Analysis of Section 9(1)(b) of the Trade Marks Act, 1999

An Analysis of Section 9(1)(b) of the Trade Marks Act, 1999: Descriptiveness as an Absolute Ground for Refusal of Trademark Registration in India

Introduction

The Trade Marks Act, 1999 (hereinafter "the Act") provides the statutory framework for the registration and protection of trademarks in India. Section 9 of the Act enumerates absolute grounds for refusal of registration. Among these, Section 9(1)(b) plays a crucial role in precluding the registration of trademarks that are inherently descriptive of the goods or services they represent. This provision aims to prevent the monopolization of terms that other traders may legitimately need to use to describe their own products or services, thereby fostering fair competition and ensuring that the public is not misled. This article undertakes a comprehensive analysis of Section 9(1)(b), examining its statutory language, judicial interpretations by Indian courts, and its interplay with the concept of acquired distinctiveness.

The Statutory Mandate of Section 9(1)(b)

Section 9(1) of the Trade Marks Act, 1999, states:

"Absolute grounds for refusal of registration.—(1) 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:
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark."

Section 9(1)(b) specifically targets marks that are descriptive. The core elements of this sub-section are:

  • "consist exclusively of marks or indications": This phrase suggests that the mark, in its entirety, must be composed of descriptive elements. However, judicial interpretation often considers the overall impression of the mark.
  • "which may serve in trade to designate": This implies a functional aspect – the mark's potential utility for other traders to describe similar goods or services.
  • The categories of descriptiveness: The provision lists specific categories such as kind, quality, quantity, intended purpose, values, geographical origin, time of production, or other characteristics of the goods or services.

The rationale behind this prohibition is to ensure that common descriptive terms remain available for all traders in a particular field. As observed by the Delhi High Court in *Marico Limited v. Agro Tech Foods Limited* (2010 SCC ONLINE DEL 3806), descriptive terms cannot be exclusively owned unless they acquire a secondary meaning. The court emphasized that descriptive expressions cannot be monopolized without clear evidence of distinctiveness, thereby promoting fair competition.

Judicial Interpretation of Descriptiveness under Section 9(1)(b)

Indian courts have extensively interpreted the contours of Section 9(1)(b). The assessment of whether a mark is descriptive is made from the perspective of the average consumer of the relevant goods or services.

Designating Kind, Quality, Intended Purpose, or Other Characteristics

Marks that directly describe the nature, attributes, or utility of goods or services fall foul of Section 9(1)(b). For instance, in *Marico Limited v. Agro Tech Foods Limited* (2010), the Delhi High Court held that "LOW ABSORB" for edible oil was descriptive of the product's characteristic (low oil absorption) and thus not registrable without acquired distinctiveness. Similarly, the term "NO TURN" for mattresses was considered in *PEPS INDUSTRIES PRIVATE LIMITED v. KURLON LIMITED* (2020 SCC ONLINE DEL 1882) where the defendant argued it was descriptive of a characteristic of the mattress. The Madras High Court, in *Beerco Limited v. The Registrar of Trademarks Trademark Registry* (2024 CMA(TM) No.14 of 2024), dealt with the refusal of "BeerCo" under Section 9(1)(b) as it could designate the kind or other characteristics of the goods (beer). The refusal of "DATAPAQ" for temperature profiling systems was upheld in *Fluke Corporation v. Registrar Of Trademarks, Boudhik Sampada Bhavan .* (2023 SCC ONLINE DEL 5024) on the grounds of being descriptive of the goods and services.

The term "Rasoi" (meaning kitchen or related to cooking) for edible oils was deemed to have a direct reference to the character or quality of the goods in *Messrs. Hindusthan Development Corporation Ltd. v. The Deputy Registrar Of Trade Marks And Anr.* (Calcutta High Court, 1954), an early case illustrating this principle under previous legislation but relevant in spirit. In *M/s. Aravind Laboratories v. Modicare* (2011 (Madras High Court)), the court noted that Section 9(1)(b) prohibits registration of marks designating kind, quality, etc., and found "DAZLLER" had not acquired distinctiveness beyond its descriptive nature.

Geographical Origin

Marks indicating geographical origin are generally not registrable under Section 9(1)(b) unless they have acquired a secondary meaning or are used in an arbitrary manner. In *Taegu Tec Limited v. T.T. Industries* (2013 (IPAB)), the registration of 'SIMLA' as a trademark was refused because, due to its ordinary geographical significance, it was inherently neither distinctive nor capable of distinguishing the applicant's goods. The Supreme Court in *Parakh Vanijya Private Limited v. Baroma Agro Product And Others* (2018 SCC 16 632) held that the appellant could not claim exclusive right over the use of the word "Malabar," a geographical term, for biryani rice.

"Exclusively Consists" and Composite Marks

The phrase "consist exclusively" has been subject to judicial scrutiny, particularly in the context of composite marks (marks combining words, devices, or other elements). In *Navaidkhan v. Registrar Of Trademarks Office .* (2023 SCC ONLINE DEL 3273), the Delhi High Court considered the mark "CruzOil" (device) for industrial lubricants. While "Oil" is descriptive, the court noted that a device mark having a combination of words and devices has to be considered as a whole. The court referred to its earlier judgment in *Abu Dhabi Global Market v. The Registrar of Trademarks, Delhi* (C.A.(COMM. IPD-TM) 10/2023), which interpreted Section 9(1)(b) in respect of composite marks. This suggests that if a mark, viewed as a whole, contains non-descriptive elements that lend it distinctiveness, it may escape the bar of Section 9(1)(b), even if some components are descriptive. The appellant in *Navaidkhan* had also disclaimed exclusive right over the word "Oil."

