Overcoming Trademark Objection under Section 9 (1) (a), (b), (c) of Trade Marks Act, 1999 with Case Laws.
Introduction
Trademark objections are the ones that an applicant faces at the very initial stages of the registration process. Objections are raised by the registrar at the time of examining the application. The Applicant is then required to file an examination reply and clear the objection. The Applicant can take help of relevant case laws given in the blog below which will ultimately make their objection reply strong and clear the bjection under Section 9 of the Trade Marks Act, 1999.
Absolute grounds for refusal
The public policy is connected to the absolute reasons for denial of registration. By preventing others from copying their products or trying to pass them off as the trademark holder's, it aims to safeguard the producers' and manufacturers' legitimate interests in preserving the goodwill and reputation of their goods. Additionally, they safeguard consumers' interests in obtaining genuine goods from a specific source, as indicated by the trademark. The absolute grounds of refusal are given under Section 9 of the Trade Mark Act, 1999, which are discussed as follows along with case laws:
- Marks lack a distinctive character.
- Indicative and descriptive marks in reference to quantity, quality, intended purpose etc.
- Marks that have become customary in language or trade usage.
- Marks that are deceptive or likely to cause confusion.
Section 9 (1) of the Trademarks, Act, 1999.
Section 9 (1) (a): Lack of distinctiveness
Section 9 (1) clause (a) addresses the grounds for denial of registration due to lack of distinguishing features. "Devoid of any distinctive character" refers to a trademark that is either insufficient or unable to differentiate the goods or services of the person requesting registration from those of another individual. The trademark that is being sought for registration lacks the distinctive or differentiating feature.
Although the Act does not define the term "distinctiveness," this subsection may prevent a trademark from being registered on the grounds that it lacks distinctiveness. In a series of rulings, the court has used the phrase to mean that a trademark for a certain person's goods must serve the purpose of clearly and instantly associating the mark with a specific producer.
Relevant case laws:
Muneer Ahmad vs. Registrar of Trade Marks (2023)
In this case, the word 'Bharat' written in style, along with the figure of a slanted paintbrush was sought to be registered in reference to paintbrushes, artistic brushes, and roller brushes. Because the particular trademark is quite descriptive in nature and would designate the quality and purpose of the goods, the Registrar of Trademarks denied registration.
Two categories could be used to classify trademarks that do not have the distinctive character needed by Section 9. First of all, some marks are not distinctive by nature. Stated differently, they lack the ability to differentiate between the goods and services associated with the trademark and those of another individual. The aforementioned commodities in the specific category cannot be distinguished using these words.
The second category includes trademarks that lack distinctiveness because they are frequently used in relation to particular goods or services. As a result, they cannot be used to identify the source of those goods or services; in this case, the registrar must make a specific reference. Marks that are widely used in the industry are not allowed to be registered.
The court ruled that in order to assess the requirements of Section 9, the aforementioned trademark or device mark must be viewed as a whole. The court concluded that the device mark for which registration was requested was approved. It was unique when viewed as a whole. 'Bharat' is a distinguishing word that can be registered.
Geep Flashlight Industries Ltd. vs. the Registrar of Trade Marks (1972)
The trademark "Janta" for electric torches is at issue in this instance. The mark's registration was denied due to its lack of distinctiveness. In addition to orders placed based on newspaper clippings, the applicant provided evidence of his impressive sale. This effectively demonstrated that the trade name has been in use for a considerable amount of time and has been widely promoted, which has caused the phrase to become distinctive via use.
Additionally, the registrar denied registration on the grounds that the term "janta" directly relates to the quality of the items; that is, the name implies that the goods are inexpensive and intended for the general population (for the "Janta"). The court decided that just because the torches with the name "janta" are the least expensive does not mean that the term accurately describes their quality. Price is a significant issue for consumers, but it is not the only one; qualities like usefulness would also be highly valued. A low price alone won't make a product particularly popular if the quality has been compromised.
