Trademark Refusal in India

Trademark Refusal in India – Complete Guide

A trademark is one of the most valuable assets for any business, serving as a unique identifier that distinguishes its goods or services from those of competitors. However, not every trademark application successfully proceeds to registration. Many face refusal or objections during examination or opposition proceedings.

In India, trademark registration is governed by the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The Act lays down specific grounds for refusal, both absolute and relative, to ensure that only distinctive and lawful marks are registered.

Understanding the reasons for refusal, and the procedures to overcome them, is crucial for applicants and brand owners who wish to secure strong, enforceable trademark rights in India.

Types of Trademark Refusal

The refusal of a trademark in India can broadly be classified into two categories:

a. Absolute Grounds for Refusal (Section 9 of the Trade Marks Act, 1999)

These are refusals based on the inherent nature of the mark, irrespective of existing trademarks.

b. Relative Grounds for Refusal (Section 11 of the Act)

These occur when a proposed mark conflicts with prior existing marks, leading to a likelihood of confusion in the minds of the public.

Let’s look at both categories in detail.

Absolute Grounds for Refusal (Section 9)

A trademark may be refused registration if it lacks the essential characteristics of a valid mark. Common absolute grounds include:

1. Lack of Distinctiveness
   Marks that are generic, commonplace, or incapable of distinguishing one trader’s goods or services from another’s are not registrable.
   Example: “BREAD” for bakery products or “SWEET” for confectionery.
2. Descriptive Marks
   Marks that describe the quality, kind, intended purpose, or geographical origin of the goods/services are not registrable.
   Example: “COLD & FRESH” for beverages or “PURE COTTON” for textiles.
3. Marks Contrary to Law or Morality
   Any mark that is scandalous, obscene, or likely to hurt religious sentiments will be refused.
   Example: Use of religious symbols in a disrespectful or commercial way.
4. Marks Deceptive or Misleading
   Marks that are likely to deceive or cause confusion regarding the nature, quality, or origin of goods are not permitted.
   Example: “SWISS WATCH CO.” for watches made in India.
5. Customary or Common Terms
   Words or symbols commonly used in trade, or standard representations that have entered the public domain, cannot be monopolized.

However, if a mark has acquired distinctiveness through extensive use, it may overcome refusal under Section 9 by providing proof of use and consumer recognition.

Relative Grounds for Refusal (Section 11)

Relative grounds for refusal relate to the existence of identical or similar marks already registered or pending.

1. Identical or Similar Marks for Similar Goods/Services
   If the applied mark is identical or similar to an earlier registered mark for identical or related goods/services, the application will likely be refused.
   Example: “APPLEE” for computers could be refused due to its similarity with “APPLE”.
2. Likelihood of Confusion
   A mark that creates visual, phonetic, or conceptual similarity with an existing trademark can cause confusion or deception among consumers, leading to refusal.
3. Protection of Well-Known Marks
   Marks that are identical or similar to well-known trademarks (even in different classes) are likely to be refused to protect the reputation of the earlier mark.
   Example: Using “NIKEE” for handbags could be refused for being deceptively similar to “NIKE”.

Examination and Refusal Process

The process leading to trademark refusal usually begins during the examination stage at the Indian Trade Marks Registry.

Step 1: Examination Report

After filing a trademark application, it is examined by an examiner under Sections 9 and 11 of the Act.
If the examiner finds issues, they issue an Examination Report raising objections.

Step 2: Reply to Examination Report

The applicant has one month from the date of receipt to respond to the objections, providing legal arguments, evidence of use, or case precedents supporting registrability.

Step 3: Show Cause Hearing

If the examiner is not satisfied with the written response, a show cause hearing is scheduled.
During the hearing, the applicant or their trademark attorney can argue the case before the Registrar.

Step 4: Acceptance or Refusal

• If the Registrar is convinced, the mark proceeds to advertisement in the Trade Marks Journal for opposition purposes.
• If not, a refusal order is issued, explaining the reasons for rejection.

Appeal Against Trademark Refusal

An applicant whose trademark has been refused can appeal the decision before the Intellectual Property Appellate Board (IPAB).
However, since the Tribunal Reforms Act, 2021, IPAB’s functions have been transferred to the High Courts.

Appeal Process:

1. File an appeal before the jurisdictional High Court within 3 months from the date of refusal order.
2. The High Court reviews the case and may:
   • Uphold the refusal
   • Set aside the refusal and direct registration
   • Send the matter back to the Registrar for reconsideration

Applicants are strongly advised to file appeals with comprehensive documentation, including proof of use, evidence of distinctiveness, and precedents supporting their case.

