Topic 32 — Absolute Grounds for Refusal of Registration

Section 9 of the Trade Marks Act 1999 lists the absolute grounds on which the Registrar must refuse registration of a trademark. The grounds are called "absolute" because they relate to qualities of the mark itself — its inherent capacity to function as a trademark — and operate independently of any prior third-party rights. Marks that fall foul of Section 9 cannot enter the Register at all, regardless of how the applicant proposes to use them. This topic walks through each sub-section in detail, the proviso that saves marks with acquired distinctiveness or well-known status, the special bar on functional shapes, the "scandalous and obscene" exception, and the bar on emblems protected by the Emblems and Names (Prevention of Improper Use) Act 1950.

1. The Architecture of Section 9

Section 9 contains two principal sub-sections — Section 9(1) and Section 9(2) — followed by a saving proviso to Section 9(1) and a separate Section 9(3) on functional shapes:

(1)

DISTINCTIVENESS

devoid · descriptive · customary

(2)

PUBLIC INTEREST

deceptive · scandalous · emblems

(3)

FUNCTIONAL SHAPES

absolute bar

2. Section 9(1) — Distinctiveness Grounds

Section 9(1) — Verbatim

"The trade marks — (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist 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; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark."

A. Section 9(1)(a) — Devoid of Distinctive Character

A mark is "devoid of distinctive character" if it cannot, even potentially, function as a source identifier. This is the broadest of the three sub-clauses and serves as a residual catch-all. Examples:

A single letter or numeral that is too plain to identify a source — e.g., the digit "5" alone for a soft drink.
A simple geometric shape — circle, square, triangle — without distinctive elaboration.
A common surname used in a manner that does not distinguish — e.g., "Sharma" for a generic product.
Marks that are merely laudatory — "BEST", "PREMIUM", "SUPER" — without any distinguishing feature.

B. Section 9(1)(b) — Descriptive Marks

Sub-clause (b) bars marks that consist exclusively of indications that may serve in trade to designate the qualities of the goods or services. The list includes kind, quality, quantity, intended purpose, values, geographical origin, or time of production. Examples:

"FRESH" for vegetables — describes a quality of the goods.
"SHARP" for cutlery — describes a quality (until acquired distinctiveness, as in Marico v. Agro Tech).
"500ML" for bottled water — describes the quantity.
"HIMALAYAN" for water sourced elsewhere — geographical origin and may also be deceptive under Section 9(2).

✅ Why descriptive marks cannot be monopolised

A descriptive mark cannot be monopolised because every trader needs to be able to describe his goods truthfully. If "FRESH" were registered for vegetables, every other vegetable seller would be barred from advertising freshness. The descriptive bar protects the public interest in fair competition and language. The proviso to Section 9(1) is the safety valve — through long, exclusive use, a descriptive mark can acquire secondary meaning that allows it to be registered (Marico v. Agro Tech, Del HC 2010).

C. Section 9(1)(c) — Customary or Generic Marks

Sub-clause (c) bars marks that have become customary in the current language or trade. This is the closest analog to genericness. Examples:

"ESCALATOR" — once a brand, now generic for moving stairs (genericide in some jurisdictions).
"ASPIRIN" — generic in many jurisdictions.
"NYLON" — generic for synthetic fabric.
"PHOTOSHOP" — at risk of genericide; Adobe vigorously polices the term.

✅ Genericide is irreversible

Once a mark becomes generic, it cannot recover its distinctiveness. There is no "acquired distinctiveness" pathway for genericised terms because the public has come to use the term as the name of the product itself. Trademark proprietors must therefore actively police usage — through public-relations campaigns ("Photocopy not Xerox", "BAND-AID brand adhesive bandages"), enforcement against improper use, and consistent advertising that reinforces the mark as a brand identifier rather than a category name.

3. The Proviso to Section 9(1) — The Saving Clause

The proviso to Section 9(1) is the safety valve. A mark that would otherwise be refused under sub-clause (a), (b) or (c) may still register if, before the date of application:

It has acquired a distinctive character through use, OR
It is a well-known trade mark.

The proviso operates as the gateway through which descriptive and weakly distinctive marks gain entry to the Register. Topic 30 covered the doctrine of acquired distinctiveness in detail. Topic 31 covered well-known marks.

