A trademark application in India does not receive registration as a matter of course. Before a mark enters the Register of Trade Marks and the statutory rights of an exclusive proprietor crystallize, the application must pass through a rigorous examination process administered by the Trade Marks Registry. That examination is governed by two distinct categories of grounds for refusal – absolute grounds and relative grounds. The present article is concerned exclusively with the former.
Absolute grounds for refusal are set out in Section 9 of the Trade Marks Act, 1999. They are called absolute because they operate independently of any conflict with a prior mark. Unlike relative grounds under Section 11, which arise from the existence of an earlier competing registration or application, absolute grounds in here in the mark itself – in its nature, its meaning, its capacity to function as a trademark and its effect on public interests. A mark that fails on absolute grounds is refused not because another proprietor has a conflicting claim, but because the mark, by its very character, is unfit for registration.
The structure of Section 9 reflects a foundational principle of trademark law: protection is available only to marks that perform the essential trademark function of distinguishing the commercial origin of goods or services. A mark that cannot distinguish or one whose registration would cause harm to legitimate trade or public sensibilities – cannot be admitted to the register, regardless of who holds it or how long it has been in use.
The Structure of Section 9
Section 9 is divided into two broad parts. Section 9(1) sets out the primary absolute grounds, all of which relate to the capacity of the mark to function as a trademark in the conventional sense that is, its distinctiveness. Section 9(2) sets out three additional grounds that operate as near-absolute bars, rooted in public policy and which are harder to overcome even through evidence of use or acquired distinctiveness. Section 9(3) adds a specific exclusion for shape marks. Together, these provisions define the outer boundary of what the Indian trademark system will protect.
Section 9(1) – Lack of Distinctive Character
Section 9(1) provides that a trademark shall not be registered if it is devoid of any distinctive character or if it 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 if it 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.
These three limbs of Section 9(1) – devoid of distinctiveness, descriptive marks and customary marks – each address a different dimension of the same underlying concern: that no trader should be granted a monopoly over signs that other traders in the same field have a legitimate need to use.
Devoid of Distinctive Character
The first limb of Section 9(1)(a) targets marks that are simply incapable of distinguishing. Distinctiveness, in this context, means the capacity of a sign to identify goods or services as originating from a particular undertaking and to differentiate them from goods or services of other undertakings. This is the essence of what a trademark does. A mark that cannot perform this function has no business being on the register.
Purely descriptive marks, simple geometric shapes, single letters or numerals, common surnames and non-distinctive slogans are the categories most commonly refused under this limb. Courts and the Registry have consistently held that a mark must possess at least a minimum degree of distinctive character to qualify for registration. The test is not whether the mark is unique or unusual in absolute terms, but whether it is capable, in the minds of the relevant consumers, of pointing to a single commercial source.
The Delhi High Court addressed this principle in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. v. Anchor Health and Beauty Care Pvt. Ltd. (2014), where it examined whether a particular mark had sufficient distinctiveness to warrant protection, reinforcing the principle that the primary function of a trademark is source identification and that marks failing this function at their core cannot be registered.
Descriptive Marks – Section 9(1)(b)
The second limb, Section 9(1)(b), targets marks that consist exclusively of indications describing the characteristics of the goods or services. The word “exclusively” is critical. The provision does not prohibit descriptive elements from appearing in a mark altogether – it prohibits marks that consist of nothing but descriptive elements. A mark that combines a descriptive word with a distinctive element may succeed where a purely descriptive word alone would fail.
The rationale for excluding purely descriptive marks is firmly rooted in competitive fairness. If a trader were permitted to register the word “FRESH” for vegetables or “FAST” for courier services, every competing trader in those fields would be prevented from using accurate descriptions of their own products. The exclusive right conferred by registration would not reward creativity or brand investment – it would simply privatize ordinary language at the expense of the entire trade.