The appellant presented evidence in this case to demonstrate that their torches bearing the name "Janta" had gained a significant reputation in the market; yet, the word "Janta" is actually not fitted to identify or capable of differentiating the appellant's goods. Furthermore, the appellant does not automatically have the right to have his proposed trademark registered, even if it meets the requirements outlined in Section 9 of the Act.
The court affirmed the registrar's justification for not registering the term "janta". Since the word "Janta" is used so frequently in India to refer to the average person in a variety of contexts, it should be allowed to be used by anybody for legitimate descriptive or commercial purposes. The appellant should not be granted exclusive use of the word. As a result, the court decided that the mark was unregisterable.
Section 9 (1) (b): Descriptive marks
The registration of marks that are only descriptive in nature is prohibited under this clause. Generally speaking, a descriptive mark cannot be monopolized. However, the descriptive mark may be allowed registration if the appellant can demonstrate that, as a result of extensive usage, it has lost its main meaning and acquired a secondary unique meaning in relation to the applicant's goods.
A list of traits that, if present in the trademark, would be grounds for its registration to be denied is provided in the subsection. The following is indicated by the trademark's aforementioned indications:
- Kind- The type or category of a product, for example: an SUV car cannot be granted registration as a trademark.
- Quality- The words indicative of the standard of a product cannot be registered as a trademark, for example: best or No.1.
- Quantity- The terms indicative of the quantity like weight and number cannot be granted trademark registration.
- Intended purpose- A mark which is descriptive of the use of the product that is not registerable, for example: floor cleaner, shampoo, room freshener, etc.
- Values- The terms like degree or Celsius are not registrable as a trademark (the trademark for the brand 62 degrees east, owned by Deepika Padukone is a good example of using value which is generally a descriptive term in a fanciful or arbitrary way.
- Geographical origin- These include terms of countries, cities and towns which are indicative of the source place of the product. For example: Shimla Apple cannot be granted trademark registration.
- Time of production of goods or providing of service- These terms are indicative of when the goods or service are provided. For example: using the term 24x7 regarding a service cannot be granted trademark regulation.
- Other characteristics of the goods or services- For instance name of football players or football teams on goods related to sports gear, use of terms like teeth or gums for a dental clinic.
Relevant case laws for trademark which includes a geographical mark
Foreign cases
Liverpool Electric Cable Co Ltd case (1929)
In this case, registration was sought for the trademark Liverpool, but the Chancery Division Court refused registration since it was the name of an important commercial centre. Herein, the court observed that even if the name has acquired distinctiveness in reference to the goods for which it is sought to be registered, the registration of a geographical name can be refused.
Sir Titus Salt, Bart., Sons and Co.s Application XI. (1894)
In this case, the registration of the term 'Eboline' was sought for silk goods. The Chancery Division Court held that 'Eboli' is the name of a town and the addition of the suffix 'ne' is not sufficient to consider the Chancery Division Court held that 'Eboll' is the name of a town and the addition of the suffix 'ne' is not sufficient to consider the word as an invented term. In order to successfully register such a word, the term must be an invented word in fact and not merely in the belief of the person claiming its registration. The objective of such prohibition is to prevent the acquisition of monopoly in the name of a place by a particular person and resultantly suggest that the specific goods have an origin or connection with that place where in fact, no such connection exist.
Indian cases
Muneer Ahmad vs. Registrar of Trade Marks (2023)
In this case, the term Bharat along with a slanted paint brush was sought to be registered in reference to goods like paint, brushes, artistic brushes, etc. The trademark examiner held that the brush is indicative of the intended purpose of the product and would thereby be non-registrable under Section 9 (1) (b). The Delhi High Court held that the examiner wrongly examined the mark partially with the reference only to the paintbrush, which only forms a part of the whole device mark consisting of the word Bharat in a particularly distinctive style along with the paintbrush. The court held that the mark when seen as a whole cannot be said to be descriptive of the product in reference to which it is sought to be registered. Bharat is the more prominent feature of the mark, and that has no descriptive relation to the kind of goods in respect of which the mark is used.
