Registrability of a Trademark — Absolute Grounds (Section 9)

Section 9 of the Trade Marks Act, 1999 sets out the absolute grounds for refusal of registration. Unlike Section 11 — which is concerned with conflict with earlier marks — Section 9 is concerned with the intrinsic qualities of the mark itself. Its object, drawn from the older Section 9 of the 1958 Act and refined under TRIPS, is to protect the legitimate interest of traders and the public in the use of ordinary words and devices that are legitimately required by them in the course of trade. A mark that fails Section 9 cannot reach the operative provisions of the statute at all; it never makes it onto the register.

The 1999 Act recasts the registrability test. Where the 1958 Act listed five categories of registrable marks (name, signature, invented words, descriptive non-geographical words, other distinctive marks) and operated a two-tier register, the 1999 Act framed Section 9 as a list of grounds for refusal — whatever is not prohibited and is capable of distinguishing the goods or services is registrable. The doctrinal pivot from "what may be registered" to "what must be refused" is the single most important conceptual shift the new Section 9 introduced. This chapter follows from the wider treatment of definitions of trademark, mark and service under Section 2 and is the substantive companion to the relative-grounds analysis in the chapter on relative grounds for refusal under Section 11.

Statutory anchor — the structure of Section 9

Section 9 is divided into three sub-sections. Section 9(1) contains the three core grounds based on lack of distinctive character, descriptiveness and customary use. Section 9(2) contains the four grounds based on deception, hurt to religious sensibilities, scandalous or obscene matter, and prohibition under the Emblems and Names (Prevention of Improper Use) Act, 1950. Section 9(3) contains three further grounds applicable specifically to shape marks. A proviso to Section 9(1) saves marks that have acquired distinctive character through use, even if they would otherwise fail Section 9(1)(a), (b) or (c).

Section 9(1) — distinctiveness, descriptiveness and customary marks

Section 9(1) provides that a trade mark shall not be registered which (a) is devoid of any distinctive character — that is, not capable of distinguishing the goods or services of one person from those of others; (b) consists exclusively of marks or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; or (c) consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.

The three sub-clauses are independent grounds. A mark that fails any one of them is liable to refusal — subject to the proviso. The proviso saves marks that have, before the date of application, acquired a distinctive character as a result of use, or are well-known trade marks. The Explanation to Section 9 further clarifies that the nature of the 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. The procedural setting in which Section 9 is applied — examination, advertisement and opposition — is dealt with in the chapter on the procedure for registration under Sections 18 to 24.

Distinctiveness — inherent and acquired

The whole of trade-mark law may be said to be centred on the protection of the distinctive character of a mark. Distinctiveness comes in two flavours. Inherent distinctiveness means the mark itself, by its choice and arrangement of elements, is capable of distinguishing — examples include invented words like "Kodak" and "Bovril" or arbitrary words used out of their ordinary context like "Apple" for computers. Acquired distinctiveness (also called factual or secondary distinctiveness) means that, although the mark lacks inherent distinguishing character, long and intensive use has caused the relevant public to associate the mark with one particular trade source.

Under the 1958 Act, the expressions "inherently distinctive", "adapted to distinguish" and "capable of distinguishing" carried different doctrinal weights. The 1999 Act collapses the gradient. The expression "distinctive character" in Section 9 is treated as synonymous with "capable of distinguishing" in Section 2(1)(zb). In effect, the statutory standard for registration has been lowered: marks that would have been refused as merely "capable of distinguishing" under the 1958 Act may now qualify if they are not caught by Section 9 and possess capability of distinguishing the relevant goods or services.

The proviso to Section 9(1) is the rescue clause. A mark that has acquired distinctive character through use cannot be refused under Section 9(1)(a), (b) or (c). This is a major change from the 1958 position, where a mark suffering from "inherent unsuitability" could be refused even on proof of one-hundred-percent acquired distinctiveness — the result reached in the Yorkshire case. Under the 1999 Act, the inherent-incapability doctrine has been substantially diluted; even marks with significant inherent weakness can be saved by sufficient evidence of acquired distinctiveness.