✅ What the proviso does NOT save

The proviso applies only to Section 9(1) — distinctiveness grounds. It does NOT save marks that fall foul of: · Section 9(2) — public-interest grounds (deception, scandal, hurt sentiments, emblems); · Section 9(3) — functional shapes. A scandalous mark cannot be saved by acquired distinctiveness; a functional shape cannot be saved by long use. The proviso is targeted at distinctiveness and only at distinctiveness.

4. Section 9(2) — Public-Interest Grounds

Section 9(2) — Public-Interest Grounds

"A mark shall not be registered as a trade mark if — (a) it is of such nature as to deceive the public or cause confusion; (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (c) it comprises or contains scandalous or obscene matter; (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950."

A. Section 9(2)(a) — Deception or Confusion

A mark is unregistrable if it is deceptive or confusing in itself — irrespective of any other party's rights. Examples include:

"PURE GOLD" for goods that are not gold — deceptive as to material.
"INDIA POST" for non-postal services — deceptive as to source.
"DARJEELING TEA" for tea not from Darjeeling — deceptive as to geographical origin (also barred under the GI Act 1999).
"DOCTOR'S CHOICE" for medical preparations not endorsed by doctors — deceptive as to character.

✅ Section 9(2)(a) deception vs. Section 11 confusion

Section 9(2)(a) deals with marks that are deceptive in themselves — independent of any third-party rights. Section 11(1) deals with marks that cause confusion with prior marks. The first is an absolute ground (Section 9 family); the second is a relative ground (Section 11 family). A mark like "INDIAN AIRLINES" used by a non-state entity could fall foul of both — deceptive about state affiliation (Section 9(2)(a)) and confusing with the actual carrier (Section 11(1)).

B. Section 9(2)(b) — Religious Susceptibilities

A mark is unregistrable if it contains matter likely to hurt religious susceptibilities of any class or section of Indian citizens. The provision recognises India's religious diversity and protects against commercial exploitation of religious symbols, names of deities, sacred texts and places of worship. Examples of refused marks:

Names of Hindu deities used for unrelated commercial goods (refused on hurt-sentiment grounds).
Symbols sacred to Sikh, Muslim, Christian, Buddhist, Jain communities used in commercial branding.
Religious texts (Quran, Bible, Bhagavad Gita) used as marks.

C. Section 9(2)(c) — Scandalous or Obscene Matter

Marks containing scandalous or obscene matter are unregistrable. The standard is contemporary community standards. Examples include sexually explicit imagery, vulgar language, and content offensive to public decency. The Trade Marks Registry has refused applications for marks bearing offensive slang, vulgar imagery, or sexually suggestive content. The bar is broad and largely uncontroversial in India.

D. Section 9(2)(d) — Emblems and Names Act 1950

The Emblems and Names (Prevention of Improper Use) Act 1950 prohibits the use of certain emblems and names for trade or business purposes. A mark whose use is prohibited under that Act cannot be registered as a trademark. The Schedule to the Act includes:

The name, emblem or official seal of the President, Vice-President, Prime Minister or Governor of a State.
The State Emblem of India.
The Indian National Flag.
The name, emblem or official seal of the United Nations Organisation, World Health Organisation, World Bank or any other UN body.
The name and emblem of any Government Department, Public Sector Undertaking or office.
Mahatma Gandhi's name, image, or any device suggestive of him in connection with any commercial purpose.
The Red Cross / Red Crescent emblem (Geneva Convention 1949).

✅ National emblems and Mahatma Gandhi protection

The Emblems and Names Act 1950 reflects a deliberate policy choice — certain symbols of nationhood and certain names (most notably Mahatma Gandhi's) should not be commercialised through trademark registration. The protection is absolute: even with consent of relevant authorities, registration is refused. The same policy underlies similar refusals globally — under EU law, the names "Olympic", "Red Cross" and the names of certain national personalities are similarly protected.

5. Section 9(3) — Functional Shapes

Section 9(3) — Functional Shape Bar

"A mark shall not be registered as a trade mark if it consists exclusively of — (a) the shape of goods which results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods."

Section 9(3) lists three functional bars on shape registration. Each is absolute — no amount of acquired distinctiveness or use can save a functional shape. The provision tracks Article 7(1)(e) of the EU Trade Marks Directive and is designed to prevent trademark law from being used to monopolise functional design (which should be protected, if at all, by patents or industrial designs).

A. Sub-clause (a) — Nature of the Goods

A shape that results from the nature of the goods themselves cannot be registered. The shape of a banana for fruit, the shape of a tyre for tyres, the shape of a tennis ball for tennis balls — these are all dictated by the nature of the goods.

