GROUND FOR REFUSAL OF TRADEMARK REGISTRATION:- PART II
Confusion’ term in literal sense means “to fail to distinguish between, to perplex or bewilder” and in common language it means ‘a state of mind where a person unable to choose between alternatives’. In Trade Marks, misunderstanding plays an important role in being a distinctive or non-distinctive trade mark. The term confusion has been used in all grounds of refusal, i.e. ‘absolute’ and ‘relative,’ but the two confusions are separate from each other. The interpretation of these confusions is very relevant in the quest for registration of a trade mark.
Deception or misunderstanding may occur as a result of a resemblance between the proposed trade mark and another current trade mark, or may arise as a result of something found in the trade mark proposed for registration or may arise as a result of the design of the usage of the trade mark. This ground for refusal of trademark and other grounds lays in section 9 of Trademark Act. In previous blog we get to know about section 9(1) and now we will discuss further.
Section 9(2) and 9(3) states that:-
(2)A mark shall not be registered as a trade mark if—
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists exclusively of—
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods. Explanation.—For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.
Section 9(2)(a) deals mainly with the dishonest aspect of the mark due to the presence or usage of something intrinsic in the mark, such as the nature, content or geographical origin of the products or services. The label may be in the form of a misappropriation as to the characteristics of the products or services, or as to the effect that they have been manufactured in a given geographical area or location, unless it is in fact made. It is important to note that Section 9(2)(a) covers only situations where deception or misunderstanding occurs from the existence of the mark itself and is not dependent on the resemblance between the marks. The primary purpose of this section is to protect the public interest. As a result, if a particular label is dishonest or fraudulent, registration will be denied, despite the fact that the claimant has behaved in good conscience [Boots Pure Drug Co.’s Ltd. Trademark, [1937] 54 RPC 327] or that there has been no resistance to it [Diamond T Motor Car Co.’s, Application [1921] 38 RPC 373], or that there is consent [Dewhurst’s Appl. (1896) 13 RPC 288].
Section 9(2)(b) forbids the registration of a trade mark if it comprises or requires any matter likely to affect the religious susceptibility of any class or section of the citizenry of India. This clause must be used as one of the grounds for denial of registration of trademarks, as it is common practise in India to use sacred symbols and names and images of gods and goddesses as trademarks.
Marks containing scandalous or obscene matter cannot be registered under the Act. If a symbol is scandalous or indecent will be decided on a case-by-case basis and the burden of proof will be on the claimant to show that it is not so on the basis of the facts and to resolve the objections. This is what was stated in compliance with Section 9(2)(c) of the Trade Marks Act, 1999.
Finally, Section 9(2)(d) bans the issuance of a trade mark where it is illegal under the Symbol and Names Act (Prevention of Unauthorized Use) of 1950. This act forbids the abuse of such emblems and names for technical and industrial purposes.
These are the grounds on which the registrar can refuse the trademark registration.
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