Navigating the Registration Criteria: Absolute and Relative Grounds for Trademark Refusal

When a business applies to register a trademark in India, the application does not automatically sail through. The Trade Marks Act, 1999 sets out specific criteria under which a mark can be refused registration. These criteria fall under two broad heads – absolute grounds under Section 9 and relative grounds under Section 11. Understanding both is essential for anyone looking to build a legally protected brand, because a refusal at the registry is not just a procedural setback – it can mean months of delay, costly rebranding, or even litigation. There is, however, an important safety valve built into this framework: the concept of honest concurrent use under Section 12, which can allow similar or even identical marks to coexist under specific conditions.

Absolute grounds for refusal: it’s about the mark itself 🔗

Section 9 of the Trade Marks Act, 1999 lays down absolute grounds for refusal. These grounds are concerned entirely with the inherent nature of the mark – they apply regardless of whether any similar mark exists in the marketplace. The Registrar examines the mark in isolation and asks: does this mark, on its own, qualify for registration?

Lack of distinctiveness 🔗

The most fundamental requirement of any trademark is that it must be capable of distinguishing the goods or services of one person from those of another. A mark that is too generic or common cannot function as a source identifier. Consider a company wanting to register “SWEET” for a chocolate brand – the word tells consumers nothing about origin; it simply describes a quality of the product. Such a mark would be refused for lacking distinctive character.

Distinctiveness can be inherent (the mark is unique by nature, like an invented word such as “Xerox”) or acquired (the mark has become associated with a brand over time through extensive commercial use). If an applicant can demonstrate that a mark has acquired distinctiveness through prolonged and continuous use, the Registrar may still allow its registration even if it was originally non-distinctive.

Descriptiveness 🔗

A trademark consisting of marks or indications that designate the kind, quality, quantity, values, geographical origins, or time of production of goods or services will be refused. So a word like “SoftDrink” for beverages, or “Delhi Tea” for tea, cannot be monopolised by any single trader – these expressions need to remain freely available for competitors in the trade to use. The law’s logic here is straightforward: allowing one player to exclusively claim a descriptive term would unfairly restrict others in the same business from accurately describing their own products.

Customary usage 🔗

Marks or signs that have become customary in the current language or in the bona fide and established practices of trade cannot be registered. The German word “AUTO” for motor cars is a classic example – it has become so generic within the trade that no single manufacturer can claim it as their own. Similarly, a colour combination that is commonly used across an entire industry (such as the red-and-white combination in toothpaste packaging) cannot be monopolised by any one player.

Deceptiveness, morality, and prohibited symbols 🔗

Section 9 also bars marks that are likely to deceive or cause confusion about the nature, quality, or origin of goods. A mark that falsely suggests a product is organic when it is not, for instance, would fall here. Marks that are contrary to public policy, scandalous, obscene, or hurt religious sentiments are similarly excluded. Names like Subhash Chandra Bose or Indira Gandhi, or national symbols like the Indian flag, cannot be registered as trademarks.

There is also a specific exclusion for shapes: a mark cannot consist exclusively of the shape that results from the nature of the goods themselves, a shape that is technically necessary to achieve a certain result, or a shape that gives substantial value to the goods. This prevents manufacturers from using trademark law as a backdoor to extend monopolies over functional product designs.

Relative grounds for refusal: it’s about conflict with earlier rights 🔗

Section 11 of the Trade Marks Act, 1999 deals with relative grounds for refusal, which concern potential conflicts between a new trademark application and existing rights. Unlike absolute grounds, relative grounds are not about the mark in isolation – they arise when the proposed mark comes into conflict with an already registered or applied-for trademark, a well-known trademark, or other prior rights such as copyright. The central concern here is the likelihood of confusion among consumers.

Identity or similarity with an earlier mark 🔗

If the proposed mark is identical or similar to an earlier registered trademark, and the goods or services involved are identical or similar, registration will be refused because consumers are likely to be confused about the source of the product. A beverage company applying for “Peppsi,” for instance, would face refusal because of its similarity to “Pepsi” and the identical nature of the goods. The law also covers indirect confusion – situations where consumers may not think two brands are the same entity, but assume there is some commercial association between them.

The Registrar considers a range of factors when assessing likelihood of confusion: the visual, phonetic, and conceptual similarity of the marks, the similarity of the goods or services covered, and the distinctiveness of the earlier mark. The stronger the earlier mark’s reputation, the wider the protection it commands.

Protection of well-known trademarks 🔗

A proposed mark that is identical or similar to a well-known trademark in India will be refused even if the goods or services are in a completely different category – provided that use of the new mark would unfairly take advantage of, or damage, the distinctive character or reputation of the well-known mark. This cross-category protection is critical: it means a globally recognised mark like “Apple” in electronics cannot simply be copied for, say, an apparel brand. The applicant would need to show “due cause” – a legitimate reason for adopting the similar mark – and without that, refusal follows.

Conflict with other prior rights 🔗

Section 11 also covers situations where registration of a new mark would be prevented by the law of passing off (which protects unregistered but established trademarks) or by copyright law. If a small business has been using an unregistered logo for years and a new applicant tries to register a confusingly similar mark, the older user’s rights can form the basis for refusal. This ensures that the registration system does not become a tool for appropriating goodwill that rightfully belongs to an earlier user.