Overcoming Trademark Refusal

Even after a refusal, an applicant can take proactive steps to overcome it:

1. Evidence of Use and Acquired Distinctiveness
   Show that the mark has been extensively used and has gained recognition among consumers. This can include sales figures, advertising materials, invoices, and media references.
2. Consent Agreements
   In case of conflict with an existing mark, the applicant may obtain a letter of consent from the prior owner, allowing coexistence.
3. Amendment of the Application
   The applicant can limit or modify the specification of goods/services to avoid conflict.
4. Legal Representation
   Hiring an experienced trademark attorney ensures effective arguments and legal reasoning to counter examiner objections or defend refusals.

Common Reasons for Trademark Refusal in India

Some of the most frequent causes of refusal include:

• Filing generic or descriptive words
• Using geographical names or surnames
• Choosing marks similar to existing trademarks
• Submitting marks lacking distinctiveness
• Not filing timely responses to examination reports
• Failure to attend hearings or provide evidence of use

Avoiding these pitfalls at the filing stage increases the likelihood of successful registration.

Practical Tips to Avoid Refusal

1. Conduct a Prior Trademark Search
   Always perform a comprehensive search before filing to ensure no similar marks exist.
2. Choose a Distinctive Mark
   Invented, coined, or arbitrary marks have higher chances of registration.
3. Avoid Descriptive or Common Terms
   Descriptive words reduce distinctiveness and are prone to rejection.
4. Use the Mark Consistently
   Continuous and proper use strengthens distinctiveness and supports your case if objections arise.
5. Engage a Trademark Professional
   A skilled attorney ensures proper classification, filing, and representation before the Registry or High Court if required.

Frequently Asked Questions: Trademark Refusal in India

1. What is trademark refusal in India?

Trademark refusal occurs when the Trade Marks Registry rejects an application because it does not meet legal requirements or conflicts with existing trademarks. Refusal can be on absolute grounds (e.g., generic or descriptive marks) or relative grounds (e.g., similarity to earlier marks).

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2. What are absolute grounds for trademark refusal?

Absolute grounds for refusal (under Section 9 of the Trade Marks Act, 1999) apply when a mark:

• Lacks distinctiveness
• Is descriptive or generic
• Is deceptive or misleading
• Is contrary to morality or law
  Such marks cannot be registered unless distinctiveness is proven through use.

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3. What are relative grounds for trademark refusal?

Relative grounds for refusal (under Section 11) apply when a mark is identical or similar to an existing registered trademark and may cause confusion among consumers. Conflicts with well-known marks can also lead to refusal.

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4. How can an applicant overcome a trademark refusal?

Applicants can overcome refusal by:

• Providing evidence of use or acquired distinctiveness
• Submitting legal arguments during examination or hearing
• Obtaining a consent letter from the prior owner in case of similarity
• Filing an appeal before the High Court if refused by the Registrar

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5. Can a refused trademark be appealed?

Yes. If a trademark is refused, an appeal can be filed before the jurisdictional High Court within three months of the refusal order. The Court may uphold, overturn, or remand the decision to the Registrar.

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6. What are common reasons for trademark refusal in India?

Common reasons include:

• Generic or descriptive words
• Geographical names or personal names
• Similarity to existing marks
• Lack of distinctiveness
• Failure to reply to examination reports or attend hearings

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7. How can I avoid trademark refusal?

To avoid refusal:

• Conduct a prior trademark search
• Choose a distinctive or coined mark
• Avoid descriptive or common terms
• File in the correct class and use the mark consistently
• Engage an experienced trademark attorney for guidance

Conclusion

Trademark refusal in India is a common yet manageable part of the registration process. Understanding the legal grounds for refusal, filing a strong response, and presenting convincing evidence can significantly improve the chances of overcoming rejection.

By being proactive, conducting due diligence, and working with experienced professionals, businesses can navigate the process efficiently and secure their brand’s legal protection.

At Bhagnari & Co, we assist clients at every stage — from filing and examination to appeal and enforcement — ensuring your brand receives the protection it deserves under Indian trademark law.

About This Page

This page provides a comprehensive overview of Trademark Refusal in India, explaining the legal grounds, examination process, and practical remedies under the Trade Marks Act, 1999. It outlines both absolute and relative grounds for refusal, including lack of distinctiveness, descriptiveness, similarity with existing marks, and likelihood of confusion.

The guide also details the appeal process, strategies to overcome refusal, and key tips to avoid rejection during trademark filing.

At Bhagnari & Co, we assist businesses and brand owners in responding to examination reports, attending hearings, filing appeals, and ensuring successful registration of trademarks in India. Our expert team provides end-to-end support for filing, prosecution, opposition, and enforcement under Indian trademark law.

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