Introduction
Trademarks have evolved far beyond mere symbols or words—they represent the very identity of businesses, embodying years of investment, consumer trust, and brand value. In today’s competitive market, a unique and legally protected brand identity is crucial for business success.
However, not every proposed trademark passes the rigorous examination process under Indian law. The Trade Marks Act, 1999 provides clear guidelines for determining whether a mark qualifies for registration, focusing on two main categories: Absolute Grounds and Relative Grounds for refusal.
Legal Framework
The Trade Marks Act, 1999 governs the registration and protection of trademarks in India, aligning the country’s legal framework with international standards.
The Act establishes a two-tiered examination process:
- Examination by the Trademark Registry
- Opposition Proceedings
This ensures that only those marks that meet both legal and commercial criteria are granted registration.
Under this system, a trademark may be refused registration if it violates either absolute grounds (inherent deficiencies in the mark itself) or relative grounds (conflicts with existing marks).
Trademark Protection Lawyer in Basavanagudi
Absolute Grounds for Refusal – Section 9 of the Trade Marks Act, 1999
Absolute grounds concern the inherent nature of the mark, regardless of any other existing trademarks. These are public interest checks that prevent monopolization of generic or deceptive symbols.
1. Lack of Distinctiveness
Marks that fail to distinguish the goods or services of one entity from another cannot be registered.
Example: The word “Book” cannot be registered for a bookstore, as it is a generic term.
2. Descriptive Marks
Marks that describe the kind, quality, quantity, or origin of goods or services are generally refused.
Example: The term “Sweet” for chocolates is descriptive and non-distinctive.
3. Deceptive or Confusing Marks
Marks likely to deceive or mislead consumers about the nature, quality, or origin of goods are refused.
Example: Registering “Silk” for synthetic fabric would be misleading.
4. Scandalous or Obscene Marks
Marks containing scandalous or obscene material or those that may offend religious sentiments are not permitted.
5. Customary or Common Terms
Words or symbols commonly used in trade or language cannot be monopolized.
6. Marks Prohibited by Law
Certain names, emblems, or symbols protected by law cannot be registered, such as:
- National flags and state emblems
- UN or Red Cross symbols
- Religious symbols (when used inappropriately)
- Official government hallmarks
Relative Grounds for Refusal – Section 11 of the Trade Marks Act, 1999
Relative grounds concern the relationship between a proposed mark and existing marks. They are primarily designed to prevent consumer confusion and protect the rights of prior trademark holders.
1. Similarity with Existing Marks
If a proposed mark is identical or similar to an existing registered mark for the same or related goods/services, it will be refused.
Example: “Coca-Kola” would be rejected due to similarity with “Coca-Cola.”
2. Well-Known Trademarks
A mark that is similar to a well-known trademark can be refused even for unrelated goods/services. This protects the reputation of iconic brands such as Mercedes-Benz or Apple.
3. Unfair Advantage or Detriment
A trademark may be refused if its registration takes unfair advantage of or harms the distinctive character or reputation of an existing mark.
4. Passing Off
Even an unregistered mark with established goodwill can block a new registration through a passing off claim.
This common law principle safeguards businesses from unfair competition and customer confusion.
Key Judicial Precedents
Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001)
The Supreme Court introduced the “Cadila Test” for determining likelihood of confusion, emphasizing stricter scrutiny for pharmaceutical products, where consumer confusion could have health implications.
Daimler Benz AG v. Hybo Hindustan (1994)
The Delhi High Court restrained the use of “BENZ” for underwear and socks, recognizing “Mercedes-Benz” as a well-known mark deserving of protection even across unrelated goods.
Kabushiki Kaisha Toshiba v. Tosiba Appliances (2024)
The court reaffirmed that an existing registered mark (“Toshiba”) retains priority, preventing registration of deceptively similar marks (“Tosiba”), strengthening the doctrine of trademark seniority.
Yatra Online Limited v. Mach Conferences and Events Limited (2025)
The Delhi High Court rejected an injunction claim over “BookMyYatra”, ruling that “Yatra” (meaning “journey” in Hindi) is generic in the travel context and hence not exclusively protectable.
Conclusion
The distinction between absolute and relative grounds for trademark refusal represents more than a legal classification—it reflects the balance between public interest, fair competition, and brand protection.
For businesses, understanding these grounds is essential to crafting a defensible and distinctive brand identity. As India’s trademark landscape evolves, those who master these nuances will be best equipped to secure lasting brand value and avoid costly legal hurdles.
Disclaimer: This blog is for general informational purposes only and does not constitute legal advice. Privacy laws may vary based on circumstances and jurisdiction. Readers are advised to consult a qualified legal professional, such as Bisani Legal, for specific advice regarding data protection, privacy rights, or related legal concerns.