Descriptive marks — Section 9(1)(b)

Section 9(1)(b) refuses registration to marks that consist exclusively of indications serving in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin, time of production, or other characteristics of the goods or services. The principle is that words descriptive of the goods are not prima facie distinctive — the more apt a word is to describe the goods, the less apt it is to distinguish them. A common word having reference to the character or quality of goods, with no reference to anything else, cannot be an apt instrument for distinguishing one trader's goods from another's.

The reference to character or quality must be direct and plain, not remote and far-fetched. The test is the common understanding of the term among people who use it, not the dictionary meaning. The Delhi High Court has held (AIR 1972 Del 46) that the word "Sun" for lanterns is not a laudatory term having direct reference to the character or quality of goods, even though sunlight and lantern light both dispel darkness — the connection was too far-fetched to qualify as direct descriptive reference.

Laudatory epithets — "Perfect", "Best", "Superfine" — are pure quality praise and can almost never lose their primary descriptive meaning. The same is true of words descriptive of the intended use, such as "Coldmaster" for refrigerators or "Tastee-Freez" for ice-cream. The position softens, however, where the descriptive element is combined with other distinctive material; the resulting composite mark may possess inherent or acquired distinctiveness as a whole and become registrable.

Customary marks — Section 9(1)(c)

Section 9(1)(c) refuses registration to marks consisting exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade. The purpose is the same as Section 9(1)(b) — to keep the public domain free of monopolies in ordinary language. "Janta" for torches and "Rasoi" for cooking oil are textbook examples; both are common Hindi words denoting either the consuming public or the activity of cooking, and both were refused registration under the 1958 Act for that reason. Under the 1999 Act, the same words remain refusable under Section 9(1)(c) — though, in principle, the proviso to Section 9(1) leaves open the door for registration on proof of acquired distinctiveness.

In Hindustan Development Corporation v. Dy. Registrar of Trade Marks (AIR 1955 Cal 519), the Calcutta High Court refused registration of the word "Rasoi" for hydrogenated groundnut oil. The court held that the word "Rasoi" had a direct reference to the character of the goods (the normal use of hydrogenated oil being for cooking), and that even if it lacked such direct reference, no monopoly should be granted in a common word of the language. In Geep Flashlight Industries v. Registrar of Trade Marks (AIR 1972 Del 179), the Delhi High Court refused registration of the word "Janta" for electric torches; the word was a common Hindi word meaning "the people", and the Registrar properly exercised his discretion to keep it open for any trader to use bona fide.

Geographical names

The name of a place when applied to any article of commerce will, in general, serve to indicate only that the article is manufactured at that place and not by a particular trader. Prima facie, geographical names are incapable of serving the source-identifying purpose of a trade mark. In Imperial Tobacco Co. v. Registrar, Trade Marks (AIR 1977 Cal 413), the Calcutta High Court refused registration of the word "Simla" for cigarettes despite extensive evidence of acquired distinctiveness; "Simla" was a famous geographical name and, under the 1958 Act, no degree of acquired distinctiveness could counterbalance such inherent unsuitability.

Several earlier cases applied the same rule strictly: "Liverpool" refused for cables, "Yorkshire" refused for copper tubes despite proof of one-hundred-percent acquired distinctiveness, "India" refused for electric fans, "Kent" refused for cigarettes. By contrast, fanciful uses of geographical names — "North Pole" for sewing machines, "Magnolia" for antifriction metal — were allowed because no ordinary purchaser would treat them as indicating the place of manufacture. The leading authority on the fanciful-versus-real distinction is Magnolia Metal Co. Trade Marks ((1897) 14 RPC 265), which held that a word does not become a geographical name simply because some place upon the earth's surface has been called it; what matters is the popular meaning the word would bear to ordinary people.

