Absolute grounds for trademark registration
We are going to discuss some of the absolute grounds for the trademark registration precisely. Keep your eye on this to know some useful information.
Characteristics in section 9(1) (b) of the 1999 act:
There are eight prohibited indications or characteristics in section 9(1)(b) and two more in section 9(1)(c). These are in the nature of prohibiting descriptive words or the words required by other traders, of which no monopoly should be given to any trader.
Section 9(1) (b) makes marks eligible:
Section 9(1)(b) lists many types of marks which are ineligible for registration and therefore, serve a s a ground for refusal of registration. Normally, the provision hits at descriptive marks which refer to the goods or services or to the characteristics of the goods or services. Clauses (b) might appear to be enlarging the disabilities, but in fact it allows more marks to obtain registration which were hitherto prohibited.
If a trademark is made only by such matter, marks or indications which only designate or serve to state the
- Time of production
- Intended purpose
- Geographical origin
- Other characteristics
Of goods or rendering of services, such a trademark shall not be registered as a trademark according to section 9(1)(b) of the act if the trademark does not have any other matter and consists exclusively of the above matter. However, if within the trademark is contained other matter then the scrutiny for registrability will be of the composite mark. There cannot be an objection to a composite mark on the basis of above 8 grounds alone; however the grounds in section 9(1)(a)(b)(c) all play a role in this determination of the trademark.
Significance of “Exclusively consisting of”:
Seeing the registration requirements a trademark would not be registered if it is constituted exclusively of the above eight disabilities. Any of the above eight characteristics in association with some other matter which is distinctive, may comprise a valid trademark possessing distinctive character. Thus, there is no bar on a trademark that it should not contain these eight elements but it cannot contain exclusively only these elements. Absolute grounds for the requisition of registration has some more significant things.
The laudatory words such as perfection, good, excellent, fine and words of common usage may now be registrable, if they form part of a trademark in combination with other non-descript material, and display “distinctive character”. If it displays distinctive character, it would be entitled to protection and registration. The 8 listed factors are akin to descriptive words about the goods or services. The non-descriptive words would be deemed to possess distinctive character as well.
It has been previously observed by courts that a mark is not prevented from being distinctive because it includes amongst its integers an integer, which in itself is not separately registrable or which suffers from incapability. Where there is at least one integer which by itself is distinctive and which is sufficiently prominent on the mark so as to attract the attention of the customers and fix itself in their minds, the mark as a whole would be considered distinctive. Cases may arise where none of the component parts of the marks taken by it is distinctive, still all the parts taken together may contribute to the distinctive character of the composite mark. In judging whether such a combination mark is distinctive or not, it is wrong to dissect the mark and to show that each of the component parts is not distinctive in it, and then concludes that the mark as a whole is not distinctive.
Significance of “May serve” – possibility of “future use”:
It is not necessary that a sign is actually in descriptive use at the time of application for registration but if it may be used descriptively at any later date, it is hit by section 9(1)(b). The presence of the word may indicates that an assessment of descriptiveness is not confined to what is already in common usage at the relevant date as that is the focus of section 9(1)(c). The word “may serve” in section 9(1)(b) would be construed as meaning “reasonably likely to come into descriptive use in the foreseeable future.
The possibility of future use of mark is particularly relevant, if the mark applied for becomes the accepted description of a new type of product or service, then it would be hit by section 9(1)(b) and (c) or devoid of any distinctive character. known.
Similarly, in relation to shape of products, a marketer should take into account while choosing a trademark not only the shapes which are already the “norm” for the relevant sector, but also which shapes are likely to become the normal shape of the product in future.
An apt example is stated in “Trademarks Manual” prepared by the trademark registry containing the case of “frozen potato chips” which were cooked in “domestic ovens” instead of “deep fat fryers” were at one time a new product. The manufacturer branded them “oven chips”, but although they were the first to coin the term, the term was an apt description and it was reasonable to assume that it would become the natural description in the trade for that category of goods.
If the product is entirely new to the country, it is likely that the foreign descriptive name will be adopted, because it is commercially convenient. Thus the grounds for registration been discussed.
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