The court concluded that in invoking either Section 9 or Section 11, the mark has to be viewed as a whole. Therefore, the court concluded that the mark is distinctive, and the registration can be granted.
Hi-Tech Pipes Ltd. vs. Asian Mills Pvt. Ltd. (2006)
In this case, the plaintiff company was involved in the business of manufacturing and sale of steel pipes, and the mark Gujrat was used in reference to such goods. The Delhi High Court observed that the question to be decided is whether the term has acquired any secondary meaning and does it have distinctiveness with respect to the goods produced by the company. The defendant also plotted to use the similar term 'GUJARAT' in respect of similar goods. The court held that merely because the name is of geographical description, it does not mean that an action of passing cannot be maintained by the company. The burden on the trademark holder is to establish the probability of deceit or confusion by the use of a similar name.
Imperial Tobacco Co. of India Ltd. vs. The Registrar of Trademarks (1986)
In this case, the registration of the trademark 'SIMLA' was in question in reference to cigarettes. Initially, the mark was refused registration as the word Simla was held to be indicative of the geographical origin and thereby was an absolute prohibition to registration under Section 9 (1). The Calcutta High Court held that the term is a geographical indication and is accompanied by hills as a part of the mark which points towards its usage in the ordinary or geographical sense. Thereby the exception granted in the cases of arbitrary or fancy use of a descriptive mark which leads to acquisition of a secondary meaning is not be applicable here.
In this case, some observations regarding geographical names as trademarks, were discussed. As a general rule, a geographical term in reference to its general significance is inherently incapable of being registered.
However, some minor exceptions have been accepted to this rule in various judicial decisions.
When a geographical location is used to indicate a specific locality, country or state, it cannot be
allowed to be registered and thereby monopolised by a particular individual as a trademark.
On the other hand, the terms referring to or indicating a major industrial city would be unregistrable for any class of goods. In between these two extremes, there are marks which have evidence of distinctiveness if the applicant is able to prove that he has a natural or legal monopoly in reference to the particular goods along with the place concerned, he may be able to seek registration of that trademark. However, that alone would not enable him to get a geographical name registered, he would also have to establish substantial evidence of acquired distinctiveness.
In conclusion, it can be stated that the reference to geographical terms in the ordinary sense would not have distinctiveness. This rule has been relaxed where the trademarks, or marks to be registered, refer to a small and insignificant place or where the term lacks any geographical significance. To conclude, where the geographical term to be registered is the name of an important country or a town of commercial significance, the mark will not be registered unless the evidence of long and extensive use is proved, which leads to it acquiring distinctiveness.
Bar on registration of trademarks which are descriptive of quality or character of goods:
M/s Hindustan Development Corporation Ltd. vs. The Deputy Registrar of Trade Marks (1955)
In this case, the registration of the term 'Rasoi' as a trademark was up for discussion. The question arose whether the use of the term 'Rasoi' as a trademark in respect of hydrogenated oils would be a reference to the character or quality of the product. In dealing with the question the Calcutta High Court stated that the mark must be looked at not in the grammatical or literary significance but rather the view of the public at large. Therefore, the term 'rasoi' would be generally linked to cooking and the normal use of the oil is also for cooking. Therefore, the people in the trade and the ultimate consumers would indubitably link the word 'rasoi' to the character of the goods. Thus, the mark was refused registration.
Marico Limited vs. Agro Tech Foods Limited (2010)
In this case, the appellant had registered the Trademarks "LOSORB" and "LO-SORB" for different products in class 29 like viz oil, ghee, etc.
The respondent was selling its edible oil/sunflower seeds oil under the trademark "Sundrop". They claimed that the presence of anti-foaming agents in the sunflower oil resulted in less oil being absorbed when used for frying. On the packaging, the term 'Sundrop' was used along with the phrase' with low absorb technology.
