Understanding Trademark Refusal in India: Causes, Procedures, and Remedies

Introduction

Trademarks play a crucial role in protecting the identity of businesses by distinguishing their goods and services from those of competitors. Registering a trademark in India provides businesses with exclusive rights to use their brand names, logos, slogans, and other identifiers. However, not all trademark applications lead to successful registration. The Indian Trademark Office may refuse a trademark application for various reasons. Understanding the grounds for refusal, the procedures involved, and the remedies available can help applicants navigate the trademark registration process more effectively.

Grounds for Trademark Refusal in India

Trademark refusal in India can occur on both absolute and relative grounds as per the Trade Marks Act, 1999. Below are the key reasons for which a trademark application may be refused:

1. Absolute Grounds for Refusal

Absolute grounds for refusal relate to the intrinsic nature of the trademark itself, irrespective of any existing trademarks.

• Lack of Distinctiveness: A trademark must be capable of distinguishing the goods or services of one entity from those of others. Marks that are generic, descriptive, or lacking in distinctiveness are often refused. For example, a trademark that merely describes the quality, quantity, intended purpose, or geographical origin of the goods or services is likely to be refused.
• Deceptive Marks: If a trademark is likely to deceive or cause confusion among the public regarding the nature, quality, or origin of the goods or services, it may be refused. For instance, a trademark that implies a false connection to a place or is misleading about the ingredients of a product may face refusal.
• Prohibited or Offensive Marks: Trademarks that are offensive to public morals, or religious sensibilities, or that contain scandalous or obscene matter are not registrable. Similarly, marks that are prohibited by law, such as those resembling emblems or official symbols of the government, are also refused.
• Marks Contrary to Public Policy: Trademarks that are contrary to public order or morality, or that promote illegal activities, will be refused. For instance, a trademark promoting drug use or violence would not be accepted for registration.

2. Relative Grounds for Refusal

Relative grounds for refusal involve conflicts with existing trademarks or rights of third parties.

• Similarity with Existing Trademarks: A trademark may be refused if it is identical or confusingly similar to an already registered trademark or a trademark application filed earlier. The similarity could be in terms of the visual appearance, sound, meaning, or overall impression of the marks.
• Well-Known Trademarks: If a trademark application is similar to a well-known trademark, even if it is for different goods or services, it may be refused. Indian law provides strong protection to well-known trademarks to prevent dilution of their distinctiveness and reputation.
• Pending or Registered Trademarks: If a trademark is similar to an existing trademark that is pending or registered in the same or related class of goods/services, it may be refused on the grounds of likely confusion.

The Trademark Examination Process in India

Once a trademark application is filed, it undergoes a thorough examination by the Trademark Office to ensure that it meets the legal requirements for registration. The examination process involves the following steps:

1. Examination Report

After the application is filed, the Trademark Office examines the trademark on both absolute and relative grounds. The examiner reviews the trademark for distinctiveness, descriptiveness, and any potential conflicts with existing marks. If the examiner identifies any issues, they issue an Examination Report detailing the objections.

2. Response to Examination Report

Upon receiving the Examination Report, the applicant must respond within a stipulated period (usually 30 days) to address the objections raised by the examiner. The response can include legal arguments, evidence of distinctiveness, amendments to the application, or any other relevant information to overcome the objections.

3. Hearing

If the objections are not satisfactorily addressed in the response, the applicant may be called for a hearing before the Trademark Registrar. During the hearing, the applicant or their legal representative can present arguments and evidence to convince the Registrar to accept the trademark application.

4. Decision

Based on the examination report, the applicant’s response, and the hearing (if conducted), the Registrar decides whether to accept or refuse the trademark application. If the objections are overcome, the trademark proceeds to publication in the Trademark Journal, allowing for opposition by third parties. If the objections are not overcome, the application is refused.

Remedies for Trademark Refusal

If a trademark application is refused by the Trademark Office, the applicant has several options to challenge the decision:

Responding to the Provisional refusal in India

A notice of refusal is usually accompanied by a list of conflicting marks. The applicant needs to study the conflicting marks cited by the Indian Trademarks office for issuing a provisional refusal of the mark and then file our proper response to overcome the objections. This response needs to be filed within ONE month of the date of communication of the refusal to the applicant.

The usual procedure is:

• The applicant must file a response to the provisional refusal within ONE month of the date of WIPO notification.
• The trademark registry invites the applicant for further clarification and provide arguments for overcoming further objections.
• The applicant can seek a personal hearing with the examiner and provide documentary evidences in support of the arguments.

Rule 119 of the Trade Marks Rules 2017 states that ‘An application to the Registrar for the review of his decision under sub-section (c)of section 127 shall be made in Form TM-M within one month from the date of such decision or within such further period not exceeding one month thereafter as the Registrar may on request allow, and shall be accompanied by a statement setting forth the grounds on which the review is sought’.

Section 127 in The Trade Marks At 1999 states the Powers of Registrar and sub clause (c) of the Section states that ‘the Registrar may, on an application made in the prescribed manner, review his own decision’.

Further, on dismissal of review petition, the applicant also has an option of filing an appeal before the Intellectual Property Appellate Board (IPAB) within 3 months of the dismissal.

Best Practices to Avoid Trademark Refusal

To minimize the risk of trademark refusal, applicants should consider the following best practices:

• Conduct a Comprehensive Trademark Search: Before filing a trademark application, conduct a thorough search to identify any existing trademarks that may conflict with the proposed mark. This can help in assessing the likelihood of refusal on relative grounds.
• Choose a Distinctive Mark: Avoid using descriptive, generic, or common words as trademarks. Instead, opt for distinctive and creative marks that are unlikely to conflict with existing trademarks.
• Consult a Trademark Attorney: Engage a trademark attorney or agent who can provide expert guidance on the trademark registration process, draft the application carefully, and handle any objections or refusals effectively.
• Respond Promptly and Adequately to Examination Reports: If objections are raised, respond promptly and provide comprehensive legal arguments and evidence to overcome the objections. A well-prepared response can significantly increase the chances of success.
• Consider Filing a Provisional Refusal Appeal: If you plan to file for international trademarks under the Madrid Protocol, consider filing a provisional refusal appeal to address objections raised by foreign trademark offices before they become final.

Final thoughts

Trademark refusal in India is a common occurrence, but it is not the end of the road for applicants. By understanding the grounds for refusal, engaging in best practices during the application process, and being prepared to challenge a refusal through appeals and other remedies, businesses can improve their chances of successfully registering their trademarks.

A well-protected trademark is a valuable asset, offering legal protection and enhancing the brand’s identity and marketability. By navigating the trademark registration process with care and diligence, businesses can secure their trademarks and protect their brand’s reputation and value in the competitive Indian market.

Written by Mahesh Bhagnari, Patent & Trademark Attorney in India.