The 1999 Act softens the position. Section 9(1)(b) refers to "geographical origin", not "geographical word" as the 1958 Act had done. A geographical word that does not exclusively designate the geographical origin of the goods, or one used in conjunction with other distinctive features, may be registered. And the proviso to Section 9(1) restores the Yorkshire-style mark to registrability on proof of acquired distinctiveness. The strict bar of the 1958 Act has therefore yielded to a more nuanced inquiry under the 1999 Act.

Invented words — the Solio tests

Invented or newly coined words are prima facie distinctive and constitute perhaps the strongest category of trade marks. The leading case is Eastman Photographic Materials Co. Ltd. v. The Comptroller General of Patents, Designs and Trade Marks ((1898) AC 571) — the Solio case — in which the House of Lords held that the word "Solio" was an invented word for photographic paper, even though letters S-O-L could be traced to the Latin word for sun. Lord Shand laid down that there must be invention, not merely the appearance of invention; the word should be "clearly and substantially different from any word in ordinary and common use".

Several propositions emerge from this leading authority on invented words and from the body of law catalogued in the chapter on landmark trademark cases: (i) the quantum of invention is immaterial; (ii) the word need not be wholly meaningless and may contain a covert and skilful allusion to the character or quality of the goods; (iii) appearance of invention by mere addition of a meaningless syllable to an ordinary word is not sufficient; (iv) the word must be taken as a whole; and (v) a foreign word is not an invented word merely because it is not current in English. Words held to be invented include Kodak, Bovril, Kynite, Dustik, Dropovit and Whisquer. Words held not to be invented include Washerine, Absorbine, Fanfold, Bioscope and Uneeda — most because they are mere variations on ordinary English words with predictable terminations.

Section 9(2) — deception, religion, scandal and prohibited emblems

Section 9(2) is the public-policy backstop of the 1999 Act. It refuses registration of a mark that:

1. is of such nature as to deceive the public or cause confusion [Section 9(2)(a)];
2. contains or comprises any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India [Section 9(2)(b)];
3. contains scandalous or obscene matter [Section 9(2)(c)]; or
4. its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 [Section 9(2)(d)].

Section 9(2)(a) — deception or confusion — is the most frequently litigated. The prohibition is absolute: if any mark is likely to cause confusion or deception in the market by any reason whatsoever, whether it resembles any existing mark or not, the Registrar is mandated to refuse registration. The deception ground works alongside the conflict-with-earlier-mark grounds in Section 11 and is often pleaded in the alternative. The provision protects the buying public, not the proprietor of any earlier mark, and any person — not merely the proprietor of an earlier mark — may invoke it. It overlaps with Section 11 in many cases, but its reach extends beyond the conflict-with-earlier-mark scenario covered by Section 11; it is a freestanding bar where the mark, viewed in isolation, has the capacity to deceive.

The remaining clauses are narrow and specific. Section 9(2)(b) catches marks containing matter offensive to religious sentiment — portraits of religious figures, names of deities used commercially, or symbols sacred to a community used as ordinary trade marks. Section 9(2)(c) catches scandalous or obscene matter. Section 9(2)(d) cross-refers to the Emblems and Names (Prevention of Improper Use) Act, 1950, which prohibits the use of certain national emblems, official seals, the names "Mahatma Gandhi" and "Indira Gandhi" and similar protected designations.

Section 9(3) — prohibited shapes

Section 9(3) deals with shape marks. It provides that a mark shall not be registered as a trade mark if it consists exclusively of:

1. the shape of goods which results from the nature of the goods themselves [Section 9(3)(a)];
2. the shape of goods which is necessary to obtain a technical result [Section 9(3)(b)]; or
3. the shape which gives substantial value to the goods [Section 9(3)(c)].

The provision has a clear functional logic. The first limb prevents the registration of generic shapes — an apple-shaped trade mark for an apple. The second limb prevents trade-mark registration from being used to extend, perpetually, the protection that should have been sought under patent law for technical solutions. The third limb prevents trade-mark registration from extending, perpetually, the protection that should have been sought under designs law for aesthetically valuable shapes. The three exclusions together police the boundary between trade marks (perpetual, source-identifying) and patents/designs (time-limited, technically or aesthetically functional).