The Delhi High Court held that the appellant cannot be held to be entitled to the exclusive ownership of the term 'low absorb' as it is a general, descriptive word, indicating the low absorbing quality of a product. It is not an invented word, rather is a simple amalgamation of two English words. The court held that such descriptive terms are barred from being registered as a general rule under Section 9(1). The phrase "low absorb" surely and indubitably presents the meaning that something which absorbs less, and when used with respect to edible oil, it is descriptive in that it refers to low oil being absorbed.
Nevertheless, the proof of application of the proviso to the case may enable registration where acquired distinctiveness is established. The court concluded to state that when the registration of such a term is sought, the applicant must be wary of the use of such term in a descriptive sense by others. Low absorb is not an unusual syntax and the same can almost be said to be a meaningful part of a sentence or phrase in itself. Adoption of such terms naturally entails the risk that others in the field who would also be entitled to use such phrases.
Cadila Healthcare Ltd. vs. Gujrat Co-operative Milk Marketing Federation Ltd & Ors (2009)
In this case, the dispute was related to the trademark 'sugar free'. It was contended that it is merely a combination of two words, it is not inherently distinctive and is rather descriptive of its characteristics. The mark had not acquired any distinctiveness by usage beyond the artificial sweetener category, and therefore the appellant cannot have an exclusive claim over usage of the mark in respect of any or all products. The respondent could not be absolutely restrained from using the term 'sugar free' in a descriptive usage. However, in case a third person enters the category of artificial sweeteners with the trademark of the appellants, he can be restrained.
Further, this position is clarified by Section 30 (2), which deals with the limits placed on the effect of a registered trademark. Subsection (2) provides that where a registered trademark is used by another to indicate the descriptive nature, which includes the kind, quality, purpose, value, geographical origin etc. of his goods or services, this would not be considered as an act of infringing the trademark.
In the present case the adoption of the term sugar-free as the trademark, the plaintive must be aware that it is a descriptive word which is used by a lot of manufacturers and is in widespread use some degree of confusion is inevitable. In trademarks of a descriptive nature, a blanket ban on the usage of such terms cannot be issued, especially when the registered trademark is only used as a descriptive phrase for the product and not as the trademark.
In conclusion, the Delhi High Court held that the mark 'sugar free' which is clearly a descriptive mark indicating the quality of the product, would be an absolute ground for refusal of registration unless it has acquired a distinctive character as per Section 9(1). The mark can at best be said to be distinctive in reference to the artificial sweetener category, and mere marketing of another product with the trademark would not give him the right to claim distinctiveness in reference to all food products.
Info Edge (India) Pvt. Ltd. and Anr. vs. Shallesh Gupta and Anr. (2002)
In this case, the appellant had the domain name 'naukri.com' registered. Subsequently, the respondents also registered a similar term 'naukari.com'. The Delhi High Court observed that when the business is carried on by the respondent under a trade name which bears close resemblance to the name of the appellant who has over time built goodwill around it, it is likely that such usage by the defendant would cause confusion. It would mislead the public into believing that it bears a connection to the trade of the plaintiff. Further, the distinction between a generic word and a descriptive word is very thin, thereby such a term could acquire a secondary meaning by long use, establishing its reputation.
The court also noted that even if the word in question is generic, yet, if it is found by the court that such mark has attained distinctiveness and is associated with the business of the plaintiff for a considerable time and thereafter the defendant adopts a similar word as one of his marks to induce innocent internet users to come to his website, the same establishes dishonest intention and bad faith. Thus, the court would grant an injunction to protect the business of the plaintiff.
Online India Capital Co. Pvt. Ltd. And vs. Dimensions Corporate (2000)
In this case, trademark protection was sought for 'www.mutualfundsindia.com'. The Delhi High Court refused to grant any protection to domain names consisting of generic words, which were merely descriptive of the services being provided by the concerned parties. It may, however, be noticed that in this case, it has been observed that there was an absence of material or the material placed on record was insufficient to show that the marks had acquired any secondary meaning, which is a 'precondition' for granting protection to descriptive names.
