Absolute Grounds for Refusal: The Scheme of Section 9

In one line

Section 9 refuses a mark for what it is, without reference to anybody else's rights, and its proviso is the escape route from three of its grounds.

In the wording a student can write in an exam: section 9 contains the absolute grounds for refusal of registration; sub-section (1) refuses marks devoid of distinctive character, descriptive marks and customary marks, subject to a proviso saving a mark that has acquired a distinctive character before the date of application or is a well known trade mark; sub-section (2) refuses deceptive, religiously offensive, scandalous or obscene marks and marks whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950; sub-section (3) refuses three kinds of shape; and the Explanation provides that the nature of the goods or services shall not be a ground for refusal.

Absolute and relative distinguished

An absolute ground looks at the mark alone. Is this sign capable of doing a trade mark's work at all, and is there a public reason why nobody should have it?

A relative ground looks at somebody else. Does this mark conflict with an earlier mark or an earlier right?

Three consequences follow, and each is examinable.

One: an absolute ground is available to anybody. An opponent under section 21 need own nothing. And section 11(5) has no counterpart in section 9, so the Registrar may take an absolute ground of his own motion.

Two: an absolute ground can be met by evidence. The proviso to section 9(1) lets acquired distinctiveness cure clauses (a), (b) and (c). Nothing cures a relative ground except consent under section 11(4) or a distinction on the facts.

Three: an absolute ground survives registration differently. Section 32 saves a registration granted in breach of section 9(1) if distinctiveness has since been acquired. There is no equivalent for section 9(2) or 9(3), and none for section 11.

Section 9(1): the three distinctiveness grounds

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.

Note the word "exclusively" in (b) and (c) and its absence from (a). A mark that contains a descriptive element and something else is not caught by (b); it may still fall under (a) if the whole is not distinctive, and section 17 will in any event give no exclusive right in the descriptive part.