Generic Terms

While Section 9(1)(b) deals with descriptive marks, highly descriptive marks may verge on being generic. Generic terms, which are common names for products or services, cannot function as trademarks. In *People Interactive (India) Private Limited v. Vivek Pahwa* (2016 SCC ONLINE BOM 7351), the Bombay High Court found "shaadi" (meaning marriage) to be generic and commonly descriptive in the matrimonial services sector, thus lacking distinctiveness for "shaadi.com" without compelling evidence of secondary meaning. Similarly, in *M/s. Patanjali Biscuts Pvt. Ltd., Kolkatta & Another v. Hatsun Agro Product Ltd.* (2020 (Madras High Court)), the word "Aarogya" (meaning health) was considered a generic word.

The Proviso: Acquired Distinctiveness

The proviso to Section 9(1) is a critical exception to the absolute grounds for refusal. It allows for the registration of a mark, otherwise objectionable under Section 9(1)(a), (b), or (c), if, before the date of application, it has "acquired a distinctive character as a result of the use made of it or is a well-known trade mark." This is often referred to as "secondary meaning."

To claim acquired distinctiveness, an applicant must demonstrate that, through extensive and continuous use, the public has come to associate the descriptive term primarily with the applicant's goods or services, rather than with its primary descriptive meaning. The burden of proving acquired distinctiveness is high. In *Marico Limited* (2010), the court found that "LOW ABSORB" had not acquired such secondary meaning within its seven-year usage period. Conversely, in *M/s. Aravind Laboratories* (2011), the court observed that "EYETEX" appeared to have attained distinctiveness due to its long usage (since 1946), unlike "DAZLLER." In *Perry Ellis International Group Holdings Limited v. Registrar Of Trademarks* (2020 SCC ONLINE IPAB 29), the IPAB allowed the registration of "PRO PLAYER," which faced objections under Sections 9(1)(a) and 9(1)(b), considering evidence of extensive use, international reputation, and prior registrations, suggesting acquired distinctiveness.

The Delhi High Court in *Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. v. Anchor Health & Beauty Care Pvt. Ltd.* (2014 SCC ONLINE DEL 3374) noted that the plaintiff's mark "ALLROUND" was registered and had acquired a secondary meaning. It also highlighted that the defendants' own registration of similar trademarks undermined their argument that the term was purely descriptive.

Section 32 of the Act further reinforces the concept of acquired distinctiveness post-registration, stating that a registered trademark shall not be declared invalid on the ground that it was registered in breach of Section 9(1) if, after registration and before the commencement of any legal proceedings challenging validity, it has acquired a distinctive character in relation to the goods or services for which it is registered.

Interplay with Section 9(1)(a)

Section 9(1)(b) is closely related to Section 9(1)(a), which prohibits the registration of marks "which are devoid of any distinctive character." A mark that is descriptive under Section 9(1)(b) is often, by its very nature, devoid of inherent distinctive character under Section 9(1)(a). As stated in *I.T.C Ltd. v. G.T.C Industries Ltd. And Others* (Bombay High Court, 2007), Section 9(1)(a) targets marks not capable of distinguishing goods/services, while 9(1)(b) specifically addresses descriptiveness. Both objections are frequently raised together by the Registry, as seen in *Perry Ellis International Group Holdings Limited* (2020) and *STP LIMITED v. REGISTRAR OF TRADE MARK* (2023 DHC 6602).

The fundamental test for distinctiveness, as mentioned in older cases like *The Singer Manufacturing Co. v. The Registrar Of Trade Marks And Anr* (Calcutta High Court, 1964) under the prior Act, is whether the mark is "adapted to distinguish" the proprietor's goods. Section 9(1)(b) essentially codifies one reason why a mark might not be so adapted – because it describes the goods themselves.

Conclusion

Section 9(1)(b) of the Trade Marks Act, 1999, serves as a vital gatekeeper in the trademark registration process, preventing the appropriation of descriptive terms that should remain in the public domain for use by all traders. The judiciary in India has consistently interpreted this provision to disallow registration of marks that primarily designate the kind, quality, intended purpose, geographical origin, or other characteristics of goods or services. However, the law also recognizes the commercial reality that descriptive marks can, through extensive use and public recognition, acquire a secondary meaning, thereby becoming distinctive of a particular trader. The proviso to Section 9(1) provides a pathway for the registration of such marks upon proof of acquired distinctiveness.

The careful balance struck by Section 9(1)(b) and its proviso ensures that while the exclusivity granted by trademark registration is not unduly extended to common descriptive language, businesses that have genuinely cultivated distinctiveness in otherwise descriptive terms are not denied protection. This framework continues to evolve with judicial pronouncements, particularly concerning composite marks and the assessment of acquired distinctiveness in an increasingly globalized and digital marketplace.