B. Sub-clause (b) — Necessary to Obtain a Technical Result

A shape necessary to obtain a technical result cannot be registered. The shape of a Lego brick (necessary to enable interlocking) and the shape of a Phillips screwdriver (necessary to engage Phillips screws) have been refused on this ground in foreign jurisdictions; similar reasoning applies in India.

C. Sub-clause (c) — Substantial Value of the Goods

A shape that gives substantial value to the goods cannot be registered. This is the most contested sub-clause. It applies to aesthetic shapes that consumers buy primarily for the shape itself — typically applies to luxury or designer goods where the shape is the principal commercial attribute. The intent is to push such designs into the design-protection regime (Designs Act 2000) rather than the trademark regime.

✅ How to design around Section 9(3)

A trader who wants shape-mark protection must ensure that (i) the shape is not dictated by the nature of the goods; (ii) the shape is not technically necessary; (iii) the shape's value is principally aesthetic but not so substantial as to be the main commercial attraction. The Coca-Cola contour bottle survives because its shape is not technically necessary (other bottles work), is not dictated by the nature of cola, and its value is principally identification rather than aesthetic primacy.

6. The Practical Approach to Section 9 Analysis

✅ Six-step Section 9 analysis

Step 1 — Section 9(2)(d) check: Is the mark prohibited under the Emblems and Names Act 1950? If yes, refusal is absolute and unconditional. (Stop here.)

Step 2 — Section 9(3) check: Does the mark consist exclusively of a functional shape? If yes, refusal is absolute. (Stop here.)

Step 3 — Section 9(2)(b)/(c) check: Does the mark contain hurt-religious-sentiment or scandalous matter? If yes, refusal is absolute. (Stop here.)

Step 4 — Section 9(2)(a) check: Is the mark deceptive in itself? If yes, refusal is absolute (cannot be cured by use). (Stop here.)

Step 5 — Section 9(1) check: Is the mark generic, descriptive or non-distinctive? If yes, move to Step 6.

Step 6 — Proviso check: Does the mark have acquired distinctiveness OR well-known status? If yes, registration permitted; if no, refusal under Section 9(1).

7. Drafting and Filing Considerations

✅ Eight points for trademark filers facing Section 9 issues

For descriptive marks, file with detailed evidence of acquired distinctiveness: sales figures, advertising spend, geographical reach, consumer recognition surveys.

For shape marks, ensure the shape is not the inevitable result of the goods' nature, is not technically necessary, and is not the main aesthetic value driver.

For colour marks, file with Pantone codes plus extensive evidence of acquired distinctiveness — bare colour rarely satisfies Section 9(1)(a).

For sound marks, provide MP3 plus musical notation in compliance with TM Rules 2017.

For potentially scandalous or religiously sensitive marks, secure pre-filing legal opinion — refusal is unappealable on use grounds.

Avoid use of any item in the Schedule to Emblems and Names Act 1950 — Mahatma Gandhi, national flag, government insignia.

For composite marks where one element is descriptive, structure the application so the dominant element is distinctive.

On Section 9 examination report, respond with the proviso evidence within 30 days; failure to respond results in deemed abandonment.

🎯 EXAM POINTERS — TOPIC 32

Section 9 — absolute grounds; relate to qualities of mark itself.
Section 9(1) — distinctiveness grounds: (a) devoid of distinctive character; (b) descriptive; (c) customary/generic.
Section 9(1) proviso — saves marks with acquired distinctiveness OR well-known status.
Marico v. Agro Tech (Del HC 2010) — leading case on acquired distinctiveness for descriptive marks (SHARP for cooking oil).
Section 9(2) — public-interest grounds: (a) deceptive; (b) hurt religious sentiments; (c) scandalous/obscene; (d) Emblems and Names Act 1950.
Emblems and Names (Prevention of Improper Use) Act 1950 — protects national emblems, flag, Mahatma Gandhi, UN, Red Cross.
Section 9(3) — functional shapes: (a) nature of goods; (b) technical result; (c) substantial value. Cannot be cured by acquired distinctiveness.
Genericide — irreversible loss of distinctiveness; no acquired-distinctiveness pathway.
Section 9 vs Section 11 — absolute vs relative grounds; mark itself vs prior third-party rights.
Six-step Section 9 analysis: (1) Emblems Act → (2) functional shape → (3) hurt sentiment/scandalous → (4) deceptive → (5) distinctiveness → (6) proviso.