Bharathiya coffee workers catering vs. Indian coffee workers Co-Operative (1998)
In this case, the question raised before the Kerala High Court was related to the usage of the name 'Indian Coffee House'.
The respondent before the Apex court were originally the plaintiffs which was a society formed by the employees of the Indian coffee board and they were running coffee houses in the name of 'Indian coffee house' as distinct from the India coffee house run by the present appellant. The managing director of the appellant company was earlier a member of the respondent society, but due to difference of opinions, he formed a separate entity and started doing the identical business. The appellant used a similar name for his establishment. The respondent filed the suit for permanent injunction against the appellant from using the term 'India coffee house’.
The court held that here in the plaintive society does not have any exclusive right to run coffee houses with the name, Indian coffee house. It is a generic name which is used by the ex employees of the coffee board. Even if we accept the contention that the Indian coffee house run by this particular society has earned a goodwill, it would not per se enable them to restrict other ex employees from running coffee houses in the same name or to claim a passing of action.
Christian Louboutin Sas vs. Abubaker & Ors (2018)
In this case, the plaintiff-appellants, the company Christian Louboutin SAS filed the suit for injunction against infringement of its trademark: the 'red sole' of its shoes. The Delhi High Court analysed the definition of 'mark' given under the Trademark Act and stated that the term used by the legislature is 'combination of colours', which impliedly would mean that a single colour would not come within the term 'mark' and thereby the first basic sine qua non of a thing becoming a trademark i.e., of whatever is sought to be claimed as a trademark must first also be a mark is not fulfilled here. Thus making 'combination of colours' a 'sine que non' as distinguished from one single colour, the latter cannot be claimed as a trademark.
In the present case, the issue was in reference to a single colour used in the soles of shoes for ladies. In conclusion, it was said that the definition of a mark is not capable of being registered as a trademark. Thus, once it has been conclusively stated that a single colour, cannot be a mark and therefore cannot be a trademark, the question of the plaintiff claiming use of a single colour as a trademark by getting benefit under the proviso to Section 9(1) of the Trade Marks Act will not arise, as this proviso will come into play if there is first of all a trademark because of a mark being used in the course of a trade as a trademark.
The court further stated that even when a single colour is supplied to a particular product, it would pertain to or indicate its characteristics. It is used to make the product more attractive. The function of making the product more appealing is not a trademark function as a feature of the good. Trademark has a specific purpose of indicating the origin of the product from a particular manufacturer or producer. Even if the red sole of the shoe is registered, nevertheless, it cannot be granted exclusivity in its usage, thereby depriving others from using the same feature.
In the present case, the issue was in reference to a single colour used in the soles of shoes for ladies. In conclusion, it was said that the definition of a mark is not capable of being registered as a trademark. Thus, once it has been conclusively stated that a single colour, cannot be a mark and therefore cannot be a trademark, the question of the plaintiff claiming use of a single colour as a trademark by getting benefit under the proviso to Section 9(1) of the Trade Marks Act will not arise, as this proviso will come into play if there is first of all a trademark because of a mark being used in the course of a trade as a trademark.
Section 9 (1) (c): Customary terms
This subsection provides the ground for refusal of registration where the trademark sought to be registered consists of marks which have become:
- Customary in usage or commonly used in the current language; or,
- Used in the established practice of trade in bona fide.
When a trademark is evaluated in reference to the goods or services for which the registration is sought, it is necessary to examine the perception that the general public has towards such a trademark. If it is a mark which is associated with a particular idea in the mind of the people, then as a general rule, such symbols cannot be allowed for registration.
For example, the cross sign in red colour is related to the perception of people to hospitals, various traffic signs have their own established meanings. These cannot be allowed to be monopolised by a particular individual. This is because these are not distinctive and have already fixed meaning or relevance in the minds of the people. A trademark is a mark which is used to distinguish the goods or services of one person from the other, and the registration of such customary or pre-established marks would not serve the purpose.
