court ruled that trademarks which are likely to deceive or confuse the public cannot be registered.

2. Wander Ltd. vs. Antox India P. Ltd. [1990 AIR 376] – The court held that consumer protection from deception is a key aspect of trademark law, and any mark likely to mislead should be refused.

3. Hindustan Unilever Ltd. vs. Gujarat Co-Operative Milk Marketing Federation Ltd. [AIR 2017 SC 236] – The court rejected a mark that misled consumers about the origin of the product, supporting the objection under Section 9(2)(a).

Section 9(2)(b) of the Trademark Act, 1999: Definition and Grounds for Objection

Section 9(2)(b) states that a trademark shall not be registered if it:

"contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India."

This provision addresses trademarks that may offend the religious or cultural sentiments of any community. Any mark that is considered offensive, disrespectful, or inappropriate in a religious or cultural context may face objections under this section.

Grounds for Raising Objections under Section 9(2)(b)

1. Religious Sensitivities: Marks that use religious names, symbols, or images in a commercial context, which could offend the religious community.

2. Cultural Offense: Trademarks that may appear disrespectful to certain cultural or social groups.

3. Misuse of Sacred Terms: The use of terms or names that are considered sacred or revered in a casual or commercial context.

Examples of Trademark Objections under Section 9(2)(b)

1. "KRISHNA SHOES" for a footwear brand – The use of the name of a Hindu deity for a commercial product could hurt religious sentiments.

2. "ALLAH SOAP" for bath soap products – The use of the Islamic god’s name in connection with a commercial product could offend religious groups.

3. "BUDDHA SPIRITS" for an alcoholic beverage – Associating a religious figure with alcohol could be seen as offensive.

4. "CHRIST TEA" for a tea brand – This could hurt the sentiments of the Christian community by using a religious name for a commercial product.

5. "JAI SIKH" for a dairy product – The use of a religious slogan for commercial purposes could be viewed as disrespectful.

Responding to Objections under Section 9(2)(b)

To overcome objections under Section 9(2)(b), applicants should focus on demonstrating that the trademark does not intend to hurt religious or cultural sentiments. Modifications to the mark or arguments highlighting the respectful use of religious names or symbols can be submitted.

Draft Response for Section 9(2)(b) Objections

"Your Honour, the trademark ‘KRISHNA SHOES’ has been revised to exclude any references to religious figures. The applicant recognizes the cultural and religious sensitivities associated with using the name ‘Krishna’ in a commercial context. The mark has been rebranded as ‘KSHOES,’ ensuring that it no longer infringes upon any religious sentiments. Additionally, the applicant has taken steps to ensure that future marketing campaigns are sensitive to cultural and religious nuances."

Supporting Judgements for Section 9(2)(b) Responses

1. Bharat Cooking Coal Ltd. vs. Deputy Registrar of Trademarks [2002 (25) PTC 521] – The High Court held that trademarks which hurt religious sentiments should not be registered.

2. Devonshire Ltd. vs. Registrar of Trademarks [2004 (28) PTC 112] – The court upheld an objection under Section 9(2)(b), ruling that religious sentiments must be respected in the registration process.

3. Shri Ram Traders vs. Registrar of Trademarks [2009 (40) PTC 268] – The court disallowed a trademark that was found offensive to a religious community, highlighting the importance of cultural sensitivities.

Differences Between Objections under Section 9(2)(a) and Section 9(2)(b)

While both sections focus on public interest, they differ in their scope and application. Below is a comparison of objections under these two sections.

                

Conclusion

Responding to objections under Section 9(2)(a) and Section 9(2)(b) of the Trademark Act, 1999 requires a detailed and well-supported argument. By providing evidence, legal precedents, and clear reasoning, applicants can effectively overcome these objections and secure their trademark registrations. Proper legal counsel is crucial for navigating these objections, ensuring compliance with the law while protecting the brand’s identity.