Geographical names fall within the ambit of this provision when they describe the origin of the goods. A word that consumers and traders associate with a particular region’s products – such as the name of a famous wine-producing region or a city known for a particular craft – is descriptive of geographical origin and prima facie unregistrable. The Trade Marks Registry applies this principle consistently and the courts have affirmed it in numerous decisions.
In Aggarwal Sweet Corner v. The Registrar of Trade Marks (2010), the court examined the refusal of a mark that was primarily geographical and descriptive of the quality of the goods, affirming that such marks are properly refused under Section 9(1) unless the applicant can establish acquired distinctiveness through evidence of long use and market recognition.
Customary Marks – Section 9(1)(c)
The third limb of Section 9(1) excludes marks that have become customary in the current language or established practices of the trade. These are signs that, whatever their origin, have entered into such common usage in a particular trade that they no longer point exclusively to any single commercial source. They have, in effect, become generic – part of the shared vocabulary of a trade rather than a badge of origin for any one trader.
The distinction between a descriptive mark and a customary mark is one of degree rather than kind. A descriptive mark describes a characteristic of the goods at the time of filing. A customary mark has gone further – it has been used so widely by so many traders that consumers no longer associate it with any single source. Once a mark achieves this level of generic usage, it falls outside the scope of registrable subject matter entirely.
The risk of genericness is not confined to new applications. A registered trademark can lose its protection if it degenerates into a generic term through the proprietor’s own use, through widespread third-party use or through consumer adoption of the mark as a common name for the product category. The statutory mechanism for removing such marks from the register is found in Section 47, which permits cancellation of a registration where the mark has become the common name in trade for a product or service.
Proviso to Section 9(1) – Acquired Distinctiveness
The proviso to Section 9(1) is of enormous practical importance. It provides that a mark shall not be refused registration under Section 9(1) if, before the date of application, it has acquired a distinctive character as a result of the use made of it. This concept – variously described as acquired distinctiveness, secondary meaning or factual distinctiveness – creates a pathway to registration for marks that are prima facie non-distinctive but have, through the applicant’s commercial use, come to be associated in the minds of consumers with a single source.
The doctrine of secondary meaning recognize that commercial reality sometimes diverges from lexical meaning. A word that is initially descriptive may, through extensive and exclusive use by one trader, come to carry a secondary meaning – its trademark meaning – alongside its primary descriptive meaning. When that secondary meaning becomes sufficiently established, the mark qualifies for registration despite its inherent deficiency.
The evidence required to establish acquired distinctiveness is substantial. Affidavits of use, sales turnover figures, advertising expenditure, market surveys, trade publications, consumer declarations and evidence of industry recognition are among the categories of material that an applicant may submit. The Registry and courts assess this evidence holistically, looking for evidence that the relevant consumer base has come to understand the mark as denoting a single commercial origin rather than merely describing a quality of the goods.
The Supreme Court addressed acquired distinctiveness with particular clarity in J.R. Kapoor v. Micronix India (1994), where it examined whether the term “MICRONIX” had acquired distinctiveness sufficient to support a passing off action, in the process articulating principles that apply equally to registration proceedings. The court recognised that commercial use, when sufficiently intensive and exclusive, can generate protectable rights even in marks that are prima facie commonplace.
The Delhi High Court’s decision in Godfrey Phillips India Ltd. v. Girnar Food & Beverages (P) Ltd. (2004) is also frequently cited in the context of secondary meaning, where the court examined the degree of use required to convert a descriptive mark into a distinctive one and held that the evidence of use must demonstrate not merely that the mark has been used, but that consumers have come to associate it with a particular source.
Section 9(2) – Public Policy Grounds
Section 9(2) introduces three additional absolute grounds that are qualitatively different from those in Section 9(1). While the Section 9(1) grounds are primarily concerned with the trademark’s capacity to function as a source identifier, Section 9(2) reflects broader public interest considerations. A mark may be refused under Section 9(2) even if it would otherwise be distinctive, because its registration is incompatible with public order, morality or established legal frameworks.