All shape marks must additionally satisfy the general distinctiveness test of Section 9(1)(a). Shape marks, like colour and smell, are not inherently distinctive; substantial evidence of acquired distinctiveness is normally required before a shape can be registered as a trade mark. A composite mark consisting of one of the prohibited shapes plus additional distinctive features may, however, be registrable as a whole — Section 9(3) bars only marks consisting exclusively of the prohibited shapes. Even if a shape clears Section 9(3), its enforcement against later users still depends on the contours of infringement of a registered trademark under Section 29, where deceptive similarity and the likelihood of confusion remain the controlling tests.

Section 10 — limitation as to colour

Section 10 deals with colour limitations on a trade mark. Section 10(1) allows a trade mark to be limited wholly or in part to any combination of colours, and any such limitation is to be taken into consideration by the Registrar in deciding the distinctive character of the mark. Section 10(2) provides that, where a trade mark is registered without limitation of colour, it is deemed to be registered for all colours. The provision sits alongside Section 9 and complements the colour-combination limb of the "mark" definition in Section 2(1)(m).

The 1958-to-1999 transition — what changed

For exam purposes, four shifts in the Section 9 regime between the 1958 and 1999 Acts are worth committing to memory:

1. The 1958 Act framed Section 9 as a positive list of registrable categories. The 1999 Act frames it as grounds for refusal. Whatever is not prohibited and is capable of distinguishing is registrable.
2. The 1958 Act maintained Part A (adapted to distinguish) and Part B (capable of distinguishing) of the register, with different rights attached to each. The 1999 Act collapses both into a single register with uniform rights.
3. The 1958 Act treated inherent unsuitability as fatal — no degree of acquired distinctiveness could rescue marks like "Yorkshire" or "Simla". The 1999 Act, through the proviso to Section 9(1), allows acquired distinctiveness to rescue such marks.
4. The 1958 Act expressly listed names, signatures, invented words, descriptive non-geographical words and other distinctive marks as registrable categories. The 1999 Act drops this enumerative scheme; any mark satisfying Section 2(1)(zb) and not caught by Section 9 is registrable.

Distinctiveness — necessary but not always sufficient

Even under the 1958 Act, distinctiveness was a necessary but not sufficient condition for registration. The Registrar retained discretion under Section 18(4) to refuse registration of a mark that, although technically distinctive, ought not to be appropriated by any one trader — typically common words of the language or geographical names of important commercial centres. That residual discretion survives, in altered form, under the 1999 Act, but the proviso to Section 9(1) tilts the inquiry towards registrability where acquired distinctive character is convincingly proven. The downstream consequence — the registered proprietor's exclusive right to use the mark — is examined in the chapter on effect of registration under Section 28.

Certification marks — partial exemption from Section 9(1)

Section 69 of the 1999 Act provides that clauses (a) and (c) of Section 9(1) — the distinctiveness and customary-mark grounds — shall not apply to certification trade marks. The exemption recognises that a certification mark, by its nature, is concerned with certifying characteristics of goods rather than indicating a single trade source; the strict distinctiveness test designed for ordinary trade marks does not fit. Certification and collective marks are taken up at length in the chapter on collective and certification marks under Sections 61 to 78.

How Section 9 interacts with Section 11

Section 9 and Section 11 do different things. Section 9 looks at the mark in isolation and asks whether anything about its intrinsic content prevents registration. Section 11 looks at the mark in relation to earlier marks and rights of others and asks whether any conflict prevents registration. Section 9 protects the public and the public domain; Section 11 protects existing trade-mark proprietors. The two are not mutually exclusive — a single mark can fail both — but the analytical entry points are distinct, and a candidate who collapses them into a single inquiry has misunderstood the architecture of Chapter II.

