According to section 9(1), following trademarks cannot be registered:
a) Trademarks which are not capable of distinguishing the goods or services of one person from that of another person.
The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks1 - The Imperial Tobacco Company is a famous company which manufactures and distributes cigarettes with a label "SIMLA" throughout the country. In the year 1960 and in 1966, ITC ltd. made an application to the Registrar for the registration of the above mentioned trademark in his register in respect of Part A and Part B in the respective years. However, the Registrar refused the application for the registration both times against which an appeal was preferred to the Calcutta High Court. The Calcutta High Court dismissed the appeal on the ground that the word "SIMLA" is a famous geographical place which cannot be registered as a trademark.
An application for registration of the trade mark "Aggarwal Sweet Corner" was allowed registration in respect of sweets and namkeen, on the basis of the user, and therefore, opposition appeal was dismissed by the Intellectual Property Appellate Board in Aggarwal Sweet Palace vs. Asst. Registrar.2
In American Online Inc.'s Application,3 the applicant sought to register the word "YOU'VE GOT MAIL" as a trade mark in various classes. The examiner refused the application finding the trade mark was not distinctive. In appeal, the Board of Appeal held that the trade mark composed of common words to inform email users of the ordinary fact they have received a new mail and that the phrase must remain free from the individual monopoly rights.
b) Trademark which consist only of such marks or of such indications which may function in trade to specify the kind, quality, quality, geographical origin, or time of production of goods or services or other characteristics of goods or services.
This clause prohibits the registration of marks which are descriptive that identify the characteristics of the product or service to which the mark pertains. A mark is descriptive if it provides or gives the information directly.
In M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks4, it has been held by the court that the mark "RASOI" for edible oils cannot be registered as a trademark because such mark indicates the nature of the product.
In Central Camera Company Private Ltd v. Registrar of Trade Mark,5 the court held that the word "solar" undoubtedly refers to the sun and understood to be produced by or coming from the sun as solar energy.
It is common knowledge that the photographical work can be done in artificial light. In present, the goods involved were studio lights, photographic apparatus, projectors, etc. It was held that these goods have direct reference to the character or quality of the goods.
c) Trademark which consists only of such marks or indication which have become customary in the current language or in bona fide and established practice of trade. The word which have become publici juris or general cannot be registered as they belong to the public at large. It has been held by the Division Bench of Delhi High Court that nobody can claim exclusive right over the use of any word, abbreviation or acronym which has become publici juris.
Example - German word "auto" is not registered for motor cars or their parts and fittings or anything related to such kind of services. Thus, where it has been found that a large number of people have been using the same mark in the relevant trade, then such a mark cannot be registered in the name of any one person.
In SBL Ltd v. Himalayan Drug Company6, the Appellant filed a suit against the Respondent for infringement of trade mark Liv.52 by use of the trade mark Liv-T, which was dismissed on the ground that the mark 'LIV' is publici juris and that 'Liv' will be considered as the generic on account of the fact that it is used in respect of medicine used for treatment of ailment of 'LIVER' and non-distinctive part of the mark.7 The Division bench of Delhi High Court held that nobody can claim exclusive right over the use of any word, abbreviation or acronym which has become publici juris.
This section is not only applied to words but also to the colour combinations. Delhi High Court held that colour red being a basic colour, red and white combination was held to be common to the toothpaste trade in the domestic and as well as international market and could not be monopolised by any party.8
The provision attached to sub- section (1) provides that a trademark shall be registered if before the date of application for registration, such trademark has acquired a distinctive character by its usage or it being a well-known trademark.
In Shalimar Chemical Works v. Deputy Registrar,9 the trademark "CHEF" of the appellant which has been used in respect of various goods particularly species, edible oil, edible products had acquired special distinctiveness merely by the way of widespread sale and promotional activity.
According to section 9(2) following trademark shall not be registered:
a) If such trademark is likely to deceive the public or can even cause confusion.
In the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd.10, the plaintiff had stamped upon their goods the words 'tanned leather cloth' whereas only about one-third of their whole produce was in tanned cloth. It was held by the House of Lords that the plaintiffs were disentitled for relief as they were misrepresenting about the nature of the goods.
b) If such trademark is hurting the religious sentiment of any class or section of Indian citizens. It is not difficult to find the name of any god or goddess or any religious head as a trademark in India.
Examples: The use of names or device of deities on foot wear will be considered disrespectful. Likewise, the use of Hindu gods in respect of beef or meat products or use of Muslim saints for pork products would be offending the religious sentiments of respective sections of public.
In Amritpal Singh v. Lal Babu Priyadarshi11, the word RAMAYAN was refused registration on the grounds that:
Firstly, it was not capable of distinguishing the goods of the applicant and
Secondly, that it was likely to hurt religious sentiments of a class of society.
c) If such trademark contains any kind of scandalous or obscene matters.
Obviously, a mark which is contrary to the morality or is considered obscene must not be registered and the onus will fall on the applicant to prove it so by the evidence to overcome the objection.
In Ghazillian's Trade Mark Application,23 the trademark in question consisted of two words "Tiny Penis" in class 25 in respect of clothing, footwear and headgear. The Registrar refused the registration on the ground that the mark was contrary to the accepted principles of morality. The appellate authority while dismissing the appeal, concluded that this trademark would cause greater offence than mere distaste to a significant section of the public. The offence resides in the fact that an accepted social and family value is likely to be significantly undermined.
d) If the use of such trademark is prohibited under the Emblem & Names (Prevention of Improper use) Act, 1950
Emblem and Names (Prevention of Improper) Act, 1950, prohibits the improper use of certain emblems and names for professional and commercial purpose. Section 4(b) of the act prohibits the registrar from registering a trademark or a design which holds any emblem or name and use of it shall be in contravention of section 3 of the Act.
Example: Mahatma Gandhi, Pandit Nehru, National Flag etc. cannot be used as Trademark
According to section 9(3) a mark shall not be registered if it consists exclusively of:
a) The shape of goods which result from the nature of the goods themselves.
Example - the shape of an egg tray, whose purpose is to hold eggs, would fall within the context of section 9(3) (a) and would not be considered as capable to distinguish from others.
b) The shape of goods which is necessary to obtain a technical result.
Example - the shape of a square pinned plug, if the pins are not square they will not fit into the standard socket therefore it is mandatory to achieve that standard shape which is a technical result. Hence shall not be registrable under section 9(3) (b).
c) The shape of goods which adds substantial value to the goods.
Example - shapes which are more effective than other alternatives for performing a particular task add substantial value to the goods are not registrable.
1 AIR 1977 Cal. 413
2 2005 (30) PTC 336 (IPAB)
3  E.T.M.R. 6, 59.
4 AIR 1955 Cal. 519
5 (1980) IPLR 1.
6 1997 (17) PCT 540
8 Colgate Palmolive ltd v. Patel (2005)
9 2012 (50) PCT 576
10 (1863)4 De G.J & S 137
11 2005 (30) PTC 94 (IPAB) 23 (2002) RPC 628, p.635
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.