Section 9(2)(a) provides that a mark shall not be registered if it is of such nature as to deceive the public or cause confusion. This ground targets marks that are inherently misleading – marks that misrepresent the nature, quality or geographical origin of the goods or services to which they are applied. A mark that falsely suggests a pharmaceutical product has medicinal efficacy it does not possess or one that implies a geographical origin for goods manufactured elsewhere, may be refused on this ground. The harm contemplated is harm to consumers who rely on the mark as a signal of truth.
Section 9(2)(b) prohibits registration of marks that contain or comprise any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India. This provision reflects the sensitivity of a diverse and pluralistic society to the commercial appropriation of religious symbols, imagery or language. The courts have interpreted this ground with reference to the reaction of the class of persons whose religious susceptibilities are at issue, not by the standards of a neutral observer. A mark that a particular religious community would find offensive or sacrilegious is properly refused under this ground, regardless of the applicant’s intentions.
Section 9(2)(c) excludes marks that comprise or contain scandalous or obscene matter. This ground requires no evidence of harm to a specific group – the mark is refused because it offends accepted standards of public decency applicable to the community at large. The assessment of what constitutes scandalous or obscene matter is made by reference to contemporary community standards, which evolve over time and must be assessed at the date of application.
The grounds in Section 9(2) do not admit of the secondary meaning exception available under Section 9(1). A mark that is inherently deceptive, religiously offensive or obscene cannot acquire registrability through use, no matter how long or extensively it has been used. These are near-absolute bars, grounded in the proposition that no public interest is served by granting exclusive rights in marks of this character.
Section 9(3) – Shape Marks
Section 9(3) addresses a specific and increasingly commercially significant category – the registration of shapes as trademarks. It provides that a mark shall not be registered if it consists exclusively of the shape of goods that results from the nature of the goods themselves, the shape of goods that is necessary to obtain a technical result or the shape that gives substantial value to the goods.
This provision reflects the tension between trademark law and other intellectual property regimes – principally design law and patent law. The shapes of products are the traditional domain of design registration and technical features of shapes are the subject matter of patents. If trademark law were to permit the indefinite registration of functional shapes or shapes inherent to the nature of goods, it would effectively create a perpetual monopoly over features that should be freely available to all traders once design or patent protection expires. Section 9(3) prevents this outcome by placing such shapes outside the scope of trademark registrability entirely.
The three limbs of Section 9(3) each target a distinct category of problematic shape. The first limb – shapes resulting from the nature of the goods – excludes shapes that are inherent to the product and cannot be separated from its identity. The round shape of a ball or the rectangular shape of a brick cannot be registered as a trademark for those goods because those shapes are simply what the goods are. The second limb – shapes necessary for a technical result – excludes functional shapes. A gear tooth pattern or a bottle shape designed to improve pouring is functional; allowing trademark registration of such shapes would entrench monopolies over engineering solutions that should be freely available to all. The third limb – shapes giving substantial value to the goods – addresses aesthetic shapes, particularly in luxury goods, where the visual form of the product is a significant source of its market value. Permitting trademark registration of such shapes would give the first designer of a product category a perpetual monopoly over its aesthetic appeal, foreclosing competition in a manner inconsistent with trademark law’s purpose.
The Supreme Court has addressed shape marks in the context of passing off and trade dress protection and while authoritative judicial interpretation of Section 9(3) specifically remains developing, the principles articulated by the Court of Justice of the European Union in cases such as Lego Juris A/S v. OHIM (2010) – which concerned the refusal to register the iconic Lego brick shape on the ground that it was necessary to obtain a technical result – are instructive and have influenced the approach of practitioners and the Registry alike.
The Interplay between Section 9 and Section 11
It is important to appreciate that Section 9 and Section 11 operate as complementary but conceptually distinct filters. The examination of an application proceeds through both. A mark that passes the Section 9 filter – by demonstrating distinctive character and freedom from the public policy bars – must then be assessed against the register for conflicts with earlier marks under Section 11. A mark that is perfectly distinctive in the abstract may still be refused because it is deceptively similar to a prior registration.
