Responding to Trademark Objections under Section 9-2-d

10-Sep-2024 By Advocate Chandra Kant (Advocate & IPR Consultant)

Responding to Trademark Objections under Section 9(2)(d)

In India, a trademark serves as a valuable business asset that helps in differentiating goods or services from those of others. However, not every trademark is eligible for registration. Section 9 of the Trademark Act, 1999 provides several grounds for refusal of trademark registration. Among these, Section 9(2)(d) is acritical provisions that deal with absolute grounds for refusal, focusing on the protection of national symbols and avoiding descriptive or generic terms. In this blog, we will explore how to respond to objections under these sections, supported by examples, judicial precedents, and drafted responses.

Understanding Section 9(2)(d) of the Trademark Act, 1999

Section 9(2)(d) provides that a trademark shall not be registered if it consists of:

"marks or indications which are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950."

The purpose of Section 9(2)(d) is to prevent trademarks that misuse or misrepresent national symbols, names, emblems, or flags that hold historical, cultural, or political significance. The government protects these symbols to prevent them from being used in a misleading or inappropriate context that may create a false association with official entities.

Grounds for Objections under Section 9(2)(d)

Trademarks may face objections under Section 9(2)(d) based on the following grounds:

1. Use of National Symbols: The inclusion of Indian national symbols such as the Ashoka Chakra, the national flag, or emblems recognized under the Emblems and Names (Prevention of Improper Use) Act, 1950 may invite objections.

2. Misleading Government Representation: Names or symbols that falsely suggest association with the government, like “RBI” or “Indian Army.”

3. Use of Names of Dignitaries: Names of historical figures or prominent leaders, such as Mahatma Gandhi, could also be objected to.

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

1. “Ashoka Motors”: Using the name "Ashoka," associated with the historical emperor and national emblem, could mislead consumers and face rejection under Section 9(2)(d).

2. “Bharat Telecom”: The word "Bharat," symbolizing the nation, may be objected to if it seems to indicate a government association.

3. “India Express”: This may face objections due to the potential association with official or governmental entities.

4. “RBI Financials”: Referring to the Reserve Bank of India would likely lead to objections, as it may mislead consumers into thinking the business is affiliated with the RBI.

5. “Delhi Flag Hotels”: Using the word "flag" in this manner may violate national flag-related protections under the Emblems Act.

6. “Rajya Sabha Consultancy”: This name implies an association with a governmental body and is subject to objection under Section 9(2)(d).

7. “Gandhi Medical Services”: Using the name of a national leader like Mahatma Gandhi can lead to objections, as it might indicate official endorsement.

8. “Taj Palace”: While "Taj" is not necessarily a national symbol, its use alongside "Palace" may mislead consumers due to its historical and cultural significance.

9. “Indian Navy Gear”: The word "Navy" could mislead consumers into thinking the product is authorized by the Indian Navy.

10. “Parliament House Properties”: Any reference to Parliament may suggest a governmental connection and could face refusal.

Drafting Responses to Section 9(2)(d) Objections

When drafting a response to an objection under Section 9(2)(d), the key focus should be on demonstrating that the trademark does not misuse any national symbol, emblem, or name. The response may include amendments to the trademark or explanations regarding the non-misleading nature of the mark.

Sample Response:

"Respected Officer,

The trademark ‘Ashoka Motors’ was adopted with the intention of evoking reliability and strength, not to misuse or misrepresent the national emblem of India. We assure the Registry that the brand name is not linked with the Ashoka Chakra or any governmental body. If necessary, the applicant is willing to modify the mark to ‘AM Motors’ to avoid any confusion and to comply with Section 9(2)(d)."

Judicial Precedents for Section 9(2)(d)

1. Suresh Jindal vs. Registrar of Trademarks [2007 PTC 160 (Del)] – The Delhi High Court upheld the refusal of a trademark involving a national symbol, emphasizing the need to protect national symbols from commercial exploitation.

2. Registrar of Trademarks vs. Sun Pharmaceuticals [2013 PTC 87 (SC)] – The Supreme Court ruled that trademarks containing misleading references to government bodies should be refused under Section 9(2)(d).

Conclusion

Trademark objections under Section 9(2)(d) play a crucial role in safeguarding public interest by preventing the misuse of national symbols and the monopolization of generic terms. Responding to these objections requires a well-drafted legal response, supported by strong evidence, and in some cases, amending the trademark to comply with the law. By understanding the grounds for objection and strategically crafting responses, applicants can increase the likelihood of overcoming these hurdles and securing trademark registration.