Section 9(2)(a) (deception or confusion) does, however, overlap with Section 11. If the deception complained of arises from confusion with an earlier reputed mark, both provisions can be invoked. The Registrar will use Section 9(2)(a) where the public-deception angle is the primary concern, and will use Section 11(1), (2) or (3) where the conflict-with-earlier-mark angle is the primary concern. The distinction is important for who can object — Section 9(2)(a) is open to any person; Section 11 is principally a weapon in the hands of the proprietor of an earlier mark or earlier right.

Why Section 9 matters for the exam

Section 9 is the single most heavily examined provision in the trade-mark syllabus. Typical questions ask the candidate to apply the absolute grounds to specific words — "Heatin" for tea, "Coldmaster" for refrigerators, "Shalimar" for paints, "Tiger" for umbrellas, "Nilgiri" for coffee, "Janta" for torches — and explain whether each can be registered under the 1999 Act. The discipline is consistent: identify the relevant clause, apply the test, mention the leading authority, and conclude with the position under the proviso. Place the answer alongside the related procedural and infringement chapters — the opposition to registration under Section 21, and the passing-off remedy under Sections 27, 134 and 135 — and the structural picture is complete. For the wider hub, see Trade Marks Act, 1999 notes.

Frequently asked questions

What is the difference between absolute grounds and relative grounds for refusal of registration?

Absolute grounds, in Section 9, look at the intrinsic qualities of the mark itself — distinctiveness, descriptiveness, customary use, deception, religious offence, scandalous matter, prohibited shape. They protect the public and the public domain, and any person can invoke them. Relative grounds, in Section 11, look at the mark in relation to earlier marks and rights of third parties — conflict with an earlier registered mark, similarity to a well-known mark, or liability to be prevented under the law of passing-off or copyright. Relative grounds principally protect existing trade-mark proprietors and are most often raised by them in opposition proceedings.

Can a descriptive word ever be registered as a trade mark under the 1999 Act?

Yes — under the proviso to Section 9(1). A descriptive mark caught by Section 9(1)(b) can be saved if it has, before the date of application, acquired a distinctive character through use, or is a well-known trade mark. The acquired-distinctiveness route requires evidence of long, continuous and intensive use sufficient to convince the Registrar that the relevant public has come to associate the mark with one trade source. Pure laudatory words like "Perfect" or "Best" are very difficult to rescue, but combinations and skilful allusions can succeed.

Why was "Yorkshire" refused registration even on proof of one-hundred-percent acquired distinctiveness?

Under the 1958 Act and pre-TRIPS doctrine, inherent unsuitability of a geographical name was treated as fatal — no amount of acquired distinctiveness could counterbalance the public interest in keeping the name of an important commercial place free for all traders. "Yorkshire" for copper tubes, "Liverpool" for cables and "Simla" for cigarettes were all refused on this principle. Under the 1999 Act, the proviso to Section 9(1) allows such marks to be registered on proof of acquired distinctive character, so the strict 1958 result would no longer follow.

What three categories of shape marks are barred by Section 9(3)?

Section 9(3) refuses registration of a mark that consists exclusively of (a) the shape of goods that results from the nature of the goods themselves; (b) the shape that is necessary to obtain a technical result; or (c) the shape that gives substantial value to the goods. The first limb prevents monopoly over generic shapes, the second prevents trade marks from substituting for expired patents, and the third prevents trade marks from substituting for expired design protection. A composite mark containing a prohibited shape plus additional distinctive material may still be registrable as a whole.

How is the test for an "invented word" applied under the 1999 Act?

The classical tests come from Eastman Photographic Materials Co. Ltd. v. The Comptroller General (the Solio case): the quantum of invention is immaterial; the word need not be wholly meaningless and may contain a covert allusion to the character of the goods; appearance of invention by mere addition of a meaningless syllable to an ordinary word is not sufficient; the word must be taken as a whole; and a foreign word is not invented merely because it is not current in English. Under the 1999 Act, invented words qualify as trade marks under Section 2(1)(zb) and are presumed to possess distinctive character, so they pass Section 9 with little difficulty.