Section 9 (1) proviso: Overcoming objection under absolute grounds for refusal by proof of acquired distinctiveness
This proviso to the subsection states that even though a ground for refusal has been made in the case of a particular trademark, nevertheless, it can be registered if prior to the date of application for registration it has either:- Acquired distinctive character due to its usage or,
- Has become a well-known trademark.
The primary objective of a trademark is to identify or indicate the source of origin of a particular good or service. A prolonged usage of the term in a few cases creates a situation where a certain trademark gets mentally fed into the minds of people as belonging to a particular manufacturer. The trademark acts as a surety for the people who seek to buy products from their trusted brands. This long-term association creates an acquired distinctiveness or a secondary meaning to innately indistinct or descriptive words.
When the court comes across a case, wherein it has to examine whether a mark has acquired a distinctive character or not, the following factors are usually considered:
- What is the market share of the goods which have been using the said mark?
- How intensive geographically, widespread and long user has been in reference to the mark?
- The cost incurred by the applicant in the promotion and popularisation of the mark.
- The proportion of the segment of people who identify the source of the goods as indicated by the trademark.
- The standing of such goods in the various trade and commerce circles.
After analysing all of these factors, if the registrar or the court is satisfied that the mark has acquired sufficient distinctiveness in the eyes of the people, to which the public identifies the goods as originating from a particular source due to the trademark, then the condition for the application of the proviso, which is the establishment of acquired distinctiveness must be held to be satisfied.
Where a mark is refused registration on the ground of lack of distinctive character or consisting of indicative terms or consisting of signs which have become customary or commonly used in the practice of trade, an exception is still available. In case the person is able to show that the mark has acquired distinctiveness due to the use made of it before the date of application for registration, then the registration of such a trademark may be allowed.
If he is able to show that prior to the application being presented, the mark has become distinctive and is capable of distinguishing the goods of the person from another, the registration may be allowed. The distinctiveness, which may be acquired between the date of application and the date of examination by the authority, is immaterial. In order to prove acquired distinctiveness, the applicant is duty-bound to establish that the public perceives and views the mark as indicative of the applicant's goods.
In the case of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories (1965), the Supreme Court stated that where a trademark has been continuously used by a business, with alterations or additions which do not impact its identity the registration would not be refused on the grounds of it not being distinctive. The evidence establishing acquired distinctiveness can be perused to examine the application of the proviso to section 9(1). Further in the case of Marico Limited vs. Agro Tech Foods Limited (2010) the position in relation to acquired distinctiveness was clarified, "when the descriptive trademark is used only by one person undisturbed for a very long period of time, without anyone else attempting to use the trademark during this long period time, a case can be established of a descriptive word having achieved distinctiveness and a secondary meaning."
In India, no established statutory guidelines are provided which are to be satisfied as a proof of acquired distinctiveness. Due to this, the courts play a proactive role in determining the question of acquired distinctiveness in every case as per the facts and circumstances before it.
The process of acquiring distinctiveness in respect of a trademark is a difficult task. No particular time has been fixed for which the mark must be used in order to be said to have a quiet distinctiveness. There can be cases where, for various reasons, a trademark acquires distinctiveness in a very short period. In other cases, there can be trademarks which never acquired distinctiveness. Therefore, the period of use is a relevant factor, but not a sole one.
This view was reflected in the case of Mrs. Ishi Khosla vs. Anil Aggarwal (2007) where the Delhi High Court stated that to acquire a secondary distinctive meaning, the product need not be in the market for any particular number of years. Where the idea of the product along with a particular trademark is new, fascinating and appealing to the public, it can have the capability to become popular in a short period. The burden of proof lies upon the applicant to prove that his descriptive trademark has attained distinctiveness on account of its usage.