Honest concurrent use: the exception under Section 12 🔗

The absolute bar imposed by Section 11 against identical or similar marks has a notable exception. Section 12 of the Trade Marks Act, 1999 permits the Registrar to allow more than one proprietor to register identical or similar trademarks for the same or similar goods or services, provided there is honest concurrent use or other special circumstances that make such registration appropriate. The Registrar retains full discretion in this matter and may impose conditions or limitations on the concurrent registrations.

The key idea behind honest concurrent use is that two traders may independently and in good faith adopt the same or similar mark – often in different geographical regions, or without knowledge of each other’s use – and over time both develop legitimate goodwill under that mark. It would be unfair to extinguish one party’s rights simply because the other filed for registration first. In the case of Durex Products Inc. v. London Rubber Co., the Supreme Court of India permitted the Registrar to register identical marks in respect of the same goods where honest concurrent use by more than one proprietor was established.

What makes concurrent use “honest”? 🔗

The courts and the Registrar look for evidence of good faith adoption – meaning the applicant was unaware of the earlier mark when they started using their own, or had independent justification for their choice. Key factors that are evaluated include: the duration, area, and volume of the mark’s concurrent use; the degree of confusion actually caused in the market; the honesty of the applicant’s conduct; and the relative strength of both parties’ claims.

Documentary evidence that supports an honest concurrent use claim includes records proving the period of use, advertising materials and expenditure figures, and sales accounts showing the annual turnover under the mark. This evidence collectively demonstrates that consumers have come to associate the mark with the applicant’s goods or services – and that the mark has developed independent goodwill in their hands.

Judicial illustrations 🔗

In Goenka Institute of Education and Research v. Anjani Kumar Goenka, the Delhi High Court allowed both parties to continue using “Goenka” as part of their marks because they had independently adopted the name, operated in different cities, and had caused minimal public confusion. The court imposed a condition that the applicant display its trust name below the school name to further distinguish the two – an example of the Registrar-equivalent discretion courts exercise to regulate concurrent registrations.

However, Section 12 has limits. Courts have held that concurrent registration does not automatically provide a defence against trademark infringement once a registered proprietor has established exclusive rights. Section 12 is a basis for registration, not a free pass in infringement proceedings. Additionally, the defence of honest concurrent use applies only when the applicant can show actual use of the mark as a trademark – merely using an expression as an acronym or a descriptive abbreviation does not qualify, as the Bombay High Court clarified in ITM Trust v. Educate India Society.

How absolute and relative grounds work together 🔗

In practice, every trademark application in India goes through a two-stage filter. The examiner first checks whether the mark clears the absolute grounds under Section 9 – examining its inherent registrability – and then checks whether it passes the relative grounds under Section 11 by comparing it against earlier marks on the register. A mark must clear both stages. Failing on absolute grounds means the mark is inherently unregistrable, regardless of what else is on the register. Failing on relative grounds means the mark may be perfectly distinctive on its own, but it conflicts with someone else’s prior rights.

If the Registrar refuses an application, Section 18(5) requires that the reasons be recorded in writing and communicated to the applicant. The applicant then has the option to seek a review of the Registrar’s decision, and further appeals lie before the High Court. This structured review mechanism ensures that decisions on trademark registrability are not arbitrary and that applicants have a fair opportunity to challenge objections.

Choosing a trademark is therefore not just a creative exercise – it is a legal one. A mark that is purely descriptive, that echoes a well-established brand, or that has no inherent capacity to function as a source identifier will face significant legal headwinds before the Trademark Registry. On the other hand, a mark that is coined, distinctive, and conflict-free has the strongest chance of registration and the broadest protection once registered.

What do you think? If two businesses in different Indian states independently build their brand around the same name over many years, should the law allow both to coexist under the honest concurrent use doctrine – or does that risk creating lasting consumer confusion? And given that descriptive marks are generally refused, how should a startup balance the instinct to choose a self-explanatory brand name against the trademark law’s preference for distinctive, invented marks?

References

1. https://www.indiacode.nic.in/show-data?actid=AC_CEN_11_60_00004_199947_1517807323972&sectionId=16797&sectionno=12&orderno=12
2. https://intellectvidhya.com/grounds-for-refusal-of-trademark-registration-in-india/
3. https://www.registerkaro.in/post/section-9-11-grounds-refusal-trademark-india
4. https://ssrana.in/ufaqs/trademark-refusal-grounds-india/
5. https://lawbhoomi.com/absolute-and-relative-grounds-for-refusal-of-trademarks/
6. https://www.intepat.com/blog/section-9-11-grounds-refusal-trademark-india
7. https://thelegalschool.in/blog/section-11-trademarks-act-1999
8. https://www.ipandlegalfilings.com/understanding-section-12-of-the-trademark-act-1999-honest-concurrent-use-and-its-implications/
9. https://blog.ipleaders.in/section-12-of-trade-marks-act-1999/
10. https://www.intepat.com/blog/honest-concurrent-use-of-a-trademark
11. https://www.khuranaandkhurana.com/honest-and-concurrent-use-under-section-12-registration-ground-or-defence-in-infringement
12. https://www.lakshmisri.com/insights/articles/use-as-trade-mark-sine-qua-non-to-claim-honest-concurrent-use/
13. https://jpassociates.co.in/section-9-and-11-of-tm-act/