Section 9(1)(a) and Section 9(1)(b) Objections on Trademarks in India

Section 9(1)(a) and Section 9(1)(b) Objections on Trademarks in India-Details with Examples

In India, the Trademark Act, 1999, governs the registration, protection, and enforcement of trademarks. When an application for trademark registration is filed, it undergoes scrutiny by the Trademark Registry. One common hurdle faced by applicants is receiving an objection from the Registrar, particularly under Section 9(1)(a) and Section 9(1)(b) of the Act.

This article will explain what Section 9(1)(a) and Section 9(1)(b) of the Trademark Act, 1999 entail, along with examples, and will explore the differences between the two sections.

Understanding Section 9 of the Trademark Act, 1999

Section 9 of the Trademark Act, 1999, deals with the absolute grounds for refusal of trademark registration. The objective is to prevent the registration of marks that are generic, descriptive, or likely to cause confusion among the public.

Under Section 9(1), trademarks can be refused registration if:

• They lack distinctiveness.

• They are descriptive in nature.

• They are generic or common in trade.

• They mislead or deceive consumers.

Section 9(1)(a): Definition and Explanation

Section 9(1)(a) of the Trademark Act, 1999, states that a trademark shall not be registered 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."

This section addresses trademarks that lack distinctive character, which means they are unable to distinguish the applicant's goods or services from those of others in the marketplace. Trademarks that are merely common or generic words are more likely to face objections under this section.

Examples of Objections under Section 9(1)(a)

1. “BEST” for a shoe brand – The word “BEST” is a common term used in trade and lacks distinctiveness.

2. “PURE” for water bottles – The term “PURE” is generic and doesn't distinguish one product from another.

3. “NATURAL” for cosmetics – “NATURAL” is a common adjective and cannot uniquely identify the applicant’s product.

4. “FAST” for a courier service – The word “FAST” is a generic term in logistics, lacking any distinctive character.

5. “SMOOTH” for a razor brand – The word “SMOOTH” merely describes the effect or outcome and doesn't distinguish the product.

The primary goal of Section 9(1)(a) is to prevent the registration of marks that are too vague or generic to serve as identifiers of a particular product or service.

Section 9(1)(b): Definition and Explanation

Section 9(1)(b) of the Trademark Act, 1999, states 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 the goods or of rendering of the service or other characteristics of the goods or service."

This section deals with descriptive trademarks. A mark that merely describes the characteristics of a product or service—such as its quality, purpose, or geographical origin—is not eligible for registration under this section.

Examples of Objections under Section 9(1)(b)

1. “SWEET” for candies – The word “SWEET” is descriptive of the nature of the product.

2. “SPICY” for sauces – “SPICY” merely describes the taste and quality of the product.

3. “CHENNAI TEA” for tea products – “CHENNAI TEA” describes the geographical origin of the tea.

4. “LARGE” for clothing sizes – “LARGE” describes the size of the clothing and is therefore descriptive.

5. “QUALITY” for electronics – “QUALITY” is a word used to describe the overall standard of the goods.

The goal of Section 9(1)(b) is to prevent monopolization of terms that are necessary for competitors to describe their own products or services. Such terms should remain available for use by all traders in the market.

Differences Between Objections under Section 9(1)(a) and Section 9(1)(b)

To understand the distinction between these two sections, it’s useful to compare them based on certain criteria:

               

Key Legal Principles in Trademark Objections

Both Section 9(1)(a) and Section 9(1)(b) are based on the principle that trademarks must be distinctive and non-descriptive to be eligible for registration. Indian courts and tribunals have consistently held that trademarks should not consist of terms that are either too vague or describe common characteristics of the goods or services.

The principles include:

• A trademark should be capable of distinguishing goods or services.

• Descriptive terms should remain available for general use in the marketplace.

• The trademark should not mislead or deceive consumers.

Five Examples of Trademarks Facing Objections under Section 9(1)(a) and Section 9(1)(b)

1. "NATURAL BEAUTY" for cosmetics – Faced an objection under Section 9(1)(b) because it merely describes the intended effect of the cosmetics.

2. "GOLD STANDARD" for jewelry – Objected under Section 9(1)(a) for lacking distinctiveness and being too generic.

3. "PURE ORGANIC" for food products – Objection under Section 9(1)(b) for being a descriptive phrase referring to the product’s quality and origin.

4. "QUICK FIX" for repair services – Objected under Section 9(1)(a) due to lack of distinctive character, as it is a common phrase in the industry.

5. "HOT SPICE" for sauces – Faced an objection under Section 9(1)(b) for being descriptive of the product's taste.

Responding to Objections under Section 9(1)(a) and Section 9(1)(b)

Here are the Steps to Overcome Trademark Objections

Conclusion

Section 9(1)(a) and Section 9(1)(b) of the Trademark Act, 1999 play a crucial role in ensuring that trademarks are distinctive and non-descriptive. By preventing the registration of generic or descriptive marks, these provisions help maintain a fair and competitive market. Applicants must be cautious when selecting trademarks to ensure that they meet the criteria for registration and can withstand objections under these sections.

Successful navigation of objections often requires professional legal guidance, especially when dealing with issues of acquired distinctiveness and descriptiveness. A clear understanding of these sections, combined with strategic responses to objections, can help businesses secure strong trademark protection in India.