The court also held that the proof of distinctiveness must be established in respect of every article to which the trademark is applied and not just for a single product.
Trademark registered in breach of Section 9 (1)
Section 32 of the Trade Marks Act deals with the situation wherein a trademark is registered in violation of the provisions of Section 9 (1). It stipulates that due to such violation, the trademark would be declared invalid unless it has acquired a distinctive character in relation to the goods or services in respect of which it is registered, after it.
The opportunity to prove the acquired distinctiveness will be given before any legal proceedings are initiated to challenge the validity of such registration.
Therefore, it protects a mark which might not have been a distinctive character when it was registered. However, prior to the proceedings challenging its validity, it acquires the distinctiveness then registration will not be invalid because ultimately the purpose of a trademark is to distinguish the goods of one person from another.
Relevant time to check if the trademark has acquired distinctiveness
Wherein an inherently descriptive trademark is sought to be registered by the application of the proviso to Section 9 (1), the question arises at what point is the acquired distinctiveness to be proved?
When we read the proviso to Section 9 (1) of the Trade Marks Act 1999, it states that in case there is an absolute bar on the registration of a particular trademark nevertheless, such a trademark can be registered if, prior to the date of application, it has acquired a distinctive character or is a well-known trademark.
Further, in Section 31 (2) and Section 32 of the Trade Marks Act, 1999, the position is established that as a general rule, the evidence claiming distinctiveness acquired by the usage has to be presented on the date when the application is filed for registration. However, by virtue of Section 31, this period can be extended up to the actual date of registration.
As per Section 32 a person can produce evidence in order to establish distinctiveness, which is acquired even after the registration process wherein the proceedings are initiated by a third party, claiming the invalidity of such trademark. In these proceedings under Section 57 of the Trade Marks Act 1999, the evidence can be produced establishing distinctiveness. However, no such evidence can be produced in a civil suit in a civil Court where an infringement action is initiated in regard to a registered mark.
Impact of a descriptive trademark being registered on account of acquiring distinctiveness and the right of other people to use it in a descriptive sense.
It has been clarified by the Supreme Court India in several judicial decisions that when a descriptive trademark is registered on the basis of acquired distinctiveness, the proprietor of the mark would not be able to monopolise it. In other words, if a person is a registered owner of a trademark which is indicative of the characteristics of the goods, then despite such registration, he will not be entitled to the exclusive usage of the mark.
He would not get the right to prohibit another person from using it, since the mark is descriptive in nature and is indicative of the characteristic of his own manufactured goods.
Herein, it would not result in the infringement of the registered trademark. For instance, the usage of '24/7' as a registered mark.
A characteristic of the goods would include the functional aspects which give an appeal to the products and whenever a trademark is offered, a kind which can also be a characteristic or a description of the goods then merely because such a descriptive trademark has been registered. It cannot prevent other manufacturers or sellers from using such characteristics. It must be however remembered that this characteristic must not be used as a trademark, but rather only as a feature of the goods.
This is based on the understanding that when a person gets a descriptive trademark registered, he does so knowingly and understands that by Section 30 of the Trademark Act, 1999, he would not be able to prohibit or prevent another person from using such descriptive characteristic simply because he has registered it as a trademark. The objective behind such provision is to discourage the adoption and the use of a trademark by a person which pertains to the element stated in Section 32 (1) of the Trademark Act, 1999, which includes the aspect of the trademark being only descriptive of the good's characteristics.
Conclusion
It is imperative to understand that effectively responding to trademark objections in an Examination Report is not just a procedural requirement but a strategic move that plays a pivotal role in securing trademark registration. This process is vital for safeguarding your brand, ensuring market recognition, preventing infringement, facilitating market expansion, increasing the value of your business, establishing legal standing, avoiding rejection, resolving conflicts, and ultimately, fortifying your brand's position in the market. In essence, a well-crafted response to objections is the key to unlocking the full potential of trademark registration, making it an essential and strategic step in the journey of brand protection and recognition.
