What Cannot Be Registered as a Trademark in India?

Imagine you are launching a new skincare brand. You spend weeks choosing the perfect name, designing a logo and creating packaging. You finally apply for trademark registration, expecting your brand to be protected. However, the Trademark Registry raises an objection because your chosen name is too descriptive, resembles an existing trademark or contains a prohibited symbol.

This is a common risk when registering a trademark in India. Not every name, logo, symbol, word or design can receive trademark protection, even if it is unique to the business owner.

Need help registering your trademark? Connect with Startup Movers for guidance on trademark searches, application filing, responding to objections and protecting your brand under Indian trademark law.

What Cannot Be Registered as a Trademark in India?

The following are the main categories of marks that may be refused registration under Indian trademark law.

1. Generic Words and Marks Without Distinctiveness

A trademark must distinguish one business's goods or services from those of other businesses. If a mark cannot perform this function, it may be refused registration.

Similarly, common words used in a way that does not identify a particular commercial source may fail the distinctiveness test.

However, a common word is not automatically prohibited in every situation. Its eligibility depends on the goods or services and how the word is used. 

2. Descriptive Words That Directly Describe Goods or Services

A trademark may be refused if it consists exclusively of words or indications that describe characteristics of the goods or services, such as:

• Type or nature of the product
• Quality or quantity
• Intended purpose
• Value
• Geographical origin
• Time of production or service delivery
• Other characteristics of the goods or services

For example, using "SWEET" for sweets or "FAST DELIVERY" for a delivery service may face objections if the mark merely describes the product or service rather than identifying its commercial source.

Exception: A descriptive mark may be registered if it acquired distinctiveness before the application date or qualifies as a well-known trademark, subject to legal requirements.

3. Common or Generic Expressions Used in the Trade

Words or expressions that have become customary in everyday language or in the established practices of a particular trade may be refused registration when they consist exclusively of such expressions.

For example, a commonly used industry term that traders routinely use to describe their products may not be suitable for exclusive ownership by one business.

The purpose is to prevent a single business from monopolising expressions that competitors need to describe or identify their own goods and services.

4. Marks That Deceive the Public or Cause Confusion

A mark may be refused if its nature is likely to deceive the public or cause confusion.

For example, a brand name or logo that falsely suggests that a product has a particular origin, quality or affiliation may raise concerns if consumers are likely to be misled.

5. Marks That Hurt Religious Sentiments or Contain Offensive Matter

Indian trademark law restricts registration of marks containing certain types of religiously offensive, scandalous or obscene matter.

A mark may be refused if:

• It contains matters likely to hurt the religious susceptibilities of a class or section of citizens of India.
• It contains scandalous or obscene matters.

For example, a logo that uses a religious symbol in a manner likely to hurt the religious sentiments of a section of Indian citizens may face an objection. A mark containing obscene content may also be refused.

6. Government Emblems, Official Names and Protected Symbols

A trademark cannot be registered if its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Depending on the applicable restrictions, protected emblems, official names and symbols cannot be used as ordinary commercial trademarks without the required legal authority.

For example, a business cannot assume that it can register a protected national emblem or an official government insignia simply because it has incorporated the symbol into a new logo.

7. Certain Product Shapes That Cannot Function as Trademarks

A trademark application may be refused if the mark consists exclusively of a shape that falls within one of these categories:

• Shape resulting from the nature of the goods: A shape that is inherent in the product itself.
• Shape necessary to obtain a technical result: A shape required for the product to perform a particular technical function.
• Shape giving substantial value to the goods: A shape whose value is substantially attributable to its appearance or form.

For example, the basic shape of a functional product may not qualify for trademark protection if it falls within one of these statutory exclusions.

8. Trademarks That Conflict With Existing Registered or Earlier Marks

A proposed trademark may be refused even if it is distinctive when it conflicts with an earlier trademark.

For example, if a company applies for a brand name that closely resembles an existing brand selling similar products, customers may believe that the two businesses are connected.

9. Certain Chemical Names and International Non-Proprietary Names

Section 13 restricts registration of certain names used for chemical substances and medicines.

It covers:

• Commonly used and accepted names of single chemical elements or single chemical compounds, as distinguished from mixtures, in respect of chemical substances or preparations.
• International Non-Proprietary Names (INNs) declared by the World Health Organization and notified in the prescribed manner by the Registrar.
• Names deceptively similar to such notified INNs.

These restrictions help prevent confusion and protect the standardised naming of chemical substances and medicines.

10. Names or Representations That Falsely Suggest a Personal Connection

A trademark application may raise an objection if it falsely suggests a connection with a living person or a person who died within 20 years before the application date.

For example, using a public figure's name or likeness in a way that falsely suggests an endorsement or business association may raise concerns under this provision.

Which Law Says What Cannot Be Registered as a Trademark in India?

The Trade Marks Act, 1999 is the primary law governing trademark registration in India. It lays down the legal grounds on which the Registrar of Trade Marks can refuse an application.

The key provisions include:

Can a Trademark Be Rejected Even If It Is Unique in the eyes of the owner ?

Yes. A trademark that seems unique to its owner is not automatically eligible for registration.

A mark may be refused under Section 9 if it fails to meet the legal requirements for registration, under Section 11 if it conflicts with earlier trademark rights, or under Sections 13 or 14 if the specific restrictions covered by those sections apply.

The key takeaway: A trademark must meet the legal requirements, be distinctive where required, and avoid conflicts with earlier trademark rights to qualify for registration.

What Happens If the Trademark Registry Raises an Objection?

The Trademark Registry examines the application and may issue an examination report raising objections if it finds grounds for refusal. The applicant can respond to the objections and attend a hearing if required. If the objections are not resolved, the Registrar may refuse the application.

If the application is refused, the applicant may consider an appeal before the appropriate forum, subject to the applicable law and prescribed time limits.

What Happens If Your Trademark Application Is Refused?

If the Trademark Registry raises an objection, the applicant gets an opportunity to respond according to the prescribed procedure. If the objection is not resolved, the application may be refused. The Registrar may also refuse an application on applicable legal grounds.

1. Read the examination report: Identify the reasons for the objection and the relevant legal provisions.
2. Review the evidence: Check any cited trademarks, descriptions or other grounds mentioned by the Registry.
3. Prepare a response: Explain why the trademark meets the legal requirements and provide supporting evidence where necessary.
4. Attend a hearing if required: Present arguments and supporting documents as directed by the Registry.
5. Consider legal remedies: If the application is refused, explore the available appeal options and applicable deadlines.

Once a trademark application is refused, the registration process ends. However, the applicant may challenge the refusal through an appeal before the appropriate forum, subject to the applicable law and prescribed time limits. This appeal is a separate legal proceeding, not a continuation of the registration process.

Conclusion

A trademark may be refused if it lacks distinctiveness, describes goods or services, uses customary terms, misleads consumers, contains offensive matter or prohibited emblems, or consists exclusively of certain restricted product shapes. Registration may also be refused due to conflicts with existing trademarks, certain chemical names and medicine names, or personal representations that falsely suggest a connection. Before applying, choose a distinctive brand name, search existing trademarks, select the correct trademark class and check registration eligibility to reduce the risk of rejection and protect your brand.

Need help registering your trademark? Connect with Startup Movers for guidance on trademark searches, application filing, responding to objections and protecting your brand under Indian trademark law