Trademark Objections Section 9-2-a and 9-2-b of the Trademark Act

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

Trademark Objections Section 9(2)(a) and 9(2)(b) of the Trademark Act

In the process of trademark registration in India, one common challenge applicants face is receiving objections under Section 9(2)(a) and Section 9(2)(b) of the Trademark Act, 1999. These provisions deal with the absolute grounds of refusal where a mark is likely to mislead or deceive the public, harm public policy, or cause confusion.

This blog will break down these sections in detail, offering a clear understanding of how objections arise, real-life trademark examples, and strategies for responding to these objections.

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

Section 9(2)(a) of the Trademark Act, 1999 prohibits the registration of trademarks that:

"are of such a nature as to deceive the public or cause confusion."

This section primarily deals with trademarks that are likely to mislead consumers about the nature, quality, or origin of the goods and services they represent. It is often invoked when the trademark in question closely resembles an existing registered trademark or if it conveys misleading information about the product or service.

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

1. "HERBAL CURE" for synthetic healthcare products – This name could mislead consumers into thinking the product is herbal in nature, thereby deceiving the public about its composition.

2. "GOLDEN SHOES" for silver footwear products – The term "golden" could create confusion, leading consumers to believe the product is gold-plated.

3. "SWISS CREAM" for ice cream made in India – This could mislead the public into thinking the product originates from Switzerland.

4. "FAST CASH LOANS" for a loan service with long processing times – The name suggests that the loans are processed quickly, which may not be true.

5. "BIO PURE" for chemical-based cleaning agents – The name gives the impression that the product is eco-friendly or purely biological.

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

An objection under Section 9(2)(a) may arise on the following grounds:

• The trademark is misleading or deceptive about the product’s features, quality, or origin.

• The mark is confusingly similar to an existing registered trademark, likely causing consumer confusion.

• The name or slogan creates false expectations regarding the product or service.

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

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 section deals with objections related to public policy, particularly marks that could hurt religious or cultural sentiments. Trademarks that may be offensive, disrespectful, or otherwise harmful to a community or faith are often rejected under this provision.

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

1. "GANESHA BEER" for an alcoholic beverage – Using the name of a revered Hindu deity for a product like beer could hurt the religious sentiments of Hindus.

2. "ALLAH SOAP" for bath soap products – Using the name of the Islamic god in connection with a commercial product could offend Muslims.

3. "CHRIST WHISKEY" for a liquor brand – Associating a religious figure with an alcoholic product could be seen as disrespectful to Christians.

4. "JAI SIKH MILK" for a dairy product – Using a slogan tied to a particular religious group for commercial gain could hurt religious feelings.

5. "KORAN CLOTHES" for a clothing line – Associating a religious scripture with a fashion product may offend the religious community.

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

An objection under Section 9(2)(b) may arise on the following grounds:

• The trademark is offensive, disrespectful, or likely to hurt religious sentiments of a group or community.

• The mark incorporates the name of a religious figure or deity in a way that could cause public outrage.

• The mark contains words or symbols that are closely associated with a religion or belief system in a negative or commercial context.

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

While both Section 9(2)(a) and Section 9(2)(b) serve to protect public interest, they focus on different aspects of trademark protection.

Example of Difference in Application

A trademark like "SWISS CREAM" for an Indian ice cream manufacturer might face objections under Section 9(2)(a) for misleading the public into believing the product is Swiss in origin. On the other hand, a trademark like "GANESHA BEER" might face objections under Section 9(2)(b) for hurting the religious sentiments of Hindus.

Steps to Overcome Objections under Section 9(2)(a) and Section 9(2)(b)

When faced with objections under these sections, trademark applicants can respond by providing relevant arguments and evidence. Here are some steps to consider:

Here is the key for responding to Objections under Section 9(2)(a) and Section 9(2)(b)

Conclusion

Understanding Section 9(2)(a) and Section 9(2)(b) of the Trademark Act, 1999 is crucial for trademark applicants in India. These sections protect consumers from misleading marks and safeguard religious sentiments from being exploited for commercial gain. By recognizing the differences between these objections and responding strategically, applicants can overcome hurdles in the registration process.

For brands, it's essential to seek legal counsel to navigate the complex landscape of trademark law, ensuring that their trademarks are distinctive, respectful, and legally compliant.