📋 In This Article
Overview of Section 9
Section 9 of the Trade Marks Act, 1999 sets out the absolute grounds for refusal of trademark registration. These are grounds that are based on the inherent nature of the mark itself — irrespective of any other marks on the Trade Marks Register. A mark that falls within Section 9 cannot be registered unless the applicant can demonstrate that it has acquired distinctiveness through use.
Understanding Section 9 is critical for choosing a registrable trademark. Selecting a mark that falls within Section 9 categories wastes time, money and opportunity. The safest trademarks are invented or fanciful words that have no prior meaning in relation to the goods or services — they are inherently distinctive and the easiest to register and protect.
Section 9 vs Section 11: Section 9 objections are about the inherent nature of the mark — it is unsuitable regardless of other marks. Section 11 objections arise from conflict with earlier registered marks or marks in prior use. Both can be raised simultaneously in the same examination report.
Lack of Distinctive Character — Section 9(1)(a)
A trademark must be capable of distinguishing the goods or services of one enterprise from those of others. A mark that is devoid of any distinctive character cannot perform this function and is refused registration under Section 9(1)(a).
Marks that are typically considered devoid of distinctive character include:
- Single letters or numerals — "A", "X", "1" alone (though stylised versions may qualify)
- Very simple geometric shapes — a basic circle, square or triangle
- Common surnames — "Sharma", "Patel" (without evidence of acquired distinctiveness)
- Generic terms — "Software" for computer programs, "Hotel" for accommodation services
- Marks that are too plain or simple to function as brand identifiers
Descriptive and Laudatory Marks — Section 9(1)(b) and (c)
Section 9(1)(b) refuses marks that consist exclusively of terms that describe the characteristics, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or services.
Section 9(1)(c) refuses marks that consist exclusively of terms that have become customary in the current language or established practices of trade — generic terms for the goods.
"SUPER CLEAN" for detergents, "FRESH" for food products, "FAST" for delivery services, "DIGITAL" for software — all describe a characteristic of the goods.
"BEST", "FINEST", "PREMIUM", "EXCELLENT", "SUPERIOR" — all are common laudatory terms that every trader in the field would want to use freely.
"JAIPUR" for handicrafts, "DARJEELING" for tea (without GI status) — purely geographical names are descriptive of origin and generally not registrable.
"COMPUTER" for computers, "BREAD" for bread, "HOTEL" for hotels — these are the common name for the product itself and must remain available for all traders to use.
Deceptive Marks — Section 9(2)(a)
A mark that is likely to deceive the public or cause confusion is refused registration under Section 9(2)(a). This includes marks that:
- Falsely suggest a connection with a government body or official institution
- Misrepresent the geographical origin of the goods — e.g. "SWISS" for products not made in Switzerland
- Misrepresent the nature or quality of the goods — e.g. "PURE SILK" for synthetic fabric
- Suggest a characteristic the goods do not possess — e.g. "FRESH SQUEEZED" for processed juice
Public Order, Morality and Religious Sentiments
Section 9(2)(b) and (c) refuse marks that are contrary to public order or morality, or that are likely to hurt the religious susceptibilities of any class or section of the citizens of India.
This includes marks using sacred religious symbols, names of deities, or imagery that may offend religious sentiments of any community. India's diverse religious landscape means this provision is applied broadly — marks that might be acceptable in other jurisdictions can be refused here.
Shape Marks — Section 9(3)
Shapes cannot be registered as trademarks under Section 9(3) if the shape results exclusively from:
- The nature of the goods themselves — a shape that is technically necessary for the product to function
- Technical necessity — shapes dictated solely by the technical function of the article
- Substantial value to the goods — where the shape gives substantial value to the product itself, it cannot be monopolised through trademark registration
How to Overcome a Section 9 Objection
A Section 9 objection can be addressed through several strategies depending on the nature of the mark:
- Acquired distinctiveness:Submit evidence that the mark has acquired distinctiveness through long and extensive use — invoices, advertising expenditure, market surveys, media coverage
- Disclaim descriptive element:For combined marks, offer to disclaim exclusive rights to the descriptive component while registering the distinctive element
- Amend the mark:Modify the mark to add a more distinctive element — a stylised presentation, unique design or invented word
- Seek registration in a different form:Register the mark as a device mark (logo) if the word mark is descriptive
- Legal arguments:Contest whether the mark is truly descriptive in the context of the specific goods or services claimed
Frequently Asked Questions
What are absolute grounds for refusal under Section 9?
Section 9 of the Trade Marks Act, 1999 lists marks that cannot be registered due to their inherent nature: marks devoid of distinctive character such as generic terms or single letters; marks consisting exclusively of descriptive or laudatory terms; marks that have become customary in the trade; deceptive marks likely to mislead consumers; marks contrary to public order or morality; marks likely to hurt religious sentiments; and shapes that result from the nature of the goods or technical necessity.
What is distinctiveness in trademark law?
Distinctiveness is the core requirement for trademark registration — the ability of a mark to identify and distinguish the goods or services of one enterprise from those of others. Marks range from inherently distinctive (invented or fanciful words like XEROX or KODAK) to descriptive (SUPER CLEAN for detergents) to generic (COMPUTER for computers). Inherently distinctive marks are the easiest to register. Descriptive marks require evidence of acquired distinctiveness — proof that consumers have come to associate the mark with a specific brand through extensive use over time.
Can a descriptive mark be registered as a trademark in India?
A purely descriptive mark cannot be registered as a trademark under Section 9(1)(b). However, if a descriptive mark has acquired distinctiveness through long and extensive use — meaning consumers have come to associate the term with a specific brand rather than the general characteristic — it may be registrable. Evidence required includes sales figures, advertising expenditure over time, consumer surveys, media coverage, and proof of continuous use in the market. This is called secondary meaning or acquired distinctiveness.
What types of marks are considered devoid of distinctive character?
Marks devoid of distinctive character under Section 9(1)(a) include: single letters or numerals used alone without stylisation; very simple or common geometric shapes; common surnames without evidence of acquired distinctiveness; generic terms for the goods or services themselves; marks that are too plain, simple or ornamental to function as brand identifiers; and marks that merely convey information about the goods rather than identifying their commercial source.
What is the difference between Section 9 and Section 11 objections?
Section 9 deals with absolute grounds — objections based on the inherent nature of the mark itself, regardless of any other marks on the register. A mark objected to under Section 9 is inherently unsuitable for registration. Section 11 deals with relative grounds — the mark conflicts with an earlier registered trademark or a mark with prior use and goodwill. Section 9 objections say the mark is bad in itself; Section 11 objections say the mark conflicts with someone else's existing rights. Both types of objection can appear in the same examination report.
Official Resource: For authoritative information, visit Trade Marks Registry, IP India.