Conversely, a mark that would otherwise conflict with an earlier mark may still be refused under Section 9 independently. The two enquiries are parallel and a failure under either is fatal to registration. An applicant who has invested heavily in overcoming a relative ground objection may still face an absolute ground refusal if the mark itself is inherently non-distinctive and vice versa.
Examination Practice and the Applicant’s Response
In practice, Section 9 objections are among the most common grounds on which the Trade Marks Registry raises objections in the First Examination Report. Examiners are directed by the Manual of Trade Marks Practice and Procedure to scrutinize each application for compliance with the absolute grounds requirements and objections are raised with frequency in cases involving descriptive words, geographic terms, surnames, common devices and non-conventional marks such as colors and sounds.
An applicant who receives a Section 9 objection has several available responses. Where the mark is alleged to be descriptive, the applicant may argue that the mark is used in a non-descriptive or suggestive sense, submit evidence of acquired distinctiveness under the proviso to Section 9(1) or argue that the mark as a whole – including any distinctive elements – crosses the distinctiveness threshold. Where the objection relates to public policy under Section 9(2), the applicant may contest the examiner’s assessment of the mark’s meaning or effect, though overcoming such objections is considerably more difficult. Where the objection concerns a shape mark under Section 9(3), the applicant may argue that the shape is not exclusively functional or inherent or seek to disclaim the shape element while proceeding with other distinctive elements.
The response to the Examination Report must be filed within 30 days of its issuance, with extensions available on application. Where the written response does not satisfy the examiner, a hearing may be requested, at which the applicant may present oral submissions and additional evidence. The hearing officer’s decision is then subject to appeal before the relevant High Court following the abolition of the Intellectual Property Appellate Board under the Tribunals Reforms Act, 2021.
Conclusion
Section 9 of the Trade Marks Act, 1999 defines the minimum threshold that every trademark must meet before it can be admitted to the register. Its requirements reflect the dual purpose of trademark law – to protect the legitimate commercial interests of brand owners and to safeguard the public’s interest in an honest, competitive marketplace where descriptive language remains available to all traders and where misleading, offensive or purely functional signs are not privatized.
The provision’s most important contribution is the framework it creates around distinctiveness. By insisting that only marks capable of distinguishing commercial origins can qualify for registration and by denying that capacity to descriptive, customary and functional signs unless they have acquired it through use, Section 9 ensures that the trademark register admits only those marks that genuinely perform a trademark function. The proviso on acquired distinctiveness introduces the necessary flexibility to accommodate commercial reality, recognizing that use in trade can transform the meaning of a sign over time in ways that justify legal protection.
For applicants, a thorough assessment of Section 9 before filing is not a formality – it is a prerequisite for an effective trademark strategy. A mark chosen with distinctiveness in mind and filed with evidence of use where necessary, will navigate the absolute grounds examination far more efficiently than a descriptive or borderline mark chosen for its marketing appeal but filed without regard to its registrability.
References
- The Trade Marks Act, 1999, Section 9 – https://ipindia.gov.in/trade-mark.htm
- The Trade Marks Rules, 2017 https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_68_1_Trade_Marks_Rules_2017.pdf
- Manual of Trade Marks Practice and Procedure, Trade Marks Registry – https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_72_1_TM_Manual.pdf
- J.R. Kapoor v. Micronix India, (1994) Supp (3) SCC 215
- Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd., (2004) 5 SCC 257
- Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) PTC 300 (SC)
- Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142
- Lego Juris A/S v. OHIM, Case C-48/09 P (Court of Justice of the European Union, 2010)
- TRIPS Agreement, Article 15 – https://www.wto.org/english/docs_e/legal_e/27-trips.pdf
- WIPO – Standing Committee on the Law of Trademarks – https://www.wipo.int/sct/en/
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