Section 9(1) of the Act enacts as follows which sets down the following absolute grounds for refusal of registration:
(a) trade marks 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) trade marks which consist exclusively of marks or indications which may serve in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin ,or the time of production of goods or of rendering of services, or other characteristics of goods or service, (c) trade marks 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: 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) – The basis of section 9(1) is that a trader should not obtain a statutory monopoly through registration in a word which another trader might legitimately wish to use. A competitor should be of course be entitled to make bonafide use of the word , to describe his goods or the place of manufacture. Section 9(1) is thus to be read with section 30 , (Limits on effect of registered trade mark) Section 34 ,(Saving for vested right), Section 35 (saving for use of name, address or description of goods or services) and section 36(saving for words used as name or description of an article or substance or service) of the Act. If a word, however, through use has become clearly associated in public mind with the goods/service of a particular trader, then it could not be legitimately used as a trade mark by a competitor. For this purpose the onus is on the applicant to show by cogent evidence that the trade mark, by reason of use has acquired distinctiveness in relation to his goods or services.
Section 9(1)(a) Section 9(1)(a) prohibits (prima facie) the registration of trade marks which are devoid of any distinctive character. Unlike Sections 9(1)(b) and (c), it does not give any clear definition as to the nature of the objection. Its purpose is to prohibit generally registration of marks which do not fall foul of the definition of ‘trade mark’ but does not fulfil the function of a trade mark; that is, they do not identify and distinguish goods or services of one person from those of others. Devoid of distinctive character – In the TREAT case (1996) RPC 28] Mr. Justice Jacob provided a definition of what is “devoid of any distinctive character” He said:- What does devoid of any distinctive character mean? I think the phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other mark) which cannot do the job of distinguishing without first educating the public that it is a trade mark?
A Section 9(1)(a) objection may arise when the mark consists of, for example: a) a description of the goods/services combined with some other noticeable but on-distinctive element; e.g. words ending with “master” eg. “Lawn Master” for lawn mover; “Cold master” for refrigerators etc. However, where the word is deemed to have no direct reference (including a covert and skilful allusion) it may be acceptable – eg. “Globe master” for cycles. b) a mark which appears to serve a merely decorative purpose in relation to the goods/services concerned; c) the shape of goods which does not stand out sufficiently from the norm to be distinctive, or does so in a way which fails to counter on the mark with a trade mark character, e.g. because the unusual features of the shape serve an aesthetic or functional purpose; d) a mark which is simply too insignificant to constitute or be taken to be a trade mark for the goods/services concerned, eg colours, very simple geometrical shapes, such as a circle; e) a description or slogan of an undertaking or its policies which could equally apply to any undertaking in the field, eg “The ones you want to do business with”; f) a description of goods/services not included in the application but which are so similar to the goods/services covered by the application as to deprive the trade mark of any distinctive character for those goods/services. g) A word, which according to its ordinary significance, is a surname or a personal name Where the word has a better known meaning, other than as a surname (eg. “Bull”, “Jury” etc) it may be regarded as a non-ordinary one for being accepted for